An analysis of the number of trade mark applications lodged in each class in 2016 reveals a great disparity between the classes.

The Numbers

The most popular 3 classes in 2016 were:

  1. Class 35 – 12,068 applications
  2. Class 9 – 10,818 applications
  3. Class 41 – 10,047 applications

As shown above, the greatest number of applications – namely 12,068 applications – was lodged in class 35. Class 35 covers “Advertising; business management; business administration; office functions” (importantly, this broad description incorporates retail services, which is likely the reason for a good majority of the applications, as most businesses now offer their goods online meaning that they are engaging in retail services).

The least popular 3 classes in 2016 were:

  1. Class 23 – 61 applications
  2. Class 13 – 111 applications
  3. Class 15 – 124 applications

As shown above, the least number of applications – namely 61 applications – was lodged in class 23. Class 23 covers “Yarns and threads, for textile use”.

That means that class 23 received a mere 0.5% of the applications that class 35 received.

These differences compound over the years. This results in a great disparity between the numbers of applications in each class.

The class that has received the greatest number of applications ever – being a total of 222,329 applications – is class 9. Class 9 covers:

“Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.”

On the other hand, the class that has received the least number of applications ever – being a total of 2,550 applications – is class 13. Class 13 covers “Firearms; ammunition and projectiles; explosives; fireworks”. 16 of the 45 classes received more than that number of applications in 2016 alone! Class 35, for example, received 4.7 times as many applications in 2016 – that is, in one year alone – than class 13 has received in all time.

This means that the total number of applications that have been lodged in class 13 ever amounts to a mere 1.1% of the total number of applications that have been lodged in class 9 ever.

The Implications

What are the implications of these discrepancies between the numbers of applications being lodged in each class?

Some classes are getting crowded. Each of classes 5, 9, 16, 25, 35, 41 and 42 has received over 100,000 applications. Should IP Australia introduce a sub-classification system for these crowded classes, similar to China’s sub-classification system, to aid with trade mark searching and examination, and also to clarify what marks are available and/or what marks are infringing in such a crowded space?

The relative popularity of the respective classes may not have been thoroughly considered when the Nice classification system was first introduced. Moreover, this popularity shifts as technology develops and cultures adapt. As an example, class 9 may not have been as popular before the IT boom, and class 23 would likely have been more popular when (traditionally) women bought textiles to sew their own clothes. Should the Nice classification system be updated to accord with the trends? The classes could be updated to split the most popular into separate classes and merge the least popular into a single class. That would involve a huge amount of cataloguing issues for existing marks, however.

The time and effort required to conduct a comprehensive search of marks in the crowded classes is consequently far greater than that required for the sparser classes. Should IP lawyers and trade marks attorneys quote higher fees to conduct searches in crowded classes? Should IP Australia charge greater application fees for crowded classes, to cover the extra time taken for the examiner to conduct a proper search as part of the examination process? This could result in fairness issues if, for example, a low fee is charged because the search is requested for a sparser class but in fact the associated classes (that must of course also be considered in a thorough search) are all crowded classes.

The relative popularity of the respective classes may reveal some hints as to the state of the marketplace. Some classes are barely used. This raises the questions:

  • Is there not a lot of competition for goods and services classified in those classes (i.e. one or two brands have got the market covered), meaning there is room for a disruptive force like Virgin to come in and shake the market up?
  • Is it simply that there are not a lot of those types of goods and services being offered on the market at present, meaning this a sign to entrepreneurs that the market is untapped?
  • Are the traders in those types of goods and services just historically disinclined to register their IP. Is this a sign to IP lawyers and trade marks attorneys to start targeting the traders of those types of goods and services more, to educate them about the importance of protecting their brand through the acquisition of a trade mark registration (and drum up business, of course)?

I’m sure that even more analysis of the numbers, and the patterns hidden within them, would unveil a great deal more of interest about the nature of Australian trade mark filing habits and the implications of this. There is certainly a wealth of information embedded within the numbers. It is there for us to explore and interpret.

If you wish to gain greater insight into Australian trade mark filing statistics, to use in growing your business or your law practice, please contact Hayley Tarr, Senior Associate at Minter Ellison Gold Coast.

Class

Number of

applications

in 2016

Number of applications ever

2016 percentage of total applications

1

1,761

47,594

3.7%

2

398

16,450

2.4%

3

4,178

85,416

4.9%

4

568

12,656

4.5%

5

4,455

108,430

4.1%

6

1,539

41,566

3.7%

7

1,937

53,418

3.6%

8

729

16,927

4.3%

9

10,818

222,329

4.9%

10

1,890

36,867

5.1%

11

2,266

52,072

4.4%

12

2,096

49,394

4.2%

13

111

2,550

4.4%

14

1,204

27,439

4.4%

15

124

3,238

3.8%

16

3,972

123,029

3.2%

17

615

20,077

3.1%

18

1,553

34,493

4.5%

19

1,401

33,763

4.1%

20

1,713

39,690

4.3%

21

1,703

36,312

4.7%

22

294

8,759

3.4%

23

61

4,190

1.5%

24

1,011

27,398

3.7%

25

5,914

164,702

3.6%

26

287

7,409

3.9%

27

314

8,638

3.6%

28

2,573

67,026

3.8%

29

2,970

59,244

5.0%

30

3,925

78,163

5.0%

31

1,451

33,211

4.4%

32

2,116

38,873

5.4%

33

2,767

51,164

5.4%

34

267

9,901

2.7%

35

12,068

181,225

6.7%

36

5,071

81,298

6.2%

37

3,379

57,834

5.8%

38

2,117

44,792

4.7%

39

2,340

35,895

6.5%

40

900

17,136

5.3%

41

10,047

154,912

6.5%

42

6,939

135,217

5.1%

43

3,868

36,373

10.6%

44

3,917

36,397

10.8%

45

2,428

22,780

10.7%