2.5 Searching trade marks by goods and/or services class

• Visit the WIPO website and view the International Classification of Goods and Services [1.4 M PDF]

Classifications accepted under the Nice Classification system, and additional goods and services for which classification is frequently queried, can also be found in IPONZ’s Trade Mark Classification Search database.

A trade mark can be applied for in one or many of the 45 classes. Each class has a broad class heading. Class headings for the current and previous systems are listed in the classification and specification practice guideline.

If you are searching for a trade mark or a company name for example, you may wish to define that search by class. For instance, if you wanted to see if anyone had applied for the trade mark “STARFISH HOUSE” in relation to food services, you can limit your search to the relevant food services class(es). This means your results will not bring back instances of the words in relation to unrelated goods or services such as chemical engineering or pharmaceuticals, which will be included in different classes.

There are two parts to understanding how to limit your search by class. You must understand how to select a Classification Schedule, as well as a Class.

2.5.2 Choosing a Classification Schedule (Version)

• 3 Covers all trade mark applied for prior to 11 December 1941 (unless he proprietor of the mark has requested conversion to any subsequent schedule)
• 4 Covers all trade marks applied for between 11 December 1941 and 6 January 2002
• 8 Covers all trade marks applied for on or after 7 January 2002
• 9 Covers all trade marks applied for on or after 1 January 2007
• 10 Covers all trade marks applied for on or after 1 January

Every trade mark is assigned a classification system depending on when the application was made. To safely search for that trade mark or something similar, you should ideally search for it in all schedules.

Important Notes

• Even though IPONZ periodically introduces a new classification system, all trade marks previously applied for are not automatically transferred to the new system
• There are substantial differences between classification system 3 and the other systems. For instance, in system 3, paper is classified under Class 39. In systems 4, 8 and 9 paper is in Class 16
• Differences between the other systems can also be significant, for example, “legal services” are now in class 45 although before January 2007 these services fell in class 42
• Nappies and/or diapers are now all in class 5 although before 1 January 2012 they were classified according to the material from which they were made (16 or 25)
• You can search for trade marks within each system individually or across all the systems (however, note that an “All” search in class 16 would not find trade marks protected in relation to “paper” under classification system 3)
• Unless you only want to search for trade marks applied for within a particular era, you may want to try starting with a broad search that covers all systems by selecting “All”

2.5.3 Choosing a Class

A list of class headings for the different systems can be found in the classification and specification practice guideline.

It is also important to remember that though a similar or identical mark may be filed in a different class, the goods or services may still be similar. Therefore, you may wish to consider searching for similar classes as well. A guide to conflicting classes can be found here.