3.2 Correct classification

The onus is on an Applicant to ensure that goods and/or services are filed in the correct class or classes⁷, and to submit a specification that clearly sets out the goods or services the applicant wishes to cover. However, it is the responsibility of the Examiner to check whether the goods or services applied for have been correctly classified.

The following resources should be checked by the examiner in this order:

• Nice Classification, Parts 1 and 2.
• General Remarks and Explanatory Notes sections of the Nice Classification books.
• Classification Annexure: Common Classification Issues.
• The UK Patent Office and USPTO online classification databases.

Where a trade mark applicant has previous registrations in respect of an incorrect specification, this does not justify allowing the later application to proceed with a similarly incorrect specification. If an error has occurred, it should not be perpetuated. In some instances the registered specification will have been correct as at the date of application, as international classification standards can change over time. It is important that the goods or services applied for are correctly classified in light of current international classification standards. Although consistency is desirable, prior registrations in respect of a particular specification are not binding on IPONZ.

If the correct classification cannot be determined on the information currently available, the examiner should write to the applicant requesting further details.

The Examiner may defer examination where:

1. some of the listed goods/services fall within classes additional to those that have been nominated and paid for; or
2. no class was indicated on the application, and the listed goods/services fall within a greater number of classes than has been paid for.

Where an Applicant explicitly lists goods or services which are incorrectly classified, the Examiner should bring this to the Applicant’s attention in the Compliance Report. In this situation, the examiner should give the Applicant the opportunity to either:

• Delete the incorrectly classified goods or services from the application;
• Transfer the incorrectly classified goods or services to the correct class where the other class exists in the application; or
• Add an additional class or additional classes to the application in which the goods or services in question are correctly classified⁸.

Where the Examiner does not raise a classification concern in the initial Compliance Report and the applicant is aware that the application contains incorrectly classified goods or services, the applicant may still apply to the Commissioner to delete or transfer the incorrectly classified goods or services or add a class or classes to the application pertaining to those incorrectly classified goods or services.

Footnotes

⁷ Practice Guideline Amendment 2004/09, Information For Clients, Issue 34: 30 December 2004.

⁸ Regulation 43 of the Trade Marks Regulations 2003.