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3. Classification examination
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3.1 Clear specification
It is the responsibility of applicants or their agents to submit specifications that clearly set out the goods and/or services the applicants wish to cover in their applications.
If an examiner is unsure about the meaning of a particular item, the examiner should ask the applicant for either an explanation or an amendment to the specification.
3.1.1 Acronyms and abbreviations
Acronyms and abbreviations are generally acceptable in a specification providing they are well known, for example, VCR or CD-ROM. Unusual terms are acceptable if they are common in the particular trade, known to the examiner, or if the applicant has provided an explanation that can thereafter be viewed by outside parties.
3.1.2 Punctuation, spelling tautology and formatting
Where the specification is unclear due to poor punctuation, examiners should ask the applicant to correct this6. The examiner may suggest appropriate alternative punctuation.
Examiners will correct any obvious spelling errors, including adding spaces where required, but should ask the applicant where the spelling error is not obvious.
Where a long specification contains a lot of tautology, examiners should request the removal of the duplicate items.
Examiners will replace the commonly used phrase “in class x” with “in this class”.
However, where the wording of the specification is unclear, then the examiner will request more information from the applicant, or alternatively, suggest appropriate alternative wording or punctuation.
In addition to the points noted above IPONZ apply standardised formatting to trade mark specifications of goods and services in line with current international best practice.
- Specifications should take the form of a single sentence commencing with a capital letter and ending in a full stop;
- The body of the specification should be in lower case, except for acronyms and proper nouns;
- Goods and services in the specification should be separated by semicolons or commas instead of listed on separate lines;
- Double spaces are removed
- The word “and” should be used in place of ampersands “&”;
- The phrase “and/or” should be used in place of forward slash “/” and backslash “\” characters to denote optional items.
To help applicants comply with the standardised format, the IPONZ website incorporates an automatic reformatting function in the online trade mark application form.
Applicants retain the ability to file specifications in the format they choose, however, the examination team may reformat specifications so that they comply with the formatting standards of IPONZ. The reformatting of specifications will not change the scope or nature of the specification.
Footnote
6 Practice Guideline Amendment 2006/05, IPONZ Newsletter, June 2006
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:
- some of the listed goods/services fall within classes additional to those that have been nominated and paid for; or
- 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.
3.2.1 Transfer
Where there are incorrectly classified goods or services in a multi-class application, an applicant may transfer9 items from one class to another.
Example
The applicant files a multiclass application in classes 39 and 43. The application includes “travel agency services and accommodation reservations” in the class 39 specification, although “accommodation reservations” fall in class 43. The examiner will ask the applicant to transfer “accommodation reservations” to the class 43 specification.
An applicant may also transfer incorrectly classified goods or services between different applications, where the trade mark applications:
- are for the same trade mark(s); and
- have the same filing dates and, where applicable, the same convention priority dates; and
- are in the name of the same applicant; and
- are classified according to the same classification system.
Where the transfer of incorrectly classified goods or services is from an application that is still at examination status to an application that has been accepted, the transfer may still be made; however, the whole application will be re-advertised.
Where the transfer of incorrectly classified goods or services is from an application that is still at examination status into the specification of a registered trade mark, the transfer may still be made; however, the part of the specification which has not been advertised will be advertised before it is merged with the registered trade mark.
Footnote
9 Practice Guideline Amendment 2007/07, Intellectual Property Office Newsletter, August 2007.
3.2.2 Adding a class
Where there are incorrectly classified goods or services, the applicant may apply to the Commissioner to add additional classes to an application up to one month after filing the application10. The addition of classes cannot broaden the scope of the original application, and such an addition will be subject to an additional application fee(s)11. No extension to this deadline is possible under the Act12.
For more information on adding a class or classes to an application, see the Practice Guidelines on Adding a Class to an Application.
Footnotes
10 Regulation 43 of the Trade Marks Regulations 2003.
11 Regulation 43(2)(b) of the Trade Marks Regulations 2003.
12 Regulation 43(4) of the Trade Marks Regulations 2003.
3.3 Classification in other classes
Some goods and services appear in more than one class in the international classification system. For example, beverages may be classified in classes 5, 29, 30, 32 and 33, and building materials may be classified in classes 6, 17 and 19.
Care must be taken when a generic item appears in one class, and a more specific item appears in another. The specific item overrides the general item. The general item is often marked with an asterisk in the Nice Classification to indicate that those goods or services are also classified in other classes.
Example
Shoes are classified in class 25, and marked with an asterisk. Orthopaedic shoes are specifically classified in class 10, and shoes for protection against accidents, irradiation and fire are specifically classified in class 9.
In the past, applicants were required to add “all being goods/services in this class” (or similar wording) to satisfy IPONZ that the goods or services had been correctly classified. It is no longer necessary to qualify specifications in this way. The onus is on the applicant to ensure that the application is filed in the correct class, and to submit a specification that clearly sets out the goods or services the applicant wishes to cover. The examiner should check the specification and draw any errors to the attention of the applicant. However, as long as the goods or services applied for can fall under the class applied in, the examiner will assume that the applicant has applied in the correct class.
Using the example given above, an applicant who applies for shoes in class 10 will be assumed to be applying for orthopaedic shoes.
3.4 Specifications with registered marks
A registered trade mark13 or an applicant’s own mark must not appear in a specification. The presence of a word on the Register should be taken as evidence that the word is not generic for the goods or services specified. Where any of these marks or any other trade marks appear in a specification, the Examiner will raise a concern and ask the applicant to delete the mark from the specification or to provide a generic description of the goods.
Any amendment to the specification must not have the effect of extending the goods or services claimed.
The following list sets out common examples of registered marks that often appear in applicant’s specifications and suggested alternative generic descriptions. This list is not exhaustive.
Word |
Class |
Trade mark number |
Possible alternative description |
| AERTEX | 25 | 2702 | clothing |
| BAND-AID | 5 | 90467 | adhesive dressing/materials |
| BATTS | 17 | 105507 | insulating materials |
| BIRO | 16 | 43017 | ball point pen |
| BOOGIE | 28 | 121304 | body board |
| CATERPILLAR | 7 | 29476 | machines |
| CELLOPHANE | 16 | 32954 | cellulose sheet |
| CHEERIOS | 29 | 70022 | cocktail sausages |
| DICTAPHONE | 9 | 7069 | instrument for recording and reproducing dictation |
| DISCMAN | 9 | 166607 | portable audio compact disc players |
| DOONA | 20 | 100949 | quilted eiderdowns or padded quilts |
| ELASTOPLAST | 5 | 61498 | elasticised dressing |
| ESKY | 21 | 149065 | portable cooling apparatus, ice boxes |
| FORMICA | 22 | 52144 | laminated building material |
| FRISBEE | 28 | 128313 | toy flying saucer |
| GIB | 19 | 129506 | plasterboard |
| HOOVER | 9 | 27970 | vacuum cleaner |
| JANDALS | 25 | 60683 | footwear |
| JACUZZI | 11 | 160171 | whirlpool baths |
| JEEP | 12 | 39663 | small military-style vehicle |
| LAMINEX | 1 | 52599 | adhesives |
| LYCRA | 22 | 61747 | synthetic fibres and filaments |
| PERSPEX | 17 | 38211 | heat resistant glass/plastic |
| PLASTICINE | 17 | 34664 | material for modelling |
| PRIMUS | 11 | 118572 | portable cooking apparatus |
| PYREX | 21 | 16072 | glassware |
| ROLLERBLADE | 28 | 196801 | in-line skates |
| SELLOTAPE | 16 | 78227 | adhesive tape |
| THERMOS | 21 | 7084 | insulated flask |
| VASELINE | 5 | 47785 | petroleum jelly |
| VELCRO | 24 | 61932 | self-fastening synthetic fabric |
| WALKMAN | 9 | 134512 | portable audio equipment |
| WEED EATER | 7 | 111415 | grass and weed cutting machines |
| XEROX | 9 | 61928 | electro-photographic copying machine |
Footnote
13 Practice Guideline Amendment 2004/1, Information For Clients, Issue 30: 31 March 2004.
