4. Broad specifications

Once a mark is registered, the scope of the applicant’s rights in the mark is defined by the scope of the specification¹⁴. Registration of a mark with a very wide specification may cause problems for both IPONZ and subsequent applicants.

If IPONZ allows registration of a mark with a very broad specification, that mark is more likely to be raised as a citation against future applications. Future applicants may be blocked from getting registration for their own trade marks, even though the owner of the original mark is not actually using their trade mark on all the goods or services stated in the specification.

When examining a specification of goods or services, an examiner should consider whether the applicant has applied for an unrealistically broad range of goods or services.

Section 32(2) of the Act states:

The Commissioner must not register a trade mark in respect of all of the goods and services included in a class, or a large variety of goods or services, unless the specification is justified by the use or intended use of the sign.

Therefore, a concern will be raised under section 32(2) of the Act where the examiner considers the specification applied for is too broad or that it is commercially unrealistic that the applicant would use the mark in relation to that broad range of goods or services. For example an application that specified every item listed in the Nice Classification for a single class, for instance class 3 would appear to be unrealistically broad.

Where an Examiner raises concerns under section 32(2) of the Act, the applicant can usually overcome those concerns by –

1. agreeing to limit the specification of goods and services; or
2. satisfying IPONZ that they have a definite intention to trade in all of the specified goods or services applied for. For example, IPONZ will consider statutory declarations wherein the applicant shows use of the mark in relation to all of the goods and/or services claimed.

Applicants should also refer to the General Annexure and the Computer, Telecommunication and Online Goods and Services Annexure for guidance on what terms will concerns be raised under section 32(2) of the Act.

Footnote

¹⁴ Practice Guideline Amendment 2005/01, IPONZ Newsletter, May 2005