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4. Broad specifications
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4.1 Factors to consider
When determining whether concerns should be raised under section 32(2) of the Act, examiners should consider the circumstances of the particular case. Examiners should ask: “is it commercially realistic that the mark will be used in relation to the wide range of goods and/or services specified in the application?”
In answering this question examiners should take into account the applicant themselves and the types of goods and services in which the applicant is known to trade. For example, a large company may be more likely to provide a wide range of goods or services than a smaller company. Each case must be considered on its merits, however, large companies should not automatically be granted wider rights than smaller applicants.
It may be helpful to check whether the applicant has previous registrations for a similarly wide specification. However, as stated above, each case must be considered on its merits. The fact that an applicant has a previous registration with a wide specification should not automatically be taken as justification for allowing a later application to proceed with a similarly wide specification.
4.2 Class headings
The Nice Classification class headings15 are only an indication of the goods and services that are included within a particular class.
When a class heading is used as a specification, it loses its capacity to function as a class heading and becomes part of an application or registration as a statement of goods or services. Therefore, a claim for a class heading does not equate to a claim for all the goods or services that may be in that class. An application which specifies a class heading only claims protection in respect of the goods or services actually stated in the heading, or that may be clearly encompassed by the heading.
This is particularly relevant when considering whether an amendment to overcome concerns raised under section 31 or 32(2) is acceptable, or whether an alteration or correction of error is acceptable.
Examples
The class heading for class 15 is “musical instruments”. Applicant A applies to register a mark in respect of “musical instruments”. The applicant then wishes to amend the application to “trumpets; music stands; cases for trumpets”. This would not be acceptable as “music stands” and “cases for trumpets” are not musical instruments and are not encompassed in the specification as originally filed and the amendment would constitute a broadening of the original specification.
Applicant B applies to register a mark in respect of the class heading for class 9. In order to overcome a section 32(2) concern the applicant requests that the specification be amended to “computer software for graphic design”. This would not be acceptable for registration as the class heading for class 9 does not specifically state computer software. Neither does it include items that can be clearly encompassed by the heading.
As an application which specifies a class heading claims protection only in respect of the goods/services actually stated in the heading, or may be clearly encompassed by the heading, concerns under section 32(2) of the Act will not, in the main, be raised for applications which contain specifications that are drafted in the form of the class heading.
Footnote
15Practice Guideline Amendment 2007/01, IPONZ Newsletter, March 2007
