2.2 Importance of classification

The specification of a trade mark is important both before and after registration.

While an application is still pending, it is in relation to its goods or services that a mark is tested for distinctive character (section 18), misleading reference and offensiveness (section 17) and confusing similarity to other trade marks (section 25). In encouraging applicants to make the specification precise, and by ensuring that the goods and services are classified correctly, examiners lay the groundwork for sound decisions in these areas. If an application has been registered in the wrong class, later searches may not find it and IPONZ may then inadvertently register two conflicting marks.

Once a mark is registered, the scope of the applicant’s rights in the mark is defined and limited by the scope of the specification⁵.

The owner of a registered trade mark may need to take legal action against infringement by another trader. One of the key questions in such an action is whether the mark complained of is being used for the same or similar goods or services as those of the registered mark.

It is vital therefore that the Court and all concerned are clear about what goods or services the registration covers. Applicants with registrations that are not clearly defined may have difficulty defending their rights, as the court may deem that their registrations do not cover the goods or services the applicants believed they had protection for.

Footnote

⁵ See section 10 of the Act.