2. Classification of goods and services

Under earlier legislation, the different editions of the Nice Classification were incorporated into the Schedules to the Trade Mark Regulations 1954. However, as the Schedules are no longer in force, all references to the Schedules to the Trade Mark Regulations 1954 have been amended to read “Classification System” on the IPONZ database.

The IPONZ database and the journal now record the previous Schedule as follows:

• Schedule 3 is referred to as Classification System 3
• Schedule 4 is referred to as Classification System 4

The latest editions of the Nice Classification are now referred to by their relevant number.

• The Eighth Edition of the Nice Classification is referred to as Classification System 8
• The Ninth Edition of the Nice Classification is referred to as Classification System 9
• The Tenth Edition of the NICE classification is referred to as Classification System 10

The Ninth Edition of the Nice Classification came into force on 1 January 2007⁴. The main changes to the Nice Classification as a result of the introduction of the Ninth Edition are set out in Appendix 1.

The tenth Edition of the NICE classification came into force on 1 January 2012. The main changes to the NICE Classification as a result of the introduction of the Tenth Edition are set out in Appendix 2.

Footnote

⁴ Trade Marks Amendment Regulations 2006

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.

The General Remarks and Explanatory Notes sections of the Nice Classification books provide general guidelines to the classification system. The General Remarks are found on page 3, and the Explanatory Notes on pages 7-33.

Both the UK Patent Office and the United States Patent and Trademark Office have online databases containing a list of goods and services. Although some of the items in these databases appear in the Nice Classification books, others are not specifically mentioned there. The databases may thus be of assistance in determining the correct classification of goods or services that are not listed in the Nice Classification books. The UK Patent Office classification database is located at http://webdb2.patent.gov.uk. The United States Patent and Trademark Office classification database is located at http://www.uspto.gov/web/offices/tac/doc/gsmanual.

The Classification Annexure, which is annexed to these Guidelines, should also be referred to as it lists a number of common classification issues.