03 Classification and specification - section 31 and 32 of the Trade Marks Act 2002

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 However, as the Schedules are no longer in force, all references to the Schedules to the Trade Mark Regulations 1954 have been amended to read “Classification System” on the IPONZ database.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 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.

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.

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.

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:

1. some of the listed goods/services fall within classes additional to those that have been nominated and paid for; or
2. 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.

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.

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.

Footnote

¹³ Practice Guideline Amendment 2004/1, Information For Clients, Issue 30: 31 March 2004.

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.

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

Where the Commissioner receives an application for conversion, the Commissioner must first notify the applicant for conversion of the proposed form of the conversion¹⁹. The applicant will be sent a Notice of Proposed Conversion, advising the proposed form of the conversion. Where the applicant does not agree to the proposed conversion, the applicant has a right to a hearing on this matter.

A time limit will be stipulated, being not less than one month from the date of the Notice of Proposed Conversion, in which the applicant must indicate that it wishes to be heard before the Commissioner exercises his power to convert the application²⁰.

Footnotes

¹⁹ See regulation 142(1) of the Trade Marks Regulations 2003.

²⁰ See regulation 142(3) of the Trade Marks Regulations 2003

Where the applicant requests a hearing, the request:

• Must be made in writing;
• Must indicate whether the applicant desires a hearing in person or a hearing based on written submissions; and
• Must be received by IPONZ on or prior to the expiry of the deadline specified in the Notice of Proposed Conversion, taking into account any extensions of time that have been granted.

Upon receipt of the request for a hearing, the application will be forwarded to the Hearings Office.

After the hearing, or after considering the applicant’s written submissions, the Assistant Commissioner will either accept or reject the applicant’s submissions relating to the conversion. A decision will issue in writing, stating the reasons for the Assistant Commissioner’s decision.

Where IPONZ does not receive a response to the Notice of Proposed Conversion on or prior to the expiry of the deadline specified in that Notice, the Commissioner will convert the specification in the proposed form and enter the date of the conversion on the Register²¹.

An Assistant Commissioner will write to the applicant confirming that the application has been converted.

Footnote

²¹ See regulation 142(3) of the Trade Mark Regulations 2003.