03 Classification and specification - section 31 and 32 of the Trade Marks Act 2002 | Intellectual Property Office of New Zealand

1. Introduction

Section 31 of the Trade Marks Act 2002 (“the Act”) is concerned with the classification of goods and services.

Under section 31(1) of the Act, the goods and services in respect of which registration is desired must be classified according to the edition of the Nice Classification in effect at the time of application for registration of the trade mark.

Any question arising as to the class or classes within which the goods or services fall will be decided by the Commissioner¹.

Section 32(1) of the Act allows a single application to be filed in either one class or more than one class.

Section 32(2) of the Act is concerned with the breadth of the specification of goods and services, and is virtually identical to section 20 of the Trade Marks Act 1953.

Footnote

¹ See section 31(2) of the Act.

2. Classification of goods and services

Section 31(1) of the Act states:

Goods and services must be classified, for the purpose of registration of a trade mark, according to the edition of the Nice Classification in effect at the time of application for registration of the trade mark.

New Zealand adheres to the Nice Classification system², an international classification system that comprises 45 classes. This system groups together similar goods or services. The classification system is set out in detail in the International Classification of Goods and Services (Nice Classification) published by the World Intellectual Property Office (WIPO).

The current edition is the Tenth Edition of the Nice Classification which came into force on 1 January 2012 under the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of Registration of Marks³. Part 1 contains two alphabetical lists, one for goods and the other for services. Part 2 lists the goods and services in class order.

The international classification system was established in order to enable efficient searches for conflicting trade marks worldwide. The system is of benefit to Office staff, but also benefits outside users who wish to check whether there are registered marks in use that conflict with marks they are using or propose to use.

Goods and services are divided into 45 classes. Classes 1 to 34 pertain to goods and classes 35 to 45 pertain to services.

Changes are made to the international classification of goods and services from time to time. These changes are incorporated in new editions of the Nice Classification. Changes to the international classification are proposed by the Preparatory Working Group and confirmed by the WIPO Committee of Experts. Major changes are avoided wherever possible, but may be necessary to remove anomalies and inconsistencies and to make improvements with new entries.

Footnotes

² The International (Nice) Classification of Goods and Services for the Purposes of the Registration of Marks was established by an Agreement concluded at the Nice Diplomatic Conference 1957. The countries that are party to the Nice Agreement constitute a Special Union within the framework of the Paris Union for the Protection of Industrial Property.

³ Section 31 of the Trade Marks Act 2002.

2.1 Classification system

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.

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

Schedule 4 (bases of Fourth Edition of Nice Classification is referred to as Nice Classification Schedule 4)

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

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.

2.3 Classification resources

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.

3. Classification examination

IPONZ will examine the application to ensure the goods and services are clear and have been correctly classified. When examining a specification of goods or services, an examiner must consider four things:

Whether the nature of the goods and services is clear (section 31)
Whether the goods and services are correctly classified in the class or classes applied for (section 31)
Whether the specification contains a registered trade mark or the applicant’s own mark
Whether the applicant has applied for an unreasonably wide range of goods and/or services (section 32(2)).

3.1 Clear specification

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.

3.1.1 Acronyms and abbreviations

Acronyms and abbreviations are generally acceptable in a specification providing they are well known, for example, VCR or CD-ROM. Unusual terms are acceptable if they are common in the particular trade, known to the examiner, or if the applicant has provided an explanation that can thereafter be viewed by outside parties.

3.1.2 Punctuation, spelling tautology and formatting

Where the specification is unclear due to poor punctuation, examiners should ask the applicant to correct this⁶. The examiner may suggest appropriate alternative punctuation.

Examiners will correct any obvious spelling errors, including adding spaces where required, but should ask the applicant where the spelling error is not obvious.

Where a long specification contains a lot of tautology, examiners should request the removal of the duplicate items.

Examiners will replace the commonly used phrase “in class x” with “in this class”.

However, where the wording of the specification is unclear, then the examiner will request more information from the applicant, or alternatively, suggest appropriate alternative wording or punctuation.

In addition to the points noted above IPONZ apply standardised formatting to trade mark specifications of goods and services in line with current international best practice.

Specifications should take the form of a single sentence commencing with a capital letter and ending in a full stop;
The body of the specification should be in lower case, except for acronyms and proper nouns;
Goods and services in the specification should be separated by semicolons or commas instead of listed on separate lines;
Double spaces are removed
The word “and” should be used in place of ampersands “&”;
The phrase “and/or” should be used in place of forward slash “/” and backslash “\” characters to denote optional items.

To help applicants comply with the standardised format, the IPONZ website incorporates an automatic reformatting function in the online trade mark application form.

Applicants retain the ability to file specifications in the format they choose, however, the examination team may reformat specifications so that they comply with the formatting standards of IPONZ. The reformatting of specifications will not change the scope or nature of the specification.

Footnote

⁶ Practice Guideline Amendment 2006/05, IPONZ Newsletter, June 2006

3.2 Correct classification

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:

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

3.2.1 Transfer

Where there are incorrectly classified goods or services in a multi-class application, an applicant may transfer⁹ items from one class to another.

Example

The applicant files a multiclass application in classes 39 and 43. The application includes “travel agency services and accommodation reservations” in the class 39 specification, although “accommodation reservations” fall in class 43. The examiner will ask the applicant to transfer “accommodation reservations” to the class 43 specification.

An applicant may also transfer incorrectly classified goods or services between different applications, where the trade mark applications:

are for the same trade mark(s); and
have the same filing dates and, where applicable, the same convention priority dates; and
are in the name of the same applicant; and
are classified according to the same classification system.

Where the transfer of incorrectly classified goods or services is from an application that is still at examination status to an application that has been accepted, the transfer may still be made; however, the whole application will be re-advertised.

Where the transfer of incorrectly classified goods or services is from an application that is still at examination status into the specification of a registered trade mark, the transfer may still be made; however, the part of the specification which has not been advertised will be advertised before it is merged with the registered trade mark.

Footnote

⁹ Practice Guideline Amendment 2007/07, Intellectual Property Office Newsletter, August 2007.

3.2.2 Adding a class

Where there are incorrectly classified goods or services, the applicant may apply to the Commissioner to add additional classes to an application until the time the application is accepted ¹⁰. The addition of classes cannot broaden the scope of the original application, and such an addition will be subject to an additional application fee(s)¹¹.

For more information on adding a class or classes to an application, see the Practice Guidelines on Adding a Class to an Application.

Footnotes

¹⁰ Regulation 43 of the Trade Marks Regulations 2003.

¹¹ Regulation 43(2)(b) of the Trade Marks Regulations 2003.

3.3 Classification in other classes

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.

3.4 Specifications with registered marks

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.

Word	Class	Trade mark number	Possible alternative description
AERTEX	25	2702	clothing
BAND-AID	5	90467	adhesive dressing/materials
BATTS	17	105507	insulating materials
BIRO	16	43017	ball point pen
BOOGIE	28	121304	body board
CATERPILLAR	7	29476	machines
CELLOPHANE	16	32954	cellulose sheet
CHEERIOS	29	70022	cocktail sausages
DICTAPHONE	9	7069	instrument for recording and reproducing dictation
DISCMAN	9	166607	portable audio compact disc players
DOONA	20	100949	quilted eiderdowns or padded quilts
ELASTOPLAST	5	61498	elasticised dressing
ESKY	21	149065	portable cooling apparatus, ice boxes
FORMICA	22	52144	laminated building material
FRISBEE	28	128313	toy flying saucer
GIB	19	129506	plasterboard
HOOVER	9	27970	vacuum cleaner
JANDALS	25	60683	footwear
JACUZZI	11	160171	whirlpool baths
JEEP	12	39663	small military-style vehicle
LAMINEX	1	52599	adhesives
LYCRA	22	61747	synthetic fibres and filaments
PERSPEX	17	38211	heat resistant glass/plastic
PLASTICINE	17	34664	material for modelling
PRIMUS	11	118572	portable cooking apparatus
PYREX	21	16072	glassware
ROLLERBLADE	28	196801	in-line skates
SELLOTAPE	16	78227	adhesive tape
THERMOS	21	7084	insulated flask
VASELINE	5	47785	petroleum jelly
VELCRO	24	61932	self-fastening synthetic fabric
WALKMAN	9	134512	portable audio equipment
WEED EATER	7	111415	grass and weed cutting machines
XEROX	9	61928	electro-photographic copying machine

Footnote

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

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 –

agreeing to limit the specification of goods and services; or
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

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

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

5. Commissioner's ruling

Section 31(2) of the Act states:

Any question arising as to the class within which any goods or services fall must be determined by the Commissioner, whose decision is final.

Section 31(2) of the Act gives the Commissioner the power to decide any questions arising as to the class within which any goods or services fall.

From time to time IPONZ receives requests for a Commissioner’s ruling on the correct classification of goods or services. An Assistant Commissioner deals with these requests.

6. Conversion to the current Nice edition

The owner of a trade mark registered with a specification classified under a previous Nice Classification Schedule may apply to the Commissioner for conversion of the specification to the current Nice Classification Schedule (Edition of the Nice Classification) ¹⁶.

Where a person applies for conversion to the current Nice Classification Schedule, they will be required to submit the following information ¹⁷:

The name of the owner;
The address for service;
If the owner has an agent, the agent’s name; and
The registration number of the trade mark.

An applicant for conversion may also nominate registration in additional classes if the current registration falls into additional classes under the most recent edition of the Nice Classification¹⁸.

Footnotes

¹⁶ See regulation 139 of the Trade Marks Regulations 2003.

¹⁷ See regulation 140 of the Trade Marks Regulations 2003.

¹⁸ See regulation 141 of the Trade Marks Regulations 2003.

6.1 Notice of proposed conversion

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

6.2 Applicant requests hearing

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 be issued in writing, stating the reasons for the Assistant Commissioner’s decision.

6.3 No response to the notice

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.

Appendix one - changes to the ninth edition of the Nice classification

New indications added
Class	Indication
1	Chemical additives for oils Additives (Chemical –) for oils Oils (Chemical additives for –)
3	Joss sticks
6	Refractory construction materials of metal
9	Bracelets (Encoded identification –), magnetic Encoded identification bracelets, magnetic Identification bracelets (Encoded –), magnetic
2	Covers for vehicle steering wheels Steering wheels (Covers for vehicle –)
13	Sprays for personal defense purposes Sprays for personal defence purposes
17	Insulating refractory materials Refractory materials (Insulating –)
19	Refractory construction materials, not of metal
29	Fermented vegetable foods [kimchi] Soya milk [milk substitute]
35	Compilation of statistics Statistics (Compilation of –) Layout services for advertising purposes Sponsorship search
37	Restoration of musical instruments Musical instruments (Restoration of –) Installation of doors and windows Doors and windows (Installation of –) Windows (Installation of doors and –) Swimming-pool maintenance Refilling of toner cartridges Toner cartridges (Refilling of –)
38	Providing access to databases Voice mail services
39	Franking of mail Traffic information
41	Layout services, other than for advertising purposes
42	Consultancy in the field of energy-saving Energy-saving (Consultancy in the field of –) Research in the field of environmental protection Environmental protection (Research in the field of –)
44	Sauna services Solarium services Health spa services Visagists’ services Pharmacists’ services to make up prescriptions
45	Computer software (Licensing of –) [legal services] Licensing of computer software [legal services] Lost property return Mediation Inspection of factories for safety purposes Safety (Inspection of factories for –) purposes Rental of fire alarms Fire alarms (Rental of –) Rental of fire extinguishers Fire extinguishers (Rental of –) Registration of domain names Domain names (Registration of –)

Existing indications deleted
Class	Indication
1	Aggressor repellent chemicals Self-defence (Chemical preparations for -)
6	Winding keys of metal
31	Spawn (Mushroom - )
35	Statistical information

Existing indications changed or transferred
Current class	New class (if applicable)	Indication
2	1	Oil cement [putty] Cement (Oil - ) [putty]
20	19	Duckboards, not of metal
37	40	Fulling of cloth
39	-	“Storage of electronically-stored data or documents” amended to read “Storage (Physical -) of electronically-stored data or documents”
42	45	Arbitration services Intellectual property consultancy Consultancy (Intellectual property –) Copyright management Management (Copyright –) Licensing of intellectual property Intellectual property (Licensing of –) Intellectual property watching services Legal research Litigation services

Amendments to class headings and explanatory notes
Class	New class heading/Amendment to class heading or explanatory note
35	In the Explanatory Note under “This class includes, in particular:” delete in the text of the second paragraph: “--- exploitation or ---”
42	In the Class Heading Replace: “Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.” with “Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.” In the Explanatory Note: replace: “Class 42 includes mainly services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities; such services are provided by members of professions such as chemists, physicists, engineers, computer specialists, lawyers, etc.” with “Class 42 includes mainly services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities; such services are provided by members of professions such as chemists, physicists, engineers, computer programmers, etc.” under “This class does not include, in particular:” add: “– legal services (Cl. 45).”
45	In the Class Heading replace: “Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.” with “Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.” In the Explanatory Note: under “This class includes, in particular:” add: “– services rendered by lawyers to individuals, groups of individuals, organizations and enterprises;” under “This class does not include, in particular:” delete: “– legal services (Cl. 42);” under “This class does not include, in particular:” add: “– computer services for the protection of software (Cl. 42);”

Appendix two - changes to the tenth edition of the Nice classification

New indications added
Class	Indication
1	Biological tissue cultures other than for medical or veterinary purposes Genes of seeds for agricultural production Stem cells other than for medical or veterinary purposes
2	Repositionable paint patches
3	Aloe vera preparations for cosmetic purposes Balms other than for medical purpose Douching preparations for personal sanitary or deodorant purposes (toiletries) Dry shampoos Drying agents for dishwashing machines Lip glosses Massage gels other than for medical purposes Breath freshening strips
4	Ethanol (fuel)
5	Aloe vera preparations for pharmaceutical purposes Diapers (babies' napkins) Pearl powder for medical purpose Babies’ napkins (diapers) Reparations for reducing sexual activity
6	Arbours (structures of metal)
7	Brake pads other than for vehicles Gas-operated blow torches Wind turbines
8	Draw wires (hand tools) Emery files Fish tapes (hand tools) Wire strippers (hand tools)
9	Cell phone straps Global positioning systems (GPS) apparatus Light-emitting diodes (LED) USB flash drives
10	Love dolls (sex dolls) Stents Body rehabilitation apparatus for medical purposes
11	Bread-making machines Hydromassage bath apparatus Light-emitting diodes (led) lighting apparatus Fabric steamers Electric appliances for making yogurt
12	Brake pads for automobiles Headlight wipers Spare tire covers Spare tyre covers Spare wheel covers
13	Belts adapted for ammunition Hand grenades Side arms (firearms)
14	Beads for making jewelry
15	Bass drum sticks
16	Correction tapes (office requisites) Document holders (stationery) Flyers Marking pens (stationery) Trading cards other than for games
18	Pouch baby carriers
19	Porphyry (stone) Prefabricated houses (kits)
20	Baby changing platforms Interior textile window blinds Knobs, not of metal Paper blinds Wall-mounted diaper (napkin) changing platforms Door bolts not of metal Indoor window shades (furniture) Indoor window blinds (shades) (furniture)
21	Window-boxes
22	Body bags
25	Ski gloves
26	Arm bands (clothing accessories) Beads other than for making jewelry Bobbins for retaining embroidery floss or wool (not parts of machines)
27	Textile wallpaper
28	Portable games with liquid crystal displays Arcade video game machines Ascenders (mountaineering equipment) Chips for gambling Pachinkos Poles for pole vaulting Scale model kits (toys) Slot machines (gaming machines) Video game machines Bags especially designed for skis and surfboards
29	Ajvar (preserved peppers) Aloe vera prepared for human consumption Non-alcoholic egg nog Processed fish spawn Preserved garlic Fish mousses Vegetable mousses Processed seeds Processed sunflower seeds
30	Cheeseburgers (sandwiches) Ham glaze Noodle-based prepared meals Pesto (sauce) Fruit coulis (sauces) Cake frosting (icing) Chocolate mousse Dessert mousses (confectionery)
31	Aloe vera plants Spinach, fresh
32	Aloe vera drinks, non-alcoholic Smoothies
33	Pre-mixed alcoholic beverages, other than beer-based
35	Telemarketing services Organization of fashion shows for promotional purposes
37	Drilling of deep oil or gas-wells
38	Transmission of digital files Transmission of greeting cards online Wireless broadcasting Transmission of greeting cards online
39	Aircraft rental Transportation logistics
40	Cryopreservation services Sandblasting services
41	Coaching (training) Conducting fitness classes Disc jockey services Games equipment rental Personal trainer services (fitness training) Production of music Toy rental Vocational retraining Organization of fashion shows for entertainment purposes
42	Digitization of documents (scanning) Handwriting analysis (graphology) Monitoring of computer systems by remote access Provision of scientific information, advice and consultancy in relation to carbon offsetting Water analysis Quality evaluation of standing timber Quality evaluation of wool Quality evaluation of standing timber Quality valuation of standing timber Scientific laboratory services
43	Rental of drinking water dispensers Rental of cooking apparatus
44	Aquaculture services Medical equipment rental Therapy services Tree planting for carbon offsetting purposes
45	Alternative dispute resolution services Genealogical research Planning and arranging of wedding ceremonies Rental of safes

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Existing indications deleted
Class	Indication
1	Algarovilla (tanning material)
2	Blues (colorants or paints) Bright gold for ceramics Bright platinum for ceramics Glossy platinum paint for ceramics Silver paint for ceramics
5	Air freshening preparations Anti-horse-fly oils Perfumed air-freshening preparations Pills for pharmaceutical purposes Sal ammoniac lozenges
6	Bolts Chains for dogs Common metal money boxes Money boxes of metal Pins for wheels, etc. Wire for aerials
7	Drying machines Flour mills Igniting magnetos Igniting magnetos for engines Pressing machines (to make satin-like) Root slicers (machines) Turnip cutters (machines) Weaving looms
8	Personal protection devices (side arms), other than firearms Side arms (not firearms) Side arms, other than firearms
9	Batteries for pocket lamps Buzzers, electric Contacts, electric, of precious metal Electric buzzers Electric welding apparatus Eye shades (headgear) Eye shades, other than headgear Eyeshades
10	Horsehair gloves for massage
11	Furnaces Gas generators (installations) Lanterns
14	Ornaments made of silver Silver ornaments
15	Bass drum sticks
16	Babies' nappies (diapers) of paper and cellulose (disposable) Diapers made of cellulose Diapers made of paper Disposable diapers of cellulose for babies Disposable diapers of paper for babies Disposable paper diapers Impregnated napkins (diapers) of paper Infants' diapers (disposable) of cellulose Infants' diapers (disposable) of paper Infants' disposable diapers of cellulose Infants' disposable diapers of paper Paper diapers for babies Paper diapers for infants Tear-off calendars
18	Collars for dogs Dog collars
20	Nesting boxes for household pets
21	Coal scuttles Feeding troughs Knobs of porcelain Lye washtubs Mangers for livestock Shirt stretchers Troughs for livestock Trouser stretchers
22	Stuffing
25	Babies' diapers of textile Babies' nappies (diapers) of textile Cloth diapers (nappies) Paper liners for babies' nappies (diapers) Textile liners for babies' nappies (diapers)
28	Electronic amusement apparatus adapted for use with liquid crystal displays Fencing foils Foils for fencing Games adapted for use with dot matrix liquid crystal displays Small balls for games
30	Edible decorations for cakes
31	Poultry for breeding
34	Mouthpieces of yellow amber for cigar and cigarette holders Tips of yellow amber for cigar and cigarette holders
35	Grading of wool
39	Information services relating to storage Storage information
41	Digital imaging services

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Existing indications changed or transferred
Current class	New class (if applicable)	Indication
1	-	“cream of tartar, other than for pharmaceutical purposes” amended to read ”cream of tartar (chemical additive)”
3	-	“alum stones (antiseptic)” amended to read “alum stones (astringents)” “deodorants for personal use” amended to read “deodorants for human beings or for animals” “shaving stones (antiseptic)” amended to read “shaving stones (astringents)”
5	-	“deodorants, other than for personal use” amended to read “deodorants, other than for human beings or for animals”
6	-	“cotter pins” amended to read “cotter pins of metal”
7	-	“aerated beverages making machines” amended to read “aerated beverages-making machines” “spin driers” amended to read “spin driers (not heated)” “looms (machines)” amended to read “looms”
9	7	electric welding apparatus soldering apparatus, electric welding electrodes electric arc welding apparatus welding apparatus (electric are -) electric arc cutting apparatus cutting apparatus (electric arc -) vending machines
9	-	“floats for bathing and swimming” amended to read “floats for bathing and swimming for life saving purposes” “furnaces for laboratory experiments” amended to read “furnaces for laboratory use” “furnaces for laboratory experiments” amended to read “furnaces, other than for laboratory use” “ovens for laboratory experiments” amended to read “ovens for laboratory use” “ovens for laboratory experiments” amended to read “ovens, other than for laboratory use” “computer memories” amended to read “computer memory devices”
11	7	soldering lamps
11	-	“beverages cooling apparatus” amended to read “beverage-cooling apparatus” “ionization apparatus for the treatment of air” amended to read “ionization apparatus for the treatment of air or water” “solar collectors (heating)” amended to read “solar thermal collectors (heating)”
13	4	tinder
16	5	babies’ napkin-pants (diaper-pants) of paper and cellulose (disposable)
16	-	“photographs” amended to read “photographs (printed)”
18	-	“key cases (leatherware)” amended to read “key cases”
19	-	“arbours (structures)” amended to read “arbours (structures not of metal)”
20	21	drinking straws straws for drinking
21	-	“coffee services” amended to read “coffee services (tableware)” “figurines (statuettes) of porcelain, terracotta or glass” amended to read “figurines (statuettes) of porcelain, ceramic, earthenware or glass” “piggy banks, not of metal” amended to read “piggy banks” “statues of porcelain, terracotta or glass” amended to read “statues of porcelain, earthenware, ceramic or glass” “statuettes of porcelain, terracotta or glass” amended to read “statuettes of porcelain, porcelain, ceramic, earthenware or glass” “tea services” amended to read “tea services (tableware)”
22		“hair” amended to read “human hair”
25	-	“babies' pants” amended to read “babies' pants (clothing)”
26	21	tea cosies
26	23	thread of metal for embroidery
28	-	“creels (fishing equipment)” amended to read “creels (fishing traps)”
30	-	“pasty” amended to read “pasties”
31	-	“cucumbers” amended to read “cucumbers, fresh” “leeks” amended to read “leeks, fresh” “lemons” amended to read “lemons, fresh” “lettuce” amended to read “lettuce, fresh” “peanuts” amended to read “peanuts, fresh”
35	36	“evaluation of standing timber” amended to read “financial evaluation of standing timber” “evaluation of wool” amended to read “financial evaluation of wool”
41	-	“film production” amended to read “film production, other than advertising films” “health club servicess” amended to read “health club services (health and fitness training)”
42	-	“consultancy in the design and development of computer hardware”

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Amendments to class headings and explanatory notes
Class	New class heading/Amendment to class heading or explanatory note
35	In the Explanatory Note under “This class includes, in particular:” delete in the text of the second paragraph: “--- exploitation or ---”
42	In the Class Heading Replace: “Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.” with “Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.” In the Explanatory Note: replace: “Class 42 includes mainly services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities; such services are provided by members of professions such as chemists, physicists, engineers, computer specialists, lawyers, etc.” with “Class 42 includes mainly services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities; such services are provided by members of professions such as chemists, physicists, engineers, computer programmers, etc.” under “This class does not include, in particular:” add: “– legal services (Cl. 45).”
45	In the Class Heading replace: “Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.” with “Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.” In the Explanatory Note: under “This class includes, in particular:” add: “– services rendered by lawyers to individuals, groups of individuals, organizations and enterprises;” under “This class does not include, in particular:” delete: “– legal services (Cl. 42);” under “This class does not include, in particular:” add: “– computer services for the protection of software (Cl. 42);”

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

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