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3. Broad specifications
Up one level
When examining a specification of goods or services, an examiner considers whether the applicant has applied for an unrealistically broad range of goods or services. 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.
The following are considered unrealistically broad or vague in a specification and will result in a concern being raised under section 32(2) of the Act.
All goods or services in this class
Business to Business, B2B, B2C
Consultancy and advisory services
Information and advisory services
Rental services, leasing services, hire services
Services in the nature of, in relation to
Services that cannot be placed in other classes
Accessories
– see also Clothing accessories
The unqualified term “accessories” in a specification is unacceptably vague. Where a specification includes the unqualified term “accessories”, a concern will be raised under section 32(2) of the Act. The applicant will be asked to qualify this term by linking the term to specific goods such as computer accessories.
Accessories may be linked to the entire preceding specification. For example, the phrase “accessories in relation to all the aforementioned goods” would be acceptable.
Advisory services
- see Consultancy and advisory services and Information and advisory services
And the like
- see Like services
All goods or services in this class14
The wording “all goods in this class” or “all services in this class” or similar is never acceptable in a specification. When classification schedules change, some classes may also change. It then becomes difficult to tell which goods or services are included in the registration without referring to previous schedules of the 1953 Act.
This is so, even for the classes where the entire class heading is acceptable, such as class 25. For example, “clothing, footwear, headgear” is acceptable in class 25, but “all goods in this class” is not.
Concerns will be raised under section 32(2) of the Act for all applications where the specification comprises or includes “all goods or services in this class”. The applicant will be asked to substitute a precise description of the goods or services in respect of which registration is desired.
Ancillary goods/services
The phrase “…and ancillary goods/services” is too vague. The applicant should be asked to amend the specification by substituting more precise language that clearly indicates the goods or services in respect of which registration is desired.
Association services
The unqualified terms “association services”, “services (not included in other classes) rendered by an association to its own members” and the like are unacceptably vague. These services may fall in a number of classes. For example:
| Specification | Class |
| Information services, as provided by an association, in the nature of … | Depends on the field |
| Advice relating to the business management of associations Promotion of association services |
35 |
| Sponsorship of associations | 36 |
| Education and training services as provided by an association | 41 |
Where a specification includes the unqualified terms “association services”, “services (not included in other classes) rendered by an association to its own members” or the like, a concern will be raised under section 32(2) of the Act. The applicant will be asked to qualify those terms by specifying the exact service or services in respect of which registration is desired.
Business to Business, B2B, B2C
The terms “business to business services”, “B2B services” and the like, are considered too vague and too broad for specification purposes. Where a specification includes these unqualified terms or the like, a concern will be raised under section 32(2) of the Act. The applicant will be asked to qualify those terms by specifying the exact nature of the business-to-business service as it could potentially encompass several different services.
Club services
The unqualified terms “club services”, “services (not included in other classes) rendered by a club to its members” and the like, are unacceptably vague. These services may fall into a number of classes. For example:
| Specification | Class |
| Information services, as provided by a club, in the nature of … | Depends on the field |
| Advice relating to the business management of clubs Promotion of club services |
35 |
| Sponsorship of clubs | 36 |
| Education and training services as provided by a club Entertainment services provided by a club to its members |
41 |
Where a specification includes the unqualified terms “club services”, “services (not included in other classes) rendered by a club to its members” or the like, a concern will be raised under section 32(2) of the Act. The applicant will be asked to qualify those terms by specifying the exact club service or services in respect of which registration is desired.
Components
The unqualified term “components” or the like in a specification is unacceptably vague. Where a specification includes the unqualified term “components”, a concern will be raised under section 32(2) of the Act. The applicant will be asked to qualify this term by linking the term to specific goods such as computer components.
Components may be linked to the entire preceding specification. For example, the phrase “components in relation to all the aforementioned goods” would be acceptable.
Consultancy and advisory services
Consultancy and advisory services are generally classified according to the services they relate to or the field in which they are being offered. For example:
| Specification | Class |
| Financial consultancy | 36 |
| Building construction consultancy | 37 |
| Telecommunications consultancy |
38 |
| Travel consultancy | 39 |
| Dress making consultancy | 40 |
| Training consultation services |
41 |
| Computer programming consultancy | 42 |
Class 35 is the correct classification for consultancy services in relation to business management or business administration, that is, consultancy services to do with the way a business is organised or run. This is so regardless of the nature of the business using the consultancy or advisory service.
However, consultancy services on technical matters may fall into a number of classes.
| Specification | Class |
| Consultancy services in relation to the client’s personnel management and business administration | 35 |
| Food delivery services | 39 |
| Processing and treatment of cooked food | 40 |
| Training of personnel in food technology | 41 |
| Advisory services relating to regulations concerning food Quality control relating to the hygiene of food |
42 |
| Consultancy services relating to food Hospitality services [food and drink] |
43 |
Etc
The use of “etc” in a specification is unacceptably vague and broad, necessitating concerns raised under both section 31 and section 32(2). The applicant will be asked to amend the specification by substituting more precise language that clearly indicates the goods or services in respect of which registration is desired.
Goods
The unqualified term “goods” is not acceptable, but is acceptable when used in conjunction with a description that adequately describes the type of goods for which protection is sought. For example, “leather goods” and “goods for the care of the skin” are acceptable.
Goods in the nature of15
The phrase “goods in the nature of” will generally be acceptable in a specification. The examiner will interpret such a phrase as relating to the specific goods. For example, “goods in the nature of clothing” will be interpreted as “clothing”.
Goods in relation to
The phrase “goods in relation to…” is too vague. The applicant should be asked to amend the specification by substituting more precise language that clearly indicates the goods or services in respect of which registration is desired.
Hire services
- see Rental services
Information and advisory services
Information and advisory services are classified according to the subject content of the information being provided. This is so regardless of the means by which the information is provided. Information provided by electronic means or over the Internet is thus also classified according to the subject or content of the information rather than by the means of delivery.
For example:
| Specification | Class |
| Business information, including business information provided over the Internet | 35 |
| Insurance and real estate information provided over the telephone and in printed form | 36 |
| Transport information provided over the Internet | 39 |
| Weather information provided by electronic means | 42 |
The service of “providing information in a wide variety of fields” is considered to be too broad and must be limited by the subject matter of the information being supplied.
The gathering together of information, such as market research or opinion polling, is classified in class 35 regardless of the subject matter of the information being gathered.
Kits
The applicant must specify either the purpose of the kit (if it has a single purpose) or the goods the kit contains.
If the kit is for the purpose of making a single object, it is classified according to the item it is intended to make. For example:
| Specification | Class |
| Kits for making desks | 20 |
| Kits for making bird cages | 21 |
If the kit is described as a “hobby craft kit”, it is classified in class 28 as a kind of toy or amusement product.
If the kit is a combination of items around a theme, the kit is classified according to the class that would include the majority of the individual items in the kit. For example, a first aid kit that comprises primarily bandages, antiseptic and aspirin would be classified in class 5 even though it also included tweezers (class 8) and an instruction manual (class 16).
If the kit does not appear to have a predominant class, the applicant must choose which class or classes they wish to apply in.
Leasing services
- see Rental services
Like goods or services
The phrase “…and the like” is too vague. The applicant should be asked to amend the specification by substituting more precise language that clearly indicates the goods or services in respect of which registration is desired.
Management services
Management services are generally classified according to the services they relate to or field in which they are being offered.
For example:
| Specification | Class |
| Financial management Estate management Investment management |
36 |
| Construction management services | 37 |
| Management of aircraft operations | 39 |
| Waste management services | 40 |
| Management of cinemas Management services for performing artists |
41 |
| Restaurant management | 43 |
| Copyright management | 4516 |
Class 35 is the correct classification for management services in relation to business management or business administration, that is, management services to do with the way a business is organised or run. This is so regardless of the nature of the business using the management services.
Manufacturing services
Custom manufacturing services are classified in class 40. This includes the manufacture of particular goods to customer requirements and/or specifications. However, the manufacture of goods is not considered to be a service offered to others and is incidental to the creation of a product. Applicants should apply in the goods class appropriate to the products on which they are using or intend to use their mark.
Building construction services are classified in class 37. Class 37 is intended to cover building of structures, roads, bridges and similar civil engineering projects. Class 37 is also the correct classification for shipbuilding.
Outsourcing services17
The term “outsourcing services” is considered to be too broad and vague as the exact nature of the services included within this description is unclear. In addition, outsourcing services are classified in more than one class according to the nature of the goods or services being outsourced.
Where a specification includes the term “outsourcing services”, a concern will be raised under section 32(2) of the Act if the applicant has not specified the exact nature of these services.
Parts and fittings
The unqualified term “parts and fittings” or the like in a specification is unacceptably vague. Where a specification includes the unqualified term “parts and fittings”, a concern will be raised under section 32(2) of the Act. The applicant will be asked to qualify this term by linking the term to specific goods such as computer parts and fittings.
Parts and fittings may be linked to the entire preceding specification; for example, “parts and fittings in relation to all the aforementioned goods” would be acceptable.
Peripherals
The unqualified term “peripherals” or the like in a specification is unacceptably vague. Where a specification includes the unqualified term “peripherals”, a concern will be raised under section 32(2) of the Act. The applicant will be asked to qualify this term by linking the term to specific goods such as computer peripherals.
Peripherals may be linked to the entire preceding specification; for example, “peripherals in relation to all the aforementioned goods” would be acceptable.
Related goods
The phrase “…and related goods” is too vague. The applicant should be asked to amend the specification by substituting more precise language that clearly indicates the goods in respect of which registration is desired.
Related services
The phrase “…and related services” is too vague. The applicant should be asked to amend the specification by substituting more precise language that clearly indicates the services in respect of which registration is desired.
Rental services, leasing services, hire services
Rental services, leasing services and hire services are classified in the same classes as the services provided by means of the rented objects. See the General Remarks section of the Nice Classification (page 3). For example:
| Specification | Class |
| Rental of publicity material or advertising space | 35 |
| Rental of photocopying machines or office machinery and equipment | 35 |
| Rental of food vending machines | 35 |
| Rental of real estate, apartments or office space not warehouses or parking spaces (39), stadium facilities (41) or holiday or temporary accommodation (43) | 36 |
| Rental of construction equipment, bulldozers, cranes, or excavators | 37 |
| Rental of cleaning equipment or road sweeping machines | 37 |
| Rental of telecommunications equipment including telephones, modems, facsimile apparatus | 38 |
| Car hire services, rental of vehicles, boats or wheelchairs Rental of parking spaces |
39 |
| Rental of storage containers or warehouses | 39 |
| Rental of mailboxes | 39 |
| Rental of sewing machines | 40 |
| Rental of sound recordings, films, videos, videotapes, radio sets, television sets, audio equipment, video cameras and VCRs, tape recording equipment, movie projectors and accessories, stage scenery and show scenery, lighting apparatus for theatre sets or TV studios, or musical instruments Rental of gaming machines or computer game programmes |
41 |
| Rental of sports equipment, stadium facilities, tennis courts or sports fields | 41 |
| Rental of computers and computer hardware and computer software not computer game programmes (41) | 42 |
| Rental of photographic equipment | 42 |
| Rental of temporary accommodation, rooms, tents, furniture, tables, chairs, table linen or glassware | 43 |
| Rental of medical equipment, sanitation facilities, protective clothing and equipment | 44 |
| Rental of agricultural and farming equipment | 44 |
| Rental of clothing, clothing hire, costume hire, uniform hire | 45 |
The unqualified terms “rental services”, “leasing services”, “hire services” or the like are considered too broad and too vague as they do not clearly and precisely indicate the nature of the services being provided. Where a specification includes the unqualified terms “rental services”, “leasing services”, “hire services” or the like, a concern will be raised under section 32(2) of the Trade Marks Act 2002 and the applicant will be asked to state the goods to which the services relate.
Where an applicant qualifies its rental, leasing or hire services by specifying the nature of the rental, leasing or hire services, IPONZ will continue to raise a concern under section 32(2) of the Act unless the nature of the rental, leasing or hire services is sufficiently precise.
Retailing of services
From time to time IPONZ receives applications with specifications that include "wholesale and/or retail of XYZ services". It is not clear what is meant by the retail and/or wholesale of a service, as opposed to the retail and/or wholesale of particular goods. If the applicant desires registration in respect of the provision of a service, the application should be made in respect of that service, rather than the retail or wholesale of that service.
Therefore, IPONZ will no longer accept trade mark specifications that contain "retail and/or wholesale of XYZ services" (or similar). When IPONZ receives an application that includes such a specification, concern will be raised under section 31 of the Act. The applicant will be asked to delete the reference to retail and/or wholesale, and to substitute instead a precise description of the services in respect of which registration is desired. If necessary the applicant will also need to request a change of class or transfer the services to the appropriate class(es).
Services associated with18
The phrase “services associated with…” is too vague. The applicant should be asked to amend the specification by substituting more precise language that clearly indicates the services or goods in respect of which registration is desired.
Services in, for, of19
The phrases “services for…”, “services of…”, services in…” and the like will generally be acceptable in a specification. The examiner will interpret such phrases as relating to the specific services. For example, “services for transport”, “services of transport” or services in transport” will be interpreted as “transport services”.
However, where the specification is unclear the applicant should be asked to substitute more precise language that clearly indicates the services or goods in respect of which registration is desired. For example, “services for clubs” is unclear as the unqualified term “club services” is unacceptably vague.
Services in the nature of, in relation to20
The phrases “services in the nature of…”, “services in relation to…” and the like will generally be acceptable in a specification. The examiner will interpret such a phrase as relating to the specific services. For example, “services in the nature of transport” will be interpreted as “transport services”.
However, where the specification is unclear the applicant should be asked to substitute more precise language that clearly indicates the services or goods in respect of which registration is desired. For example, “services in relation to club services” is unclear as the unqualified term “club services” is unacceptably vague.
Services that cannot be placed in other classes
Under the 7th Edition of the Nice Classification of Goods and Services (Classification System number 4), the class 42 heading included “services that cannot be classified in other classes”. This wording is not in the 8th or 9th Edition of the Nice Classification21. Therefore, there is no longer a “miscellaneous services” category.
The terms "services that cannot be placed in other classes" is considered to be too vague and too broad to be acceptable in a specification of services. Where a specification includes this unqualified term, a concern will be raised under section 31 and/or section 32(2) of the Act. The actual services for which protection is sought should be specified.
Substitutes
The unqualified term “substitutes” or the like in a specification is unacceptably vague. Where a specification includes the unqualified term “substitutes”, a concern will be raised under section 32(2) of the Act. The applicant will be asked to qualify this term with a description that adequately defines the type of substitute such as coffee substitutes and cream substitutes.
Supply of
The phrase “supply of…” is too ambiguous as it may refer to retail and wholesale services, import/export services, distribution and delivery services, or rental services.
Where a specification includes the unqualified phrase, a concern will be raised under section 32(2) of the Act. The applicant will be asked to amend the specification by substituting a more precise description of the services.
Exception: Water supply services are classified in class 39.
Systems
The unqualified term “systems” or the like in a specification is unacceptably vague. Where a specification includes the unqualified term “systems”, a concern will be raised under section 32(2) of the Act. The applicant will be asked to qualify this term with a description that adequately defines the type of system such as exhaust systems and alarm systems.
Footnotes
14 Practice Guideline Amendment 2005/01, IPONZ Newsletter, May 2005
15 Practice Guideline Amendment 2007/01, IPONZ Newsletter, March 2007
16 Reference updated 5 January 2007
17 Practice Guideline Amendment 2004/05, Information For Clients, Issue 33: 30 September 2004.
18 Practice Guideline Amendment 2007/01, IPONZ Newsletter, March 2007
19 Practice Guideline Amendment 2007/01, IPONZ Newsletter, March 2007
20 Practice Guideline Amendment 2007/01, IPONZ Newsletter, March 2007
21 Reference updated 5 January 2007
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