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2.2 Names of particular goods or services

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Where a trade mark as a whole is capable of distinguishing, a term within the trade mark describing particular goods or services will not necessarily trigger a concern under section 17(1)(a) of the Act as long as the goods or services described are covered in the specification. The presumption is that the applicant will only use the mark on the relevant goods or services.

However, where the specification does not include the particular goods or services, examiners should raise a concern under section 17(1)(a) of the Act on the grounds that if the mark were used for goods and services other than those named within the mark this might deceive or cause confusion as to the nature of the goods or services to which the mark were applied. For example:

Mark	Goods	Approach
Tuatara Cold wash detergent	Class 3 Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps	No concern under section 17(1)(a) of the Act. The words "cold wash detergent" fall within some of the goods specified. Presumption is that the mark will be used in an appropriate fashion.
Tuatara Cold wash detergent	Class 3 Perfumery, essentials oils, cosmetics, hair lotions; dentifrices	A concern should be raised under section 17(1)(a) of the Act on the basis that the goods are clearly not detergents and could result in deception and confusion in the marketplace.
Tuatara	Class 28 Stuffed teddy bears	No concern under section 17(1)(a) of the Act, as it is unlikely that a purchaser would be confused as to the identity of the potential purchase.

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2.2 Names of particular goods or services

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