6.3.1 Excluding goods or services leading to confusion

Proposed exclusions should be carefully considered to ensure that they could not still lead to confusion or deception. IPONZ will not accept a limitation to the specification of goods if it could still lead to confusion or deception as to the provider of the goods or services.¹⁹ For example:

Exclusion: Commercial vehicles and trucks, excluding pick-up trucks and utility trucks

This exclusion is not acceptable as there is still a clear overlap in the nature of the goods being provided. However, an amendment of the specification to “commercial vehicles for carriage of goods only, none being pick-up trucks or utility trucks” would be acceptable as the nature of the goods is clearly different.

The exclusion required will usually be wider than the goods or services covered by the cited trade mark as it is necessary to remove any overlap which may result from the co-existence of similar and closely related goods or services.

Footnote

¹⁹ The European Court of Justice provided guidance on such exclusions in Koninklijke KPN Nederland NV and Benelux-Merkenbureau (Postkantoor) [2004] E.T.M.R 57. See also Croom’s Trade Mark Application [2005] RPC 2 (the McQueen Clothing case) where the exclusion “none being items of haute couture” was not sufficient to overcome the citation being the style and quality of the goods.