6.3.2 Excluding goods or services not in specification

Previous Office practice also allowed the exclusion of goods or services which are not covered in the specification. The purpose of a specification is to provide a statement of the goods and services for which the applicant requires registration.

The Office will not allow the limitation of a specification of goods or services, if the limitation has the effect of excluding goods or services which are not covered in the specification. Common sense dictates that where a specification does not include goods or services, they cannot be excluded.²⁰

Such amendments may be considered in situations where the marks are identical and the goods or services being provided are similar in nature such that consumers would be deceived or confused into believing that the goods or services originate from the same proprietor. Where the goods or services being provided are considered to be similar but not identical, the applicant will not be allowed to specifically exclude the goods or services of the cited mark simply to overcome the citation, if they are not directly covered within the scope of the applicant’s specification.

Examples of unacceptable specification amendments are given below.

Footnote

²⁰ See the European Court of Justice decision in Koninklijke KPN Nederland NV and Benelux-Merkenbureau (Postkantoor) [2004] E.T.M.R 57 which has provided guidance on such exclusions.