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6.3 Excluding particular goods or services
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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:
| Original specification | Cited mark's specification |
| Commercial vehicles including trucks | Pick-up trucks and utility trucks |
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.
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.
| Original specification | Cited mark's specification | Amended specification |
| Apparatus for recording, transmission or reproduction of sound or images; computer hardware and peripherals | Computer software for business | Apparatus for recording, transmission or reproduction of sound or images; computer hardware and peripherals; excluding computer software |
| Clothing and headgear | Shoes | Clothing and headgear, but not including shoes |
| Milk, eggs and cheese | Butter | Milk, eggs and cheese, excluding butter |
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.
