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6. Restricting the specification of goods and services
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6.1 Deleting goods or services
An applicant may attempt to overcome a citation by deleting the goods or services from the specification so that the overlap between the conflicting trade marks is removed. This option is only possible if the applicant has applied for a wider range of goods or services than those covered by the cited mark and if they are prepared to restrict their specification to the goods or services of interest to them.
The proposed amendment to the specification must clearly remove the possibility for confusion or deception in the market place. For example:
| Original specification | Cited mark's specification | Amended specification |
| Games and playthings; gymnastic and sporting articles; decorations for christmas trees | Games | Gymnastic and sporting articles; decorations for Christmas trees |
| Education; entertainment; sporting and cultural activities | Sporting and cultural activities | Education |
6.2 Adding a positive limitation
An applicant may attempt to overcome a citation by requesting a positive limitation be inserted to more clearly define the goods or services and remove any possibility of overlap with the cited marks goods or services. This would involve clearly identifying the area of conflict and substituting a more precise list of goods or services instead of the broad terms used in the existing specification. For example, the following amendments to the specification would be acceptable:
| Original specification | Cited mark's specification | Amended specification |
| Electrical apparatus and instruments | Electric plugs and sockets | Electric arc cutting apparatus and electric arc welding apparatus |
| Computer software | Computer game software | Computer software for use in the energy sector |
Where the goods or services of the cited mark are specifically related to a particular industry, field or type of good, the following amendments to the specification would be acceptable:
| Original specification | Cited mark's specification | Amended specification |
| Sporting articles | Sporting articles for use in tennis | Sporting articles; all being for use in golf |
| Spraying machines | Agricultural machines and parts therefor | Spraying machines; all for industrial use |
However, it is unlikely that an applicant will be able to overcome a citation where the cited mark’s specification covers the entire class or where the cited mark’s specification is substantially broader than that of the applicant’s mark.
6.3 Excluding particular goods or services
An applicant may be able to overcome a citation by excluding the goods or services which are similar or closely related to the goods or services covered by the conflicting mark. The relevant area of conflict must be identified and the relevant goods and services excluded. The usual form of exclusion uses the words “but not including” or “none being”. For example:
| Original specification | Cited mark's specification | Amended specification |
| Cycles | Motor vehicles | Cycles, but not including motorised cycles |
| Clothing; headgear | Footwear | Clothing; headgear; none of the aforementioned being footwear18 |
| Rental of vehicles | Rental of vehicles for the purpose of motor racing | Rental of vehicles; none being in connection with or related to motor racing |
| Clothing | Clothing for children and babies |
Clothing, none being children's clothing or babies' clothing |
Footnote
18 NB. There is an overlap between clothing and footwear in items such as socks. A citation based on clothing and footwear may be overcome by amending the item footwear to specific items, for example, slippers or shoes.
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.
6.4 Restricting the specification of the cited mark
Where the specification of the cited mark is very broad, it may not be sufficient for the applicant to limit its specification. In such instances the applicant may consider entering into negotiations with the owner of the cited mark, in the attempt to persuade the owner of the cited mark to limit the specification of the cited mark.
Where the owner of the cited mark agrees to do so and the cited mark is not yet registered, the owner of the cited mark must request to limit the specification of the application pursuant to section 37(1) of the Act. Please see Practice guideline 12, Amendments to trade mark applications.
Where the cited mark is registered, the owner of the cited mark must apply to have the registration cancelled in respect of some of the goods and services 21 or request the striking out of certain goods and services, or classes of goods and services.22 Please see practice guideline 19a Cancellation and Alteration of Registered Trade Marks.
Subject to the same rules as above, a restriction to the specification of goods and services may be done by:
- Deleting goods or services from the existing specification;
- Adding a positive limitation; or
- Excluding certain goods or services from the existing specification.
It is the responsibility of the applicant to advise IPONZ once the specification of the cited mark has been officially amended
Footnotes
21 Section 61 of the Trade Marks Act 2002.
22 Section 78(b) of the Trade Marks Act 2002.
