Part 14 - IP Australiamanuals.ipaustralia.gov.au/trademarks/Part_14.pdf · Part 14 Classification...

Part 14 Classification of Goods and Services

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Effective Date: 01 June 2018

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Part 14




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Table of Contents Part 14 Classification of Goods and Services ........................................................................ 5

Relevant Legislation .............................................................................................................. 5

1. The purpose of classification ............................................................................................. 6

2. The classification system .................................................................................................. 7

3. Requirement for a clear specification and for correct classification .................................. 10

4. Classification procedures in examination ........................................................................ 11

5. Principles of classification and finding the correct class for specific items ....................... 25

6. Wording of the specification ............................................................................................ 33

7. International Convention Documents............................................................................... 39

Annex A1 - History of the classification system ................................................................... 40

Annex A2 - Principles of classification ................................................................................. 42

Annex A3 - Registered words which are not acceptable in specifications of goods and services............................................................................................................................... 44

Annex A4 - Searching the NICE classification ..................................................................... 48

Annex A5 - Using the Trade Marks Classification Search.................................................... 49

Annex A6 - Cross search classes - pre-June 2000 .............................................................. 55

Annex A7 - Cross search classes - June 2000 to December 2001 ...................................... 56

Annex A8 - Cross search classes from 1 January 2002 ...................................................... 57

Annex A9 - Cross search classes from November 2005 ..................................................... 59

Annex A10 - Cross search classes from March 2007 .......................................................... 62

Annex A11 - Cross search classes from January 2012 ....................................................... 64

Annex A12 - Cross search classes from January 2015 ....................................................... 66

Part 14 printable version ..................................................................................................... 69




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Relevant Legislation The Act

Subsection 19(3) Certain trade marks may be registered

Subsection 27(3), (4) and (5)

Application - how made

Section 32 Registrar to decide on disputed classification of goods etc.

Section 63 Amendment of application for registration of trade mark

Section 64 Amendment before particulars of application are published

Section 65 Amendment after particulars of application have been published – request for amendment not advertised

Section 65A Amendment after particulars of application have been published – request for amendment advertised

Section 82 Adaptation of classification

The Regulations

Reg 3.1 Classification of goods and services

Reg 4.1 Applications - approved form

Reg 4.2 Applications - requirements for filing

Reg 4.4 Specification of goods and/or services

Schedule 1 Classification of goods and services

1. The purpose of classification



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1. The purpose of classification

This Part of the Manual sets out the purpose of classification, guidelines for classification, restrictions applying to amendments, and examination practice. Information on the evolution of the classification system is also included.

IP Australia uses the International Classification of Goods and Services, in which goods and services are allocated between 45 classes, each class covering a different category of related goods or services. This system was agreed to at the Nice Diplomatic Conference, and is referred to as NICE classification in this Manual. The system is primarily an administrative tool which simplifies searching for trade marks used or intended to be used on the same or related goods and/or services. Trade mark applications are made using the system, and the system is then used by Examiners when doing searches for the purposes of section 44 of the Act. These searches extend beyond the particular class or classes in which an application is made, and encompass a range of other classes, chosen because they cover related goods and services. These groupings of classes are referred to as cross search classes and are shown in Annex A6 to A12. The system is also used by trade mark owners or their agents when searching for trade mark registrations or applications which might conflict with their own trade marks.

A clear and accurate description of the goods and/or services claimed is an important aspect of any trade mark application, because it determines the scope of the application and of any resulting registration. Correct classification of the goods and/or services claimed is also important, because it facilitates accurate searching for conflicting trade marks. While IP Australia provides information on classification matters, the onus is on the owner or their agent to describe their goods and/or services correctly, and to apply for registration in the correct class(es).

2. The classification system



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2.1 The classes

2.1.1

Items are divided between classes for goods and classes for services. The classes together with their headings are listed in Schedule 1 in the Trade Marks Regulations 1995. This schedule is amended from time to time to reflect new editions of the NICE classification (see Annex A1). The classification is set out in detail in the International Classification of Goods and Services published by the World Intellectual Property Organization (WIPO).

2.1.2

IP Australia maintains a database of goods and services that includes Nice items and determinations relating to goods and services not covered by the NICE classification. This is used as a supplement to the WIPO publication and is an aid to Examiners and trade mark owners. RIO Search for Trade Marks (RIO Search) provides a goods/services search facility, where searches for keywords can be performed on the database containing IP Australia’s determinations and the NICE listed items.

2.1.3

A list of the NICE class headings can be found on IP Australia’s website. These headings provide a brief indication of the total range of goods or services falling in each of the classes (see paragraph 6.5). In some cases they will not be sufficiently detailed, when used on their own, to provide a firm guide to correct classification.

2.1.4

Users of the online trade mark application form are able to search for and choose their goods and services from a database of approved terms for goods and services and import their choices directly into their application. This database uses the same terms found in the Trade Marks Classification Search.

2.2 The International Classification - NICE

2.2.1




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The NICE classification is divided into two parts. Part 1 consists of two alphabetical lists, one for goods and one for services, showing the class to which particular goods and services are allocated. Part 2 lists the classes themselves, and the contents of each class.

2.2.2

IP Australia consults WIPO when necessary regarding interpretation of the NICE classification. Section 32 of the Act however gives the Registrar the power to decide questions arising “as to the class within which any goods or services are comprised” and the Registrar's decision on these matters is not appealable. This does not apply to Madrid Protocol export applications where in the event of a dispute between an Office of origin and the International Bureau (IB) the opinion of the IB stands.

2.3 Changes to NICE classification

2.3.1

Over time there have been changes in the classification of particular goods and services. Changes are made when necessary, and are incorporated in new editions of the NICE classification. Such changes are decided by the WIPO Committee of Experts. New editions are notified in the Australian Official Journal of Trade Marks, and changes to the class headings are given force by amending Schedule 1 of the Trade Mark Regulations. Other changes may be limited to the alphabetic listing of goods and services, or to the explanatory notes. A brief history of the changes to NICE classification, including the date of effect of the various editions, is given in Annex A1.

2.3.2

Goods and services are classified on the basis of the NICE edition in effect at the time of application. Changes are not made retrospectively to existing registrations or applications. Since changes in NICE classification are always introduced from a specific date, applications made before that date are subject to the relevant previous edition of the classification. This is confirmed in both Australian Wine Importers Trade Mark (1889)6 RPC 311 and “Cal U Test” (1967) FSR 39. In the “Cal U Test” case the classification had changed since the date of registration but the case was decided with reference to the practice as at the date of registration.

2.3.3

Since it is the classification in force at the time an application was made which applies, the possibility of changes to the classification of individual items should be kept in mind when searching for earlier conflicting trade marks. Examiners should not rely solely on the class or




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classes nominated when deciding whether a citation is appropriate - they should consider the nature of the actual goods and/or services nominated. For the same reason, the initial search should always be across all 45 classes. For example “temporary accommodation services” are now classified in Class 43 whereas, before 1 January 2002, they were classified in Class 42. Therefore Class 42 applications lodged prior to 1 January 2002 need to be considered in searches done for current applications claiming “temporary accommodation services” in Class 43.

3. Requirement for a clear specification and for correct classification



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3. Requirement for a clear specification and for correct classification

The rights gained from registration of a trade mark are governed by the goods and/or services specified on the Register. This has implications particularly in relation to infringement action, and in relation to searches done by Examiners.

Infringement is defined more broadly under the Trade Marks Act 1995 than under the repealed 1955 Act, and extends to infringing use in respect of goods or services similar to, and closely related to, those for which the trade mark is registered (see section 120). In the event of legal action for infringement of a registered trade mark, it is essential that the Court is able to determine the exact scope of the goods and/or services covered by the specification.

The specification and classification of goods and services has implications when considering conflicting trade marks. If a pending or registered trade mark has an incorrect class number or an unclear specification it may not be found or considered in a search of RIO Search. Later filed applications may then proceed to registration when grounds for rejection under section 44 would otherwise have been raised citing the earlier filed trade mark. It is therefore important that any person searching RIO Search should not be inconvenienced by incorrect classification or specifications which do not clearly state the claimed goods and services.

Regulation 4.4 prescribes the manner in which goods and services must be specified in an application. Under regulation 4.4(6) specifications should, if practicable, be framed using the terms listed in the NICE classification and IP Australia Determinations. Where this cannot be done the applicant is required to provide sufficient information to allow the classification of the goods or services to be determined (reg 4.4(7)).

Regulation 4.4(2) disallows the use of the expressions “all goods”, “all services”, “all other goods” and “all other services” in the specification of goods and/or services. In order to accord with regulation 4.4(7) and regulation 4.2(1)(c) it is office practice to also not allow terms such as “all products in the class” or vague, non-specific descriptions. While it is ultimately the responsibility of owners and/or their agents to file specifications which meet these requirements, Examiners must check that goods and services are adequately described and that they are, on the basis of the description supplied, correctly classified. More details on correct classification and acceptable wording for specifications are given in sections 5 and 6 of this Part.

4. Classification procedures in examination



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4.1 Introduction

4.1.1

This section sets out general practice for determining whether specifications adequately define the scope of the goods and/or services claimed, for determining whether individual items are correctly classified, and for determining the acceptability of amendments. In applying this practice it should be remembered that classification is not an end in itself. The aim is to ensure that it is clear what goods and/or services are claimed in an application. If there are no other matters needing to be raised in a report, a specification should only be queried when the classification is clearly incorrect, or when part or all of the specification is vague or unclear, or broad in scope to the extent that it cannot be classified. Section 5 of this Part deals with the classification of specific goods or services, and section 6 deals with wording used in specifications.

4.1.2

Sometimes help may be needed when classifying difficult items. If items cannot be classified using NICE, IP Australia's Determinations or the other classification resources available, the application should be referred to the Classification Subject Matter Expert for advice.

4.2 Considerations under sections 64, 65 and 65A of the Act on the scope of amendments

4.2.1 Section 64

Section 64 of the Act applies at the time of filing an application, and for a short period immediately following filing. Under this section of the Act, an amendment can be made to correct a clerical error or an obvious mistake, provided it is requested before the particulars of the application have been published under section 30. This allows an applicant a very short period of time within which any clerical error or obvious mistake, including an error or mistake relating to the goods, services or class(es) nominated, may be corrected. Pre-publication amendments that extend the scope of the application are allowable under section 64.

• Part 9 Amendments and Changes to Name and Address - 3. Amendments before particulars of an application are published.

4.2.2




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Once the details of the application have been published, amendments to the specification are only possible under s65(4), 65(5) and 65A of the Act.

• Part 9 Amendments and Changes to Name and Address - 4. Amendments after particulars of an application have been published.

4.2.3 Section 65(4)

Section 65(4) allows amendments to be made to correct an error in the classification of goods or services specified in the application. For example, an owner may apply for clothing in class 2 either as a result of simply entering the wrong number on the application form or being mistaken about the correct class. In considering amendments that are allowable under this subsection it must be remembered that the scope of an application is essentially determined by the specification of goods and/or services, not by the class number(s). Class numbers are simply an administrative tool for the purpose of grouping related goods or services into easily searchable lists. Any section 65(4) amendment made to correct an error in the classification of goods or services specified in the application must not extend the applicants rights.

4.2.4 Section 65(5)

Section 65(5) specifically allows an amendment to be made to add one or more classes of goods or services to an application, providing that the Registrar believes it is fair and reasonable in all the circumstances to do so. The addition of one or more classes is not an extension to the scope of the application if:

• the only goods or services which are claimed in the additional class(es) are ones falling within the scope of the original claim, and;

• the original claim was not limited or specified in a way which restricted it only to the class(es) originally specified.

It is Office practice to allow the following amendment under section 65(5):

• The addition of a class or classes when the applicant has applied for goods or services using an unqualified general or generic term, and further information (for example information supplied as part of evidence of use) shows the trade mark is used or intended to be used on goods or services clearly within the original description, but falling in a different class or classes. A class or classes can also be added in this situation without evidence, and on the basis of a simple request from the owner or their agent. This covers situations where the applicant had intended and expected coverage wider than or different from the limited coverage provided by the particular class(es) in which they made their unqualified general or generic claim. There are differences in Office practice between first and further reports in relation to this, and these are stated in paragraph 4.3.




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Section 65(5) does not allow for class(es) to be added to an application where specific items have been claimed, and the NICE classification clearly shows that these items fall only in the class(es) applied for. This subsection does allow for amendments where it is clear that it is fair and reasonable in all the circumstances to do so eg only one class number has been claimed when two or more were required to cover the nominated goods or services.

4.2.5 Section 65(7)

Section 65(7) amendments relate to any other particulars in the application. Amendments made under this subsection must not extend the scope of the goods and/or services covered by the application immediately prior to the amendment.

4.2.6

There is no provision under section 65 for items or classes to be added to applications where the items initially claimed have been clearly specified or qualified and are correctly classified. Requests from applicants for amendments must therefore sometimes be refused, and Examiners should at all times be careful in suggesting amendments. Paragraphs 4.7 to 4.11 give examples of amendments which would or would not be acceptable under section 65.

4.2.7 Section 65A

Section 65A provides the Registrar with more scope to correct the kind of clerical errors or obvious mistakes in published applications not allowable under section 65. An error or mistake could be in relation to an applicant's specification of goods or services (e.g. a typographical error). The amendment can only be made if it is the Registrars opinion that it is fair and reasonable in all the circumstances of the case to make the amendment. Since the amendment may result in an extension of the applicant's rights it must be advertised in the Australian Official Journal of Trade Marks to allow any affected third party an opportunity to oppose.

• Part 9 Amendments and Changes to Name and Address - 4.7 Section 65A

Examiners should refer any requests relating to a section 65A amendment to their team leader for consideration.

4.3 Differences in examination practice for first and further reports

An Examiner preparing a first report is in a different position from an Examiner preparing a further report. In preparing a first report they will in almost all cases have no additional information in front of them in relation to the goods and/or services being claimed. In




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preparing a further report they may have to consider additional explanatory material supplied by the owner or their agent. They may also need to respond to requests which have been made to amend the goods and/or services which have been claimed. This may include a request for an additional class or classes. Paragraphs 4.5 onwards provide guidelines to follow, but they should be read in the following context:

4.3.1 First reports

In general, classification matters should only be raised in a first report in the following circumstances:

• If the specification includes a claim for goods or services which clearly do not fall in the class applied for, and instead clearly fall in another class. An example would be a claim for detergents for medical purposes made in class 10, when such goods are classified in class 5. The applicant should be asked to delete the misclassified item, OR to pay an additional fee, add the correct class and transfer the item to that class.

• If the specification is unclear to the extent that it cant be understood without further information being supplied. An example would be a complex claim using technical terms not found in standard references, or a vague and imprecise claim where the nature of the claimed goods and/or services is difficult to determine. The applicant should be asked to supply additional information, preferably in the form of trade pamphlets and brochures, or to reword the specification to clarify the exact nature of the claimed goods and/or services.

• If goods or services applied for are not found in the NICE classification, and an IP Australia Determination or advice from the Classification Group has placed them in a different class. The applicant should be asked either to delete the misclassified item, or to pay an additional fee to add the correct class and transfer the item to that class.

• If the specification uses terms not allowed for under the regulations. An example would be a claim for all goods or all other goods (reg 4.4(2)) or a similar claim such as all products. The applicant should initially be asked to delete the prohibited terms and limit their claim to the items already specified. However, should the applicant wish to replace the prohibited term with a reasonable list of goods which do not increase the scope of the claim, they may do so.

Classification matters should not be raised in a first report in the following circumstances:

• If the specification claims goods or services which are properly classified but the general or generic terms used in the claim could also be seen as encompassing goods in another class. An example would be an application in class 3 for detergents. Such goods for domestic use clearly fall in class 3, and the fact that detergents for use in manufacturing processes fall in class 1 and detergents for medical purposes fall in class 5 should not be raised with the applicant. In such cases it should be assumed that the applicant has chosen to limit their goods or services to those falling in the nominated class, and the matter should not be raised.




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4.3.2 Further reports

If additional information has not been supplied by the owner or their agent, classification matters should be treated as for a first report.

If additional information has been supplied in response to a request made by the Examiner, or in relation to other matters (e.g. additional information provided as part of evidence of use), the following points must be considered before offering to add an extra class or classes, or before responding to a request for an extra class or classes to be added.

In general (subject to any amendment allowable under s65A), a class or classes should only be added to an application in the following circumstances:

• If the original specification included claims for goods or services clearly not falling in the class applied for and instead clearly falling in another class or classes. In this case a class or classes can be added, and the claim in the original class must be deleted.

• If clarification of unclear items shows that they do not fall in the class applied for, and instead fall in another class or classes. In this case a class or classes can be added, and the claim in the original class must be deleted.

• If information/clarification provided shows that an unqualified claim for a general or generic item such as valves or accessories or information services or for any items marked with an asterisk in NICE (an asterisk marks a generic item for which there are entries in more than one class - see paragraph 5.1.4 of this Part), was intended to cover specific goods or services encompassed by that term but falling in another class(es). In this case a class or classes can be added, and the claim in the original class only needs to be deleted if the information/clarification shows that the trade mark is not being used or is not intended to be used in relation to that class. An item cannot be transferred to another class if its scope is already qualified as falling in the original class, or not being included in other classes. A class or classes can only be added if the necessary fee has been paid. If the additional classes were not included in the Examiners initial RIO Search a further search must be done in relation to the additional classes and those classes associated with them.

4.4 Quick guide to classification procedures

The following questions need to be considered in assessing classification. Some should be considered in light of paragraph 4.3. All are amplified in succeeding paragraphs:

• In multi-class applications are the goods and/or services grouped by class number? - see paragraph 4.5.

• Is it clear what the applicant's proposed specification covers? If it is not, and if the specification is not based on a general or generic term, the applicant will have to be




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asked for clarification - see paragraph 4.6. An extra class or classes should not be offered at the time of this request.

• Is it clear from the NICE classification list or IP Australia's Determinations which class or classes the goods and/or services fall into? - see section 5.

• Does the specification claim goods and/or services not included in the class or classes listed on the application? - see paragraphs 4.8 and 4.10.2.

• Is it necessary to transfer goods and/or services between classes? - see paragraph 4.9.

• Has a request been made, or is there a need, to add an extra class or classes? - see paragraph 4.8.

• Would a proposed amendment widen the scope of the specification as filed? If so it will not be allowed under section 65 - see paragraph 4.8.

• Is the application filed in the correct class or classes? - see paragraph 4.10.1.

4.5 Goods or services to be grouped together by class number

4.5.1

According to section 27(5) of the Act, an application may be made in more than one class. Such applications are commonly referred to as multi-class applications although this is not a term used in the legislation. Regulation 4.4 prescribes the manner in which the specification of goods and/or services in a multi-class application should be set out:

• the goods and services must be grouped together according to their class (reg 4.4(3));

• the class number must be nominated for each group (reg 4.4(4)), and;

• the groups must be listed in the order of their class numbers (reg 4.4(5)).

Where the specified goods and/or services are not in line with the class number or numbers in which they are filed, it is possible to transfer them to the correct class number if this class also appears on the application. If misclassified goods or services cannot be transferred in this way, the applicant must either delete them from the application or add an extra class or classes to the application, subject to payment of the appropriate fee for each additional class (fee item 4 of Schedule 9).

An additional RIO Search based on the new class(es) and associated classes must be done if those classes were not included in the Examiners original search.

• Part 10 Details of Formality Requirements - 5.3 Problems with a specification




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4.5.2

If an item can fall in more than one class it may be nominated in more than one class in a multi-class application. However if only one class is nominated for such an item, this matter should not be raised with the applicant. The application will be treated at the first report stage as only covering the goods or services which fall in that particular class. (See paragraph 4.7.2.)

4.6 Clarity of the specification of goods and/or services

4.6.1

All terms used to specify the goods and/or services for which registration is sought must be clear and easily understood. Terms found in the NICE classification or IP Australia's Determinations (reg 4.4(6)) will be accepted without question. Other terms are acceptable if they can be found in mainstream or specialist dictionaries, or are easily understood terms common to particular trades.

4.6.2

If part or all of the specification is vague or unclear to the extent that it cannot be classified, the Examiner should request further information from the applicant. It should not be suggested to the applicant at this stage that they may be able to add a class or classes. The request should be for further information in the form of trade brochures or pamphlets published by the applicant, which are directly relevant to the application (reg 4.4(7)). While specifications should name the goods and/or services, the generic description of a range of goods falling in the class may be used if the applicant uses or intends to use the trade mark on that range of goods. For example industrial chemicals, substances for laundry use and computer hardware are all adequate descriptions for goods in classes 1, 3, and 9 respectively. Section 5 of this Part explains the principles applied in determining the classification of specific goods or services, and section 6 deals with wording used in specifications.

4.7 Goods or service incorrectly classified by the applicant

Incorrect classification exists when an item of goods or services included in a specification falls totally in a class other than the one nominated in the application. In such instances, the initial search for conflicting trade marks should be based on the class(es) in which the goods and/or services actually fall, and not just on the class(es) in which the application has been made.

Action to correct incorrect classification will depend on the particular circumstances. Options include:




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• the deletion of the incorrectly classified item(s);

• the transfer of the misclassified item(s) to the appropriate class(es) if they exist on a multi-class application, or;

• the addition of a further class or classes to which the misclassified item(s) can be transferred, in which case the appropriate fee must be paid before the class(es) can be added.

4.7.1

An example of where a class may be added (or an item transferred in a multi-class application) would be where the applicant has specified, in class 39:

Arranging of travel; providing car hire; booking of accommodation for travellers.

The Examiner should inform the applicant in the first report that booking of accommodation for travellers is classified in class 43, not class 39. The applicant should then be offered the option of paying an additional fee and adding class 43 to cover this particular service, or deleting the misclassified service from the application. See paragraph 4.8 for further details regarding when classes may and may not be added to an application.

4.7.2

In the case of applications where the goods and/or services are correctly classified but could also fall in classes not included in the application, these items should be taken to be correctly classified, and no action should be taken in the first report. It should be assumed, in the absence of any further information, that only the goods and/or services in the nominated class(es) were intended to be covered. The applicant should not be invited to provide further information, although any additional information which is supplied during the examination process should be considered and may justify the addition of further class/es to the application.

For example if an application is filed for:

Class 1: Detergents

it should be taken that the applicant only wishes to register the trade mark for use on those detergents which fall in class 1 and no offer to add a class or classes, or query concerning this, should be made in the first report.

Another example is an application filed for:

Class 7: Valves

where valves are classified in any of ten classes, depending on purpose and material. It should be assumed that the only goods intended to be covered are valves in class 7, i.e.




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valves being parts of machines, and no offer to add a class or classes, or query concerning this, should be made in the first report.

4.8 Adding a class or classes to an application

4.8.1

As indicated previously it is possible to add a class or classes to cover goods and/or services specified in an application but not in any way covered by the class(es) originally nominated. This is a matter which should be raised in the first report. It is also possible to add a class or classes if the applicant has supplied, at a later stage of examination, further information on what was intended to be encompassed by general or generic terms such as detergents or accessories or information services or items identified in the NICE classification with an asterisk, appearing in the original specification. A class or classes can only be added if the necessary fee has been paid. In all cases, once a class or classes have been added, and if they were not covered in the Examiner’s initial search, a further search must be done covering these additional classes and the classes associated with them.

The addition of a class or classes will not always be permitted, and the following criteria must be kept in mind:

• The widening of a specification to add goods or services not encompassed by the application as filed is generally not allowed after the particulars of an application have been published in terms of section 30. However section 65A amendments may result in an extension of the owner’s rights.

• Classes may only be added to correct an error in the classification of a specification, including when unqualified general or generic terms have been used and further information has been supplied on the applicant’s use or intended use of the trade mark. If an applicant has claimed specific goods and/or services which are properly classified in the class or classes specified, no extension to other classes can be considered. Similarly, if an applicant has specifically limited their claim by the use of phrases such as “in this class” or “not falling in other classes”, no extension to other classes can be considered unless the claimed items clearly do not fall in the nominated class(es). Extensions to other classes in these circumstances could only be considered if the provisions of section 65A applied.

• Fees must always be paid before any classes are added, and an additional search must always be done if the added class or classes were not covered by the original search.

4.8.2

The following examples are a guide to examination practice:

A class could not be added if an application was filed for any of:




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Class 3 : Detergents for household purposes or detergents in this class or detergents not falling in other classes.

It would not be possible (after publication under section 30) to add a class or classes to cover the other classes in which detergents fall (classes 1 and 5). This is because the application is clearly made with the intention of covering only detergents for household use, and not those for medical purposes or for use in industrial or manufacturing processes, or is clearly made with the intention of covering only detergents classified in class 3, and not those in other classes. An additional class or classes would therefore widen the specification. Similarly, if an application was filed for detergents for household purposes without a class number the class would have to be entered as class 3, as it would not be possible to widen the specification to cover goods for other uses.

A class could be added if an application was filed for:

Class 3: Detergents for household use and for medical purposes.

The application could be extended to cover an additional class, because class 5 goods are specified and are intended to be covered by the application. The separation of the goods into the added class would not widen the specification. The Examiner should do a search based on classes 3 and 5. The Examiner should then inform the applicant in the first report that two classes are appropriate and ask whether both classes are required, in which case payment for the additional class is needed before the application can proceed. Alternatively, the applicant can delete one of the sets of goods. In both cases the applicant will need to consent to an appropriate amendment of the specification.

A class or classes could be added if an application was filed for:

Class 3: Detergents of all kinds or Detergents in all classes.

The application could be amended to include all of classes 1, 3 and 5 since the full range of goods has been claimed. The allocation of the goods to their proper classes would not widen the specification. The Examiner should do a search based on classes 1 and 3 and 5 (and associated classes). The Examiner should then inform the applicant in the first report that the claim covers two additional classes and ask whether these additional classes are required, in which case payment for the additional classes is needed before the application can proceed. The appropriate wording in each class would be detergents. Alternatively, the applicant can amend the claim to read detergents and continue solely in class 3, or transfer the amended claim to one or both of the other two classes and delete the original claim in class 3.

A class or classes could be added if an application was filed for:

Class 3: Detergents.




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Without any qualification or intended purpose for their use being indicated, it will be assumed that protection is only required for detergents in class 3, and the scope of the application should not be queried in the first report, and an additional class or classes should not be suggested.

But if the applicant then submits that the goods to be covered actually fall in, say, class 5, or if evidence of use shows that this is the case, the error in classification can be corrected by transferring the application to class 5.

Alternatively, if the applicant submits that the goods to be covered actually fall in both classes 3 and 5, or if evidence of use shows that this is the case, the error in classification can be corrected by adding class 5 and retaining class 3.

Alternatively, if the applicant submits that the goods to be covered actually fall in all of classes 1, 3 and 5, or if evidence of use shows that this is the case, the error in classification can be corrected by adding classes 1 and 5 and retaining class 3.

4.8.3

Any change that occurs to the classes covered by an application must be entered on the trade mark database as soon as possible.

4.8.4

Care must be taken to ensure that amendments are not made if they would widen the scope of the goods and/or services covered by the application immediately prior to the amendment (an exception being amendments made under section 65A which may result in an extension of the applicant’s rights). It should be noted in relation to this that a class heading provides a general indication of the goods or services within a class and does not encompass all the goods or services belonging in the class. An application that contains a specification comprising the class heading is considered only to cover the goods or services encompassed by the heading and will not necessarily, for example, cover parts and fittings, or accessories (see also paragraph 6.5). This also needs to be borne in mind if international priority claims need to be verified.

4.9 Transfer of goods and services where an application covers more than one class

4.9.1

If there are goods or services in a multi-class application which are incorrectly classified it is possible to transfer those goods or services to the appropriate class if this is also nominated on the application. For example if the application as filed claims:




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Class 3: Deodorants for personal use; room deodorants; perfumes.

Class 5: Air freshening preparations.

Class 11: Air deodorising apparatus.

the room deodorants are wrongly classified in class 3 and need to be deleted from the class 3 specification. They could however be transferred to the class 5 specification which could be amended to read Air freshening preparations; room deodorants.

4.9.2

If there are insufficient classes nominated to allow transfer of all the mis-classified items in an application, it may be possible to transfer some goods or services and add classes to cover the remaining goods or services. If an application claims:

Class 3: Deodorants for personal use; perfumes; room deodorants.

Class 5: Air freshening preparations.

Class 11: Air deodorising apparatus; deodorising apparatus for personal use.

the room deodorants could be transferred to the class 5 specification, but deodorising apparatus for personal use falls in class 21 and this class is not nominated in the application. The Examiner should inform the applicant in the first report that the goods room deodorants may be transferred and that the applicant may make a request to add class 21 to the application for deodorising apparatus for personal use. The class can only be added once the extra fee has been paid, and a search for class 21 and classes associated with it must be done in the Examiners original search. Alternatively, the applicant may delete deodorising apparatus for personal use from the specification.

4.10 Amendment of a class incorrectly nominated in the specification

4.10.1

If the Examiner or the owner finds that an application has been filed in the wrong class it may be necessary to transfer it to another class. If the goods or services have been correctly and clearly stated on the application form but do not fall in the class as filed, amendment of the class number can be allowed. For example, a single class application filed for:

Class 9: Computer programming services.

clearly indicates a service, even though the application claims a goods class, and the claimed services should be transferred to class 42. In this case no adjustment to the fee which has been paid is needed. The Examiner’s initial search should be for class




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42 and associated classes, and should not be limited to class 9 and associated classes.

If the application had been a multi class application already claiming class 42, for example:

Class 9: Computer programming services

Class 42: Scientific and industrial research

then the transfer of the item from class 9 to the pre-existing class 42 would leave no items in class 9. In this case the filing fee for class 9 will not be refunded.

4.10.2

If, however, an application was filed in class 36 for insurance services when the applicant in fact sold computers to insurance agents, a transfer to class 35 to cover computer retailing services would not be possible as the original claim for insurance services could not be interpreted as having included these other specific services, being retailing services. The amendment would not be allowed under section 65.

4.10.3

Requests to substitute one class for another need to be considered carefully since it may result in an extension of the owner’s rights.

4.11 Goods claimed in a services class, or services claimed in a goods class

Paragraphs 4.7 to 4.10 deal predominantly with the classification of goods in goods classes, and services in services classes. Classification issues can also arise however between these two groups of classes. Such issues will fall generally in one of two categories.

4.11.1

The first category covers instances when items clearly specified as goods or as services have been claimed in the wrong class group, for example, a claim for goods being computer software made in class 42. In such instances the incorrect classification is obvious, and the item will need to be deleted or transferred to class 9 under the guidelines given in paragraphs 4.7 to 4.10. The applicant should be informed of this option in the first report.

4.11.2

The second category is not as clear cut, and concerns issues which often arise after evidence showing actual use of the trade mark has been submitted. This category covers claims such as children’s rides and games in class 28. On the face of it this claim is valid,




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and should not be questioned in the first report. Significantly however, the wording does not strictly specify that the claim is for goods or limits or qualifies the claim in any way. That is, the claim is not along the lines of goods being children’s rides and games or children's rides and games in this class. In some instances it will become clear during the course of examination, including perhaps consideration of evidence of use of the trade mark, that the intended coverage was actually for services and not for goods. An example of such an instance would be for provision of children’s rides and games in class 41. In such instances the applicant should be allowed to transfer their application to the appropriate class and amend their specification to clarify their claim. The guidelines given in paragraphs 4.7 to 4.10 will apply.

5. Principles of classification and finding the correct class for specific items



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5.1 Classification tools

5.1.1

The first reference point for Examiners when considering the classification of particular goods and/or services should be IP Australia’s on-line classification database (refer to Annex A5 of this Part). This database contains all the NICE classification terms as well as IP Australia’s Determinations. It is important to remember that NICE classification terms have precedence over IP Australia Determinations. This applies particularly when new entries are made in subsequent editions of NICE. Individual entries should always be read in the context of the explanatory notes for each class contained in the NICE classification or in the on-line classification database

5.1.2

Other classification resources are available to Examiners on-line, but to allow the best possible consistency in examination, the order of priority for classification must be:

• NICE (including the General Remarks section which offers guidance in classifying items not specifically listed in NICE).

• IP Australia Determinations

• WIPO Goods and Services Manager

• EUIPO's TM class search tool (which includes the UKPTO and USPTO databases).

5.1.3

Applicants are encouraged to use the terms listed in the NICE classification or in the published IP Australia Determinations when nominating the goods and/or services covered by an application (reg 4.4(6)). However it is not always possible to do so. If the meaning of a term is unclear the applicant should be requested to provide further information to assist with correct classification. The classification for an unlisted item may be decided on the basis of the general principles underlying NICE as outlined in Annex A2. If the correct classification cannot be determined on this basis, the file should be referred to the Classification Subject Matter Expert for advice.

5.1.4




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Care must be exercised in using the NICE classification list when a generic (broad or general) item appears in one class and a related but more specific term appears in another. In this case the specific term will override the generic entry. Generic items are often marked with an asterisk to indicate that there are entries for that item in more than one class. For example the generic term aluminium foil is found in class 6 and is marked with an asterisk, and foils of metal for insulating as specific goods are classified in class 17. However the generic term furnaces appears in NICE without an asterisk in class 11, even though furnaces for laboratory use are listed in class 9. This latter example shows that a check should be made for a more specific term even where the generic term is not marked with an asterisk.

5.1.5

Classification using the principles set out in Annex A2 may not always be straight forward. Some goods cause particular difficulty since they are sometimes classified by purpose and sometimes by material. Complex or specialised services such as Internet services can also present difficulties.

5.2 Classification of some specific goods and services

5.2.1

The following sub-paragraphs deal with some specific classifications which either commonly cause problems, or which can act as examples for some of the basic approaches used in the classification of goods and services. The items covered are:

Consultancy services, Advisory and Information services, Electronic Games, Filters and Filtering Materials, Rental (or Hire or Leasing) services, Telecommunication services, Valves, Manufacturing of Goods, Club or association services, Internet services, Kits.

5.2.2 Consultancy services

In general, consultancy services belong to the same class as the service or field in relation to which they are being supplied. The fact that the advice or information obtained through the service may be used for commercial or business purposes is not a relevant factor, nor is the manner in which the advice or information is supplied, for example by way of a computer database, over the Internet, or over the telephone.

All consultancy services relating directly to the management or administration of a commercial undertaking are in class 35. Management and administration refer to the way the business is organised or run. Thus, consultancy services for management or administration are in class 35 regardless of the specific activities of the business using the consultancy service. Technical consultancy services concerning the specific activities of a business may however fall in any of a number of classes, depending on the nature of the activities.




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Consultancy services provided by a member of a profession and which fit the following description from the 11th edition of the WIPO list are classified in class 42: services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities; such services are provided by members of professions such as chemists, physicists, engineers, computer specialists etc.

Also in class 42 are consultancy services relating to activities analogous to the above activities but perhaps not covered by the concept of “professions” as defined above. Such services include most design services, and most research services (market research and business research are an exception and are classified in class 35). It is possible that the consultancy services of a single organisation could fall in more than one class; eg. a management consultant might advise on business organisation (class 35) and also on computer software (class 42).

It is possible in fact for “consultancy services” to fall in any of the service classes, as the following examples show:

Class 35 - Consultancy services in the field of business administration

Class 36 - Financial consultations

Class 37 - Building consultations

Class 38 - Consultancy services relating to telecommunications

Class 39 - Travel consultants

Class 40 - Dress making consultancy

Class 41 - Training consultation services

Class 42 - Consultancy services for computer program design

Class 43 - Consultancy services relating to retirement homes

Class 44 - Pharmaceutical consultancy services

Class 45 - Security consultancy services

Despite the fact that it is possible for consultancy services to fall in any of the service classes, a simple claim for consultancy services in any of the service classes will be considered too vague. The applicant must identify the area in which they are consulting as it is as it is the field in which they are supplying the consultancy services that will determine the correct class.

5.2.3 Advisory and information services

Similar to consultancy services, advisory and information services are classified according to the subject content of the advice or information being provided. For




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example business advisory services are in class 35, insurance advice is in class 36, transport information is in class 39, weather information is in class 42 and so on. This classification practice applies irrespective of how the advisory or information service is provided, for example by electronic means such as by way of a computer database, over the Internet or over the telephone. It should also be noted that the gathering together of information in the sense of market research or opinion polling, falls in class 35 regardless of subject matter.

Also similar to consultancy services, a simple claim for advisory services or information services will be considered too vague. The applicant should be requested to provide more information about the specific area/s in which it provides advisory or information services, as it is the subject content of the advice or information being provided which will determine the correct classification of the services.

5.2.4 Electronic games

Electronic games apparatus will be classified in class 28. Games software and programs will remain in class 9 as set out below.

The classification set out in NICE 11 is:

Class 9: Programs (computer game-)

Class 28: Games (apparatus for - )

This means, in general terms, that:

Class 9 includes computer games software and programs

Class 28 covers all computer and electronic gaming apparatus

Note: Computer games programs and software, irrespective of the nature of the games themselves, are all classified in class 9.

5.2.5 Filters and filtering materials

Filters are usually finished articles and are normally classified according to their use, for example:

Filters being parts of engines or machines - class 7

Filters (photographic) - class 9

Filters for ultra violet rays for medical purposes - class 10

Filters being parts of water supply apparatus - class 11




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Filters being parts of electric coffee machines - class 11

Filters (coffee) of paper - class 16

Filters (cigarette) - class 34

Filtering materials however are classified by material, for example:

Filtering materials (unprocessed plastics) - class 1

Filtering materials of paper - class 16

Filtering materials (semi-processed foams or films of plastic) - class 17

Filtering materials of textile materials - class 24

5.2.6 Rental (or hire or leasing) services

The General Remarks on page 3 of NICE, 11th edition, state the criterion to be applied where there is no specific alphabetical listing is:

“Rental services are in principle classified in the same classes as the services provided by means of the rented objects (eg, Rental of telephones, covered by Class 38).”

Other examples are rental of cars in class 39, rental of office machines and equipment in class 35 and rental of sporting equipment in class 41. Leasing services which are the financing of lease arrangements fall in class 36 because they are essentially financial services e.g. lease-purchase financing is classified in class 36.

A claim for "rental services" in any of the service classes will be considered too vague. The applicant will need to provide specific information about the items for which it is providing a rental service as this will be the determining factor in the correct classification of the rental services.

5.2.7

Telecommunication services

Class 38 in general only covers services directly relating to the means of telecommunication (e.g. land lines, satellite transmission facilities, rental of communications systems) and does not in general cover entertainment, information or advice services provided via telecommunications, such as games services provided on-line (class 41), financial information (class 36), and so on. Class 38 does include, however, information or advice or consultancy services about telecommunications.

5.2.8 Valves




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Valves are classified either according to their use or according to the materials from which they are made, for example:

Class 6 - if made of common metal

Class 7 - if parts of machines

Class 9 - (Solenoid -)[electromagnetic switches]

Class 10 - if for feeding bottles or medical purposes

Class 11 - if level controlling valves in tanks parts of heating installations

Class 12 - if for vehicle tyres

Class 15 - if parts of musical instruments

Class 17 - if made of rubber or vulcanised fibre

Class 18 - if made of leather

Class 20 - if water pipe valves of plastics or materials in this class

5.2.9 Manufacturing of goods

With the exception of custom manufacturing of goods (that is, the manufacture of particular goods to a specific customer’s special requirements and specifications), which is a service falling in class 40, manufacturing of goods is not considered to be a service offered to others. This process is incidental to the creation of a product. Applicants should apply in the goods class appropriate to the products on which they are using or intend to use their trade mark.

5.2.10 Club or association services

Services provided by a club or association to its members are classified according to the nature of the service provided. For example, entertainment or education services provided by a club to its members will fall in class 41 and arranging of tours by a club for its members will fall in class 39. A claim such as services in this class rendered by a club to its members would not specify the scope of the services sufficiently. At the same time the applicant would not be able to amend their claim to include services rendered by a club and falling in another class or other classes, because of the limiting phrase “in this class”. An application claiming services rendered by an association to its members would also need to have the services specified more precisely, but the claim could be transferred to another class, or other classes could be added to the application, to cover the services once they were specified.




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5.2.11 Internet services (global computer network services or website services)

This is a rapidly expanding area, and the exact nature of the claimed internet services can sometimes be difficult to determine. The question to be asked in classifying such services is this: is the application being made for Internet services as such, or is it simply being made for services offered over the Internet or in relation to the Internet?

• If the services are simply ones being offered over the Internet, then it is these services which need to be classified, as they are not an Internet service as such. For example Internet-based retailing services fall in class 35, Internet-based education services fall in class 41, Internet-based publication of texts (other than publicity texts) falls in class 41, Internet-based publication of publicity texts falls in class 35, and information services offered over the Internet fall in the class appropriate to the information being supplied (see paragraph 5.2.3).

• If the services are specialised Internet services as such, they will fall predominantly in classes 38 or 42. Class 38 covers access-related services such as Internet access provider services. Class 42 covers general computer, computer programming and computer software-related services such as creating and maintaining web sites for others or hosting web sites for others as well as search engine services.

5.2.12 Kits

Classification will vary according to the specific nature of the kit, and in particular whether it is the goods making up the kit or the purpose of the kit which is the most significant aspect. In general, kits will be classified in one of the following ways:

• According to the nature of the dominant goods brought together in the kit if that is clearly specified. Cosmetic kits for example are classified in class 3 with other cosmetic goods.

• According to the purpose of the goods making up the kit if the purpose is clear. Bleeder kits for testing brakes for example are classified in class 9 because the purpose of the kit is to act as testing apparatus.

• According to the product which will result if the kit, in use, is consumed in the production of a definite finished product. Craft kits for jewellery construction for example are classified in class 14.

Kits made up of items which individually fall in many classes, and which do not fall in one of the above categories, can present problems in classification particularly if it is the applicant’s intention to sell some of the components separately. When dealing with an application for such a kit it is first necessary to know what the kit comprises (if no indication has been given). The goods proper to the class in which the application has been made should then be itemised followed by a qualifying phrase such as "all for inclusion in kits" or "all for sale as




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part of a kit" or "all for sale in kit form". An applicant claiming “kits” or “kits in this class” should always be asked for further information about the nature of the kits.

6. Wording of the specification



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6.1 General considerations

The need for a clear and unambiguous specification of the goods and services covered by an application has been referred to in 14.3. The requirements under the legislation are clearly prescribed in regulation 4.4 and applicants should comply with these requirements when filing applications. The primary requirement however is for clarity. Bearing in mind the matters raised in paragraphs 6.2 and 6.3, if it is clear what the application covers, and if the goods or services as specified can be classified, the specification should not be questioned.

6.2 Words and phrases which should be avoided or qualified

The following expressions which commonly occur in specifications may lead to ambiguity if they are used inappropriately. If there is no other reason to issue a report, problems with a specification should only be raised when there is a real likelihood that it may be misconstrued. If however a report is to issue on other matters, then amendments to clarify the specification should be suggested.

6.2.1 Parts and fittings (or accessories)

The following comments relate also to claims for accessories. Parts and fittings should relate to specific goods and should not be accepted without qualification. For example:

Class 12: Parts and fittings

does not adequately identify the goods to be covered, but the following wording would be acceptable:

Class 12: Parts and fittings for motor vehicles.

Punctuation can be important in ensuring that the parts and fittings relate to the goods intended by the applicant. It is also important to ensure that any claim for “parts and fittings” is applied sensibly and logically, and only to goods which would in a practical sense have parts and fittings.

For example:

Class 9: Computers and parts and fittings therefor

makes it clear that both the “parts” and the “fittings” relate to the computers,

Similarly:

Class 9: Computers and modems; parts and fittings therefor




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leaves no ambiguity that the parts and fittings must relate to all the preceding goods.

6.2.2 Apparatus, instruments, equipment, systems

No question should be raised on the use of these and similar terms where they are suitably qualified, e.g. Heating apparatus, Measuring instruments, Mining equipment, Computer systems

6.2.3 Goods, services

These terms, used on their own in a specification, are considered to be too vague, and expressions such as “goods in this class” or “services in this class” are not acceptable. If used in conjunction with a description that adequately describes the type of goods or services, they will however be acceptable, for example:

Class 16: Stationery goods.

6.2.4 And the like, ancillary, related

These terms are too vague if used as descriptions of goods or services as in:

Class 28: Bats and balls and the like goods.

Class 35: Advertising and related services.

In all such cases the goods or services should be fully specified.

However, where the goods or services are clearly stated, the terms may be accepted as a secondary qualifier, for example:

Class 25: Sports and casual shirts, tee shirts and polo shirts, for use in games and the like leisure activities.

Class 41: Training of personnel in data processing and related office skills.

In both of these examples the primary goods or services are clearly defined.

6.2.5 Services in relation to...

It will depend on the manner in which this term is used as to whether a specification is acceptable. For example, if the applicant were to claim consultancy services in relation to financial affairs in class 36, this claim would be taken as acceptable on the basis that the applicant has specified the service provided -“consultancy services”- and described the nature of the consultancy services -“in relation to financial affairs”. These types of claims are




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also acceptable where the services have been clearly defined and are in the class claimed. For example, a claim for services in relation to education claimed in class 41 would be acceptable as education services clearly fall in class 41. However, a claim for services in relation to water in any class is not acceptable because the services which are being claimed have not been stated, only the topic to which the unspecified services relate. These services could conceivably fall in a number of different classes (e.g. water testing in class 42, water supply in class 39, installation of water supply systems in class 37 etc.).

6.2.6 Principally or Predominantly (in relation to goods classified by material)

When goods which are normally classified by material consist of more than one material, it is up to the applicant to advise the principal material of which the goods are made. Phrases along the lines of “all made wholly or principally of plastic” or “made predominantly of metal” are usually used for such descriptions. Qualifications along these lines should only be requested if the nature of the goods is unclear and they cannot be classified.

6.2.7 Abbreviations

Abbreviations should generally be avoided in specifications. While the meaning of many abbreviations and acronyms may be well known today, it is difficult to know how some of them may be interpreted in the future. Some abbreviations tend to drop from current use, e.g. the LP and EP (long playing and extended play records) have been overtaken by CD (compact disc). Other abbreviations may have more than one meaning, e.g. VCR means both “video cassette recorder” and “visual control room”, and its use in a specification could result in an ambiguous claim. Other abbreviations may be so recently coined or so specialised that their use in a statement of goods or services will mean that the specification is not clear. However, if the meaning of the abbreviation is clear and/or the abbreviation is in common use, there is no need to propose its replacement.

6.3 Registered trade marks are not to be used in specifications

6.3.1

Applications are sometimes filed with a specification in which a registered trade mark is used to specify the goods which the applicant wishes to cover. A list of trade marks which must not be used in specifications is provided in Annex A3 (this list is not exhaustive). The registered trade marks are usually well known in respect of particular products and the applicant incorrectly uses them as the name of the same or similar products. This may have the effect of prejudicing the trade mark owner’s registration rights. There are however some instances where trade marks may be acceptable in a specification for services. In such circumstances the specialised services may be applied to, or are in relation to another traders goods. For instance:




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Class 37: repair and maintenance of Carrier air conditioners

6.3.2

Examiners should familiarise themselves with the list in Annex A3 and if these, or other, trade marks appear in a specification, the applicant should be requested to delete them and provide a generic description of the goods or services, along the lines of the alternative descriptions given in Annex 3. For example, WINDCHEATER would not be acceptable in a class 25 specification where the applicant intends to cover close fitting garments for wind protection. WALKMAN would not be acceptable in a class 9 specification to cover portable audio equipment. Any amendment to the specification must not have the effect of extending the goods or services claimed in accordance with as this is not allowed under section 65.

6.4 Wording of exclusions and restrictions

6.4.1

Exclusions in a specification are intended to exclude items which would otherwise fall within the specification claimed. This is usually done in order to overcome grounds for rejection. For example if there are grounds for rejection under section 44 the applicant may seek to exclude items from the specification which are the same as, or similar to, the goods or services of the cited application. Goods or services may also be excluded to overcome an objection under section 41 by removing from the specification those items which the trade mark is not capable of distinguishing.

• Part 27 Overcoming Grounds for Rejection Under Section 44 - 2.2 Excluding goods or services from the application

• Part 23 Overcoming Grounds for Rejection under Section 41 – 2.2

6.4.2

An exclusion is not acceptable if it attempts to exclude goods and/or services which are not actually included in the original specification. The usual form of exclusion uses the words “but not including” or “none being” as in the following examples:

Class 7: Washing machines and spin driers; but not including any such goods for domestic use.

Class 16: Articles of stationery, paint brushes, typewriters; but not including adhesives.

Class 30: Pies; flans; pasties; none being foods containing pork.




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Class 41: Providing courses of instruction, examination services and arranging of seminars, all at tertiary level; but not including any such services relating to laboratory research.

6.4.3

Exclusion may include goods and/or services which are similar to those which form the primary part of the exclusion. Such an exclusion is not acceptable if it attempts to exclude goods or services which are not actually included in the original specification. Acceptable exclusions of this kind are given in the following examples:

Class 12: Road vehicles; but not including bicycles or any goods similar to bicycles

Class 16: Office machines and parts and fittings therefor; pens and printed matter; but not including typewriters, stapling machines or addressing machines and not including parts and fittings of any of these excluded goods.

6.4.4

A specification may be restricted, or an endorsement limiting the use of the trade mark may be entered, to ensure that in use the trade mark will not be deceptive or confusing.

• Part 29 Trade Marks likely to Deceive or Cause Confusion

6.5 The scope of class headings

The section titled Guidance for the User in the NICE Classification provides information on the function and scope of the class headings. The opening sentence states “The class headings indicate in a general manner the fields to which the goods and services in principle belong.” This heavily qualified statement makes it clear that a claim for a class heading does not equate to a specific claim for all the particular goods or services placed in that class. An application which claims a class heading covers only the goods or services actually specified in the heading, or clearly encompassed by the heading. Such a claim does not cover all the items in the class, and is not equivalent to a claim for all goods or all services. This is particularly relevant if an amendment is requested which mentions goods or services not specifically referred to in the class heading. Such an amendment should be considered carefully as it may in fact increase the scope of the application (paragraph 4.8.4 gives an example of this) and therefore may not be acceptable under section 65 of the Act (see paragraph 4.2).

6.6 Unrealistically broad specifications




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An applicant may not claim as part of the specification of goods and/or services a range of goods or services in a particular class which is unrealistically broad so that in commercial terms it is unlikely that the applicant would deal in or provide that range of goods or services (reg 4.8(3)). For example an application that specified every item listed in NICE for a single class, for instance class 3 would appear to be unrealistically broad. In these circumstances the applicant should be asked to provide a declaration to confirm an intention to use the trade mark on all the goods or services specified, or to propose an amended specification which is limited to the actual range of goods and services in relation to which the trade mark is used or intended to be used.

• Part 10 Details of Formality Requirements - 5.2 Restrictions to the specification

Claims for class headings are acceptable, as are claims for parts of class headings

6.7 Claims for all goods, all other goods or all services, all other services

Under regulation 4.4(2) an applicant must not use the phrases “all goods”, “all services”, “all other goods” or “all other services” in their specification. If the claim is simply for “all goods” or “all services”, the owner must specify the goods or services for which they are seeking coverage, and delete their claim for “all goods” or “all services”. If the owner has specified some goods or services but has also claimed “all other goods” or “all other services”, then they must limit their claim to the goods or services already specified, by deleting the terms “all other goods” or “all other services”. However, should the applicant wish to replace the prohibited term with a reasonable list of goods which does not increase the scope of the claim, they should be allowed to do so. Related expressions such as “all items” are also unacceptable.

• Part 10 Details of Formality Requirements - 5.2 Restrictions to the specification

7. International Convention Documents



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7. International Convention Documents

Under normal circumstances the International Convention documents will not be required during examination. They will only be required when, because of the priority date claimed, the application has to be cited against another application. It will then be necessary to check the specification of the Australian application against that contained in the Convention documents to confirm that the conflicting goods and/or services have been properly claimed in the Convention documents.

• Part 11 Convention Applications - 4. Convention documents

The owner must be informed if the goods or services claimed in the Australian application are broader than those specified in the convention claim. The owner will then need to consent to a multiple priority date endorsement stating the filing dates relevant to the claimed goods and/or services. Examiners should note that for the purpose of checking International Convention documents the class number(s) listed on the earlier application need not be the same as the numbers listed on the Australian application. Where this occurs the class numbers may be ignored - they are not relevant, and providing the goods or services correspond the documents can be accepted.

Annex A1 - History of the classification system



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Annex A1 - History of the classification system HISTORY OF THE CLASSIFICATION SYSTEM

The International Classification and the Nice Agreement

In 1934 a new classification for international purposes was drawn up at an International Conference held in London under the auspices of the United International Bureau for the Protection of Intellectual Property (BIRPI), a predecessor of WIPO. The International Classification became the subject of the Nice Agreement in 1957 when a number of countries agreed to adopt it for use in the registration of trade marks.

Australia acceded to the Nice Agreement.

Amendments to the International Classification

The following editions of the International Classification have been published, subsequent to the Nice Agreement:

First edition 1963

Second edition 1971

Third edition 1981

Fourth edition 1983

Fifth edition 1987

Sixth edition 1992

Seventh edition 1996

Eighth edition 2001

Ninth edition 2007

Tenth edition 2012

Eleventh edition 2017

Further information on the various editions:

• The first and second editions were only published in French as the official text.

• An official English translation was published separately in 1965. This was updated in 1967, 1970, 1971, and twice in 1974.

Annex A1 - History of the classification system



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• The third edition of the International Classification was published in both English and French with both languages being authentic texts. This became effective on 1st February 1981. No changes of goods or services from one class to another were involved.

• The changes introduced in the fourth edition became effective on 1st June 1983.

• The changes introduced in the fifth edition became effective on 1st January 1987.

• The changes introduced in the sixth edition became effective on 1st January 1992.

• The changes introduced in the seventh edition became effective on 1st January 1997.

• The changes introduced in the eighth edition became effective on 1st January 2002. In this edition class 42 was revised and three new service classes were added. There are now thirty four goods classes and eleven service classes.

• The changes introduced in the ninth edition became effective on 1st January 2007.

• The changes introduced in the tenth edition became effective on 1st January 2012.

• Since 2013, a new version of each edition is published annually. The current version is the eleventh edition. It entered into force on January 1, 2017

Annex A2 - Principles of classification



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Annex A2 - Principles of classification THE PRINCIPLES OF CLASSIFICATION

Many items are already classified in NICE. When however it is necessary to classify an item which does not appear either in the NICE classification or as an Office Determination, the following criteria should be applied:

Classification of Goods

• FINISHED PRODUCTS are classified, in principle, according to their FUNCTION or PURPOSE.

(e.g. Water filters are classified in class 11 because their FUNCTION or PURPOSE is to FILTER WATER, and class 11 includes goods for WATER SUPPLY PURPOSES.)

• If this criterion is not provided for in the list of classes, FINISHED PRODUCTS are classified by ANALOGY with other COMPARABLE finished products contained in the alphabetical list.

(e.g. Saveloys are classified in class 29 by ANALOGY with SAUSAGES.)

• If there are no comparable products other criteria may be applied, for example the MATERIAL of which the goods are made or the mode of OPERATION.

(e.g. Handkerchiefs are classified in class 16 if made of paper and in class 24 if made of materials other than paper. They are classified by MATERIAL.)

• Finished products which are MULTIPURPOSE COMPOSITE objects may be classified in ALL the classes that correspond to EACH of their FUNCTIONS or INTENDED PURPOSES.

(e.g. Clock radios, as COMPOSITE OBJECTS, can be classified in either class 9 or class 14.) An exception to this rule is smart watches which are exclusively classified in class 9.

• RAW MATERIALS, UNWORKED OR SEMI WORKED, are classified, in principle, according to the MATERIAL of which they consist.

(e.g. Common metals, unwrought or semi-wrought are classified by MATERIAL in class 6.)

• Goods intended to form PART OF ANOTHER PRODUCT are, in principle, classified IN THE SAME CLASS as that product, BUT only if these goods cannot normally be used for another purpose.

Annex A2 - Principles of classification



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(e.g. Straps for wristwatches are classified in class 14 rather than class 18; Vehicle covers {shaped} are classified in class 12, but Vehicle covers {not fitted} are classified in class 22.)

• Where goods, whether finished or not, are classified according to the MATERIAL of which they are made and where they are made of different materials, such goods are in principle classified according to the material which PREDOMINATES.

(e.g. Boxes made of metal with plastic trimmings will be classified to class 6, but if the plastic predominates they will be classified in class 20.)

• Containers ADAPTED to the product they are intended to contain are classified, in principle, IN THE SAME CLASS as the PRODUCT ITSELF.

(e.g. Violin cases are classified in the same class as violins, in class 15.)

Classification of Services

• Services are classified, in principle, according to the BRANCHES OF ACTIVITY specified in the headings of the service classes.

(e.g. Medical insurance will be classified according to the primary activity to which it relates. Thus it will be classified in class 36 as an insurance service and NOT class 44 as a medical service. Advice or information on medical insurance will also be classified in class 36.)

• Alternatively, services are classified by ANALOGY with other COMPARABLE services contained in the alphabetical list.

(e.g. Accounting services are classified by ANALOGY with BUSINESS SERVICES, in class 35.)

• RENTAL SERVICES are classified, in principle, in the SAME CLASSES as the services provided by means of THE RENTED OBJECT.

(e.g. (a) Rental of telephones is classified in class 38 as this is the same class in which telecommunication services appear. (b) Rental of vehicles is classified in class 39 as a transport service, however rental of road sweeping vehicles is classified in class 37 because it is regarded as a cleaning service.)

Annex A3 - Registered words which are not acceptable in specifications of goods and services



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Annex A3 - Registered words which are not acceptable in specifications of goods and services This table contains words not to be used in specifications. This is not an exhaustive listing.

WORD CLASS TRADE MARK NUMBER

POSSIBLE ALTERNATIVE DESCRIPTION

ALFOIL 6 169697 aluminium foil

ASPRO 5 27674 analgesic

ASTROTURF 22 207686 Artificial turf

BAKELITE 17, 1 181860 insulating materials; synthetic resins

BAND-AID 5 81017 adhesive dressing/materials

BIRO 16 110718 ball point pen

BOBCAT 12, 7 198207 707659

earth moving vehicles/equipment

BOOGIE 28 318931 body board

BULLETIN 16 360604 newspaper/publication

CANOLA 29 388988 rapeseed/edible oil

CATERPILLAR 7, 12 10993 224505

Machinery

CELLOPHANE 16 40461 cellulose sheet

COCA-COLA 32 27136 aerated cola beverage

COKE 32 259966 aerated cola beverage

COLORBOND 6 312434 precoated metal

COLT 13 183091 revolvers and firearms

COMPACTUS 7 115900 devices for storing

CROCKPOT 11 256295 electric slow cooking apparatus

CRONUT 30 1576675 croissant-doughnut pastry

CROSS TRAINER

28 649185 Exercise machines




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CYCLONE 6, 19 4156 134403

scaffolding materials; fencing materials

DACRON many many depends on class; usually as a synthetic fibre

DICTAPHONE 9 5331 instrument for recording and reproducing dictation

DOONA 20, 24 255876 260713

quilted eiderdowns or padded quilts

EFTPOS 9, 36 1442654 electronic funds transfer machines; electronic point of sale services

ELASTOPLAST 5 58521 elasticised dressing

ELECTRIC EEL 7 465254 964042

sewer/drain cleaning apparatus or equipment

ESKY 11 170377 (portable) cooling apparatus/ice boxes

FEDORA 25 985811 Caps, Hats

FRISBEE 28 200620 toy flying disc

GLAD 16 189240 plastic bags and wrapping material

GORE-TEX 25 488078 Waterproof or breathable clothing

GRANOLA 30 32227 muesli

GYPROCK 19 80319 building material

HACKY SACK 28 396681 footbag

HDMI 9 1090354 audio/video interface devices

HEAT BEADS 4 238635 solid fuel

HOOVER 9 212066 vacuum cleaner

IPHONE 9 1136410 smartphone

IPOD 9 890681 and 1028187

Portable audio and data storage equipment

JACUZZI 11 414701, many hot tub

JEEP 12 79890 small military-style vehicle

KEVLAR many many synthetic fibre




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KLEENEX 16 96087 591231

facial tissues

LAMINEX 1, 6, 19 83123 Adhesives; metallic and non-metallic laminates

LAUNDRETTE 7 86257 washing machine

LAUNDROMAT 37 349514 rental of washing machine

LI-LO 20 123823 inflatable mattress

LINOTYPE 7 988 printing machine

LYCRA 22, 23, 24, 25

136409 259961 671529 671530

synthetic fibres and filaments

MACINTOSH 9 422737 computer equipment and software

MASONITE 19 73181 fibre board

MEMORY STICK 9 767452 and 809486

Portable data storage device

MOCKTAILS 32 448833 Non-alcoholic beverages

NINTENDO 28 369005 electronic game console

PERSPEX 17 225004 heat resistant glass/plastic

PLAY DOH 28 16

285646 modelling compound/clay

POLAROID 9 170272 photographic equipment

POLYBAG 10 570600 infusion bag

POP 6 112971 rivets

POPSICLE 30 1199039 frozen confections

PRIMUS 11 338178 portable cooking apparatus

PYREX 21 392519 Glassware

ROLLERBLADE 28 480323 in-line skates

SEGWAY 12 902122 motorised, wheeled personal mobility vehicles

SELLOTAPE 16 266801 adhesive tape




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SMOOTHY 29 322747 fruit flavoured milk drink

SPAM 29 80139 canned spiced ham

SPLAYD 8 197110 combined knife/fork eating instrument

STACKHAT 9 412641 safety helmet

STICKY NOTES 16 487919 adhesive paper notes

STYROFOAM 1, 17 245115 192831

multicellular expanded synthetic resinous material

TASER 13 1141020 electroshock weapon

TECHNICOLOR 9 55020 movie apparatus

TEFLON many many generally refers to a non-stick lining for cookware

THERMOS 21 4938 insulated flask

TUPPERWARE 21 165120 190376

plastic storage containers

VASELINE 5 4624 lubricating jelly

VELCRO 24 171553 hook and loop fastener

VITAMIZER 7 102530 food and drink mixes

WALKMAN 9 351776 portable audio equipment

WINDCHEATER 25 70180 close-fitting garment for wind protection

WINDEX 3 364236 glass cleaner

WINNEBAGO 12, 37 1349326 recreational vehicle

WHIPPER SNIPPER

7 308824 lawn-grass trimmer or edger

XEROX 9 111400 Photocopier

Annex A4 - Searching the NICE classification



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Annex A4 - Searching the NICE classification Please see Annex A5 for information on using the Goods and Services Search Engine.

Annex A5 - Using the Trade Marks Classification Search



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RIO Search for Trade Marks provides a search engine for goods and services. This engine searches a database of over 65,000 pre-approved goods and services in the 45 classes, including Nice items and IP Australia Determinations.

The Trade Marks Classification Search can be accessed by clicking on the drop down button on the top right corner of the screen and selecting the Goods and Services option.




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This will bring you to the following screen:




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Type your search term in the field and click Search.




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The search results are returned in the following format:




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If you click on the class number, it will take you to a full listing of all the terms in that class in the database (see screen shot below). However, please note that this list is not exhaustive; there are many things not listed in the database which may fall in the class you are looking at.




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(AP) and (NC) indicate the origin of the item:

• (AP) are IP Australia Determinations

• (NC) are Nice items

Annex A6 - Cross search classes - pre-June 2000



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Annex A6 - Cross search classes - pre-June 2000 CROSS SEARCH CLASSES PRE-JUNE 2000

Annex A7 - Cross search classes - June 2000 to December 2001



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Annex A7 - Cross search classes - June 2000 to December 2001

CROSS-SEARCH CLASSES JUNE 2000 TO DECEMBER 2001

Annex A8 - Cross search classes from 1 January 2002



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CROSS SEARCH CLASSES FROM 1 JANUARY 2002




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Annex A9 - Cross search classes from November 2005



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CROSS SEARCH CLASSES FROM NOVEMBER 2005




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Annex A10 - Cross search classes from March 2007



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Annex A11 - Cross search classes from January 2012



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Part 14 printable version



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Part 14 printable version You will be redirected to the printable version.

If you are not redirected click here for the printable version of the part of the manual.

Part 14 - IP Australiamanuals.ipaustralia.gov.au/trademarks/Part_14.pdf · Part 14 Classification...

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Transcript of Part 14 - IP Australiamanuals.ipaustralia.gov.au/trademarks/Part_14.pdf · Part 14 Classification...