Annexure to Computer Services

1. Introduction

This Annexure outlines the correct classification of computer, telecommunication and online goods and services under the Trade Marks Act 2002 (the Act) that are more difficult to classify. The Intellectual Property Office of New Zealand (IPONZ) provides these guidelines to assist trade mark applicants to select the correct class and scope of specifications before making an application.

The contents of this Annexure are drawn primarily from the International Classification of Goods and Services (Nice Classification) (2017, 11th edition) (reference updated 1 January 2017).

Other points of reference include:

• The UK Patent Office Trade Marks Registry work manual
• The UK Patent Office web site
• The Australian Trade Marks Manual of Practice and Procedure
• United States Patent and Trademark Office Acceptable Identification of Goods and Services Manual (1997)
• The United States Patent and Trademark Office web site

2. Correct classification

This Annexure outlines the correct classification of computer, telecommunication and online related goods and services that are more difficult to classify under the Act. In providing these general guidelines, the Intellectual Property Office of New Zealand (IPONZ) hopes to assist trade mark applicants to select the correct class and scope of specifications, before making an application. It is important that the goods or services applied for are correctly classified in light of current international classification standards.

The examiner will check the specification and draw any errors to the attention of the applicant. However, as long as the goods or services applied for can fall in the class applied in, the examiner will assume that the applicant has applied in the correct class.

Call centre services

Call centre services are classified in class 38 or class 35 according to the nature of the services.

Cloud computing services

‘Cloud computing’ is a broad term that covers numerous services which relate to the cloud. ‘Cloud computing’ in class 42 covers infrastructure as a service (IaaS), platform as a service (PaaS), serverless computing and software as a service (SaaS), for example.

Where a specification includes the unqualified terms ‘cloud computing’, ‘cloud computing services’ and the like, examiners will object that the term is unclear. The applicant will be asked to describe the service more precisely.

Where the ‘cloud computing’ service being provided is the provision of non-downloadable software or SaaS, the applicant must specify the software that is being provided precisely. See our guidelines on computer software specifications for further information.

Computer software

The following ‘cloud computing’ terms are acceptable, for example:

Cloud services, cloud-based services

Where a specification includes the unqualified terms ‘cloud services’, ‘cloud-based services’ and the like, examiners will object that the term is unclear. The applicant will be asked to describe the services more precisely, so they clearly fall within the class applied in.

The following terms are unacceptable, for example:

Where the service being provided is the provision of non-downloadable software or SaaS, the applicant must specify the software that is being provided precisely. See our guidelines on computer software specifications for further information.

Computer software

The following terms are acceptable, for example:

Computer security services

Computer security services may be classified in the following classes depending on the nature of the service being provided:

Directory services

Directory goods and services are classified as follows:

Electronic publications

Downloadable electronic publications are considered to be goods, such as software, and are classified in class 9.

Electronic publishing services are classified as follows:

Hyperlinks

The service of providing hyperlinks on a web site to other traders’ websites is a telecommunication service and is classified in class 38.

Middleware

Middleware is considered to be software. Therefore the installation, updating and maintaining of middleware is classified in class 42.

Non-fungible tokens (NFTs)

A non-fungible token (NFT) is used to certify the ownership and authenticity of goods or services. A non-fungible token is not considered a good or a service in itself; rather, a non-fungible token authenticates a good or a service.

Goods authenticated by non-fungible tokens (NFTs)

Where a goods class specification includes the unqualified wording “non-fungible tokens [NFTs]”, “downloadable non-fungible tokens [NFTs]” and the like, examiners will object that the term is unclear. The applicant will be asked for a clearer description which specifies the goods that the non-fungible tokens authenticate.

All downloadable digital goods authenticated by non-fungible tokens are classified in class 9. Where the goods authenticated by the non-fungible tokens are downloadable files, the exact nature of the file must be specified (for example, “downloadable image files” or “downloadable multimedia files”).

For national trade mark applications filed on or after 1 January 2024 and international applications that designate New Zealand on or after 1 January 2024, the following class 9 terms will not be acceptable, as they lack specificity:

• Downloadable files authenticated by non-fungible tokens [NFTs]
• Downloadable digital files authenticated by non-fungible tokens [NFTs]

Examples of acceptable descriptions of downloadable digital goods authenticated by NFTs:

Physical goods authenticated by non-fungible tokens are classified in the appropriate goods class.

Examples of acceptable descriptions of physical goods authenticated by NFTs:

Retail, wholesale and distribution services in relation to non-fungible tokens (NFTs)

Class 35 terms like the following are unacceptable as they do not clearly state the goods to which the services relate:

• Retail of non-fungible tokens [NFTs]
• Wholesale of non-fungible tokens [NFTs]
• Mail order services in relation to non-fungible tokens [NFTs]
• Distribution of non-fungible tokens [NFTs]

Where a retail, wholesale or distribution term includes the unqualified wording “non-fungible tokens [NFTs]” or the like, examiners will object that the term is unclear. The applicant will be asked to describe the services more precisely, by specifying the goods that the non-fungible tokens authenticate.

The following terms are acceptable, for example:

See our guidelines on retail, wholesale and distribution services for further information.

Annexure General: Retail, wholesale and distribution services

Entertainment services in relation to non-fungible tokens (NFTs)

Class 41 terms like the following are considered unclear, as they do not specify what is authenticated by the non-fungible tokens:

• Entertainment services, namely providing non-fungible tokens [NFTs]

Where a class 41 specification includes the unqualified wording “providing non-fungible tokens [NFTs]”, “providing NFT experiences” or the like, examiners will object that the term is unclear. The applicant will be asked to describe the services more precisely, by specifying what the applicant is providing that is authenticated by non-fungible tokens.

The following terms are acceptable, for example:

Other services relating to non-fungible tokens (NFTs)

Examiners will consider other NFT-related services on a case-by-case basis.

The following terms are acceptable, for example:

Virtual goods

Virtual goods are digital items used in online virtual environments. Virtual goods are classified in class 9 because the goods consist essentially of downloadable data.

Where a specification includes the unqualified wording “virtual goods”, “downloadable goods”, “digital goods” and the like, examiners will object that the term is unclear and the applicant will be asked to describe the virtual goods more precisely.

The following terms are acceptable, for example:

Virtual restaurant services

Virtual restaurant services are classified in several different classes depending on the nature of the services being provided.

“Virtual restaurant” is a term used to describe services provided by a food service business that operates out of an existing restaurant’s kitchen in the real world.

The term “virtual restaurant” can also be used to describe entertainment services provided in online virtual environments.

Where a specification includes the unqualified wording “virtual restaurant”, “virtual restaurant services”, “operating a virtual restaurant” or the like, examiners will object that the term is unclear. The applicant will be asked to describe the services in an alternative way, so they clearly fall within the class applied in.

The following terms are acceptable, for example:

The class 39 and class 43 terms set out above describe services provided in the real world.

Virtual services

Virtual services are services provided within online virtual environments.

Services provided in virtual environments may be described in a number of different ways. The following wordings are considered clear, and therefore acceptable, as part of the description of a virtual service:

• … in online virtual environments
• … in virtual environments
• … in online entertainment environments
• … in virtual entertainment environments
• … in virtual reality environments
• … in virtual reality games
• … in metaverse environments
• … in the metaverse
• … in web3 environments

Examiners will consider other ways of describing virtual environments on a case-by-case basis.

The provision of a service in a virtual environment is classified by considering the purpose and impact of that service in the real world.

If the purpose and real-world impact of the service are the same whether the service is provided virtually or in person, the virtual service should be classified in the normal class for that particular service.

The following terms are acceptable, for example:

However, if the purpose or real-world impact of the service changes because the service is being provided in a virtual environment, and the essential nature of the service is entertainment, the service being provided in the virtual environment is classified in class 41 and should be clearly described as an entertainment service.

The following terms are acceptable, for example:

Web-casts and web-casting

The terms “webcasts”, “webcasting” and similar cover a wide range of services that can be in the nature of a broadcasting service in class 38 or an entertainment service in class 41.

For example, if the services involve providing services via a website, from which the user can receive “webcasted” transmissions over the Internet, these services are correctly classified in class 38. However, if these services involve providing a particular online show “webcasted” over the Internet, these services are correctly classified in class 41.

Webcasting services are classified as follows:

3. Broad specifications

When examining a specification of goods or services, an examiner considers whether the applicant has applied for an unrealistically broad range of goods or services. A concern will be raised under section 32(2) of the Act where the examiner considers the specification applied for is too broad or that it is commercially unrealistic that the applicant would use the mark in relation to that broad range of goods or services.

The following are considered unrealistically broad or vague in a specification and will result in a concern being raised under section 32(2) of the Act.

Computer services

The provision of computer services including the term “computer services” is considered to be too broad and too vague as the exact nature of the services included within this description is unclear. In addition, computer services are classified in more than one class according to the nature of the goods or services.

Where a specification includes the term “computer services” and the applicant has not specified the exact nature of these services, a concern will be raised under section 32(2) of the Act.

Computer services are classified as follows:

Computer software

The unqualified terms “computer software”, “non-downloadable computer software”, “computer applications”, “software modules”, “interactive software”, “multimedia software”, “software as a service (SaaS)”, "application service provider (ASP)" and the like are considered too broad and too vague, as they do not precisely indicate the particular software that the applicant provides.

Where a specification includes a broad software term, a concern will be raised under section 32(2) of the Trade Marks Act 2002 and the applicant will be asked to specify the software more precisely.

Software terms that clearly specify the function/purpose of the software will be acceptable, for example:

• Computer game software
• Downloadable anti-virus software
• Geographical information system (GIS) software
• Software for use in cancer diagnosis
• Computer programmes for use in teaching children to read
• Software as a service (SaaS) for appointment scheduling and time management
• Providing temporary use of online non-downloadable software for dental imaging purposes
• Downloadable applications (apps) that enable users to make payments
• CAD software for use in the architecture field
• Spreadsheet software for use by budget advisors
• Accounting software for use in medical practices

Software terms that describe the software’s function or purpose in a vague way are not acceptable. The following terms are not acceptable, for example:

• Software for personal use
• Software for general use
• Software for charitable purposes
• Software for household purposes
• Software for use in offices

Software terms that specify only the intended users will generally not be acceptable. Examiners will object if the specified users could use a wide variety of software. The following terms would be unacceptable, for example:

• Software for children
• Software for the elderly
• Software for use by businesses

Where a software term specifies use in a particular field, sector or industry, examiners will interpret the term narrowly. “Software for use in the X field/sector/industry” and “software for the X field/sector/industry” will be interpreted to mean “software for use in the provision of X services”.

Examples

• “Software for use in the travel industry” will be interpreted as “software for use in the provision of travel services”, and is acceptable.
• “Software for the financial services sector” will be interpreted as “software for use in the provision of financial services”, and is acceptable.
• “Software for use in the medical field” will be interpreted as “software for use in the provision of medical services”, and is acceptable.
• “Software for use in the retail industry” will be interpreted as “software for use in the provision of retail services”, and is acceptable.

Terms that specify only the apparatus the software will be used on are generally not acceptable, because a wide range of software can be used on most apparatus. The following terms are unacceptable, for example:

• Software for use on tablet computers
• Software applications for mobile phones
• Apps for use with televisions
• Software for use in vehicles

If the software operates the apparatus, the software term can be reworded like this:

• Software for operating tablet computers
• Software applications for operating mobile phones
• Apps for operating televisions
• Software for operating vehicles

Software terms that specify use on specialised apparatus will be assessed on a case-by-case basis. If deemed acceptable, these terms will be interpreted narrowly as software for operating the specialised apparatus.

Examples 

• “Software for radiology equipment” will be interpreted as “software for operating radiology equipment” and is acceptable.
• “Software for labelling machines” will be interpreted as “software for operating labelling machines” and is acceptable.

Databases

Database services are classified in more than one class according to the nature of the services being provided. The provision of database services including the term “providing databases” is considered to be too broad and too vague as the exact nature of the services included within this description is unclear, and a concern will be raised under section 32(2) of the Act. The Applicant will be asked to qualify those terms by specifying the exact service, or services, in respect of which registration is desired.

If the Applicant is providing a service by means of a computer database, the applicant should apply in the appropriate service class for those services. The term should be reworded using this format:

• Providing [insert X service] by means of a computer database.

If the applicant is providing non-downloadable software by means of a computer database, the term should be reworded as follows, and is correctly classified in class 42:

• Providing non-downloadable software [insert wording that describes the function or purpose of the software] by means of a computer database.

 IPONZ classifies the provision of database services as follows:

The service of providing information by means of a computer database is classified according to the subject matter of the information being provided. The description of service should resemble the following formats:

• Providing [X information] by means of a computer database.
• Providing information from a database in the field of [indicate X field].

For example, the following specifications would be acceptable:

Electronic business services or E-business services

Electronic commerce services or E-commerce services

The term “e-business” covers a wide range of services including electronic commerce services. The term e-business is commonly used to refer to business that is conducted via electronic means, including over the Internet, as well as other computer networks or wireless communications and can also encompass all forms of electronic trading. However, the term “e-business” and similar do not indicate the nature of the service that is being provided and as such could be classified in several classes.

Therefore, the unqualified term “electronic business” or “e-business” is not considered sufficient to describe the relevant services in a specification. Where a specification includes the unqualified term “electronic business” or “e-business”, a concern will be raised under section 32(2) of the Act. The applicant will be asked to qualify those terms by specifying the exact service or services in respect of which registration is desired.

Electronic commerce services or E-commerce services

Electronic commerce is a broad term encompassing services that can be classified in several classes.

The unqualified term “electronic commerce” or “e-commerce” is not sufficient to describe the relevant services in a specification. Where a specification includes the unqualified term “electronic commerce” or “e-commerce”, a concern will be raised under section 32(2) of the Act. The applicant will be asked to qualify those terms by specifying the exact service or services in respect of which registration is desired.

Electronic commerce can be classified as follows:

Internet and online services

The provision of Internet or online services including the terms “providing Internet services”, “providing online services” or similar, is considered to be too broad and too vague as the exact nature of the services included within these descriptions is unclear. Internet or online services can be classified in more than one class according to the nature of the services.

Moreover, where the provision of the Internet or online service relates to the provision of information or to the provision of the service itself, then this service is classified according to the subject matter of the information being provided.

Where a specification does not specify the exact nature of the Internet or online service, a concern will be raised under section 32(2) of the Act.

IPONZ classifies the provision of Internet and online services as follows:

A. Service providers

Services provided by means of the Internet or online are classified according to the underlying service. Entities providing services over the Internet or online are considered service providers.

B. Content providers

The service of providing information by means of the Internet or online is classified according to the information subject. Entities that provide information over the Internet or online are considered content providers, that is, they provide the substantive content for a website or web page. The description should not be phrased in terms of “providing access”.

The description of the service should resemble these formats:

• providing information in the field of [indicate specific service-related field]; or
• providing [indicate specific service relate field] information via a website.

C. Telecommunication providers

The service of providing telecommunications connections to a global computer network is classified in class 38. Entities that provide this service provide the telecommunications connections by which one computer can communicate with another.

The telecommunications provider does not provide the computer hardware that stores and processes the data, or the information itself. The telecommunications provider provides only the means by which the data or information is transferred. This service connects the user to the access provider or the website itself. The telecommunications provider charges the access provider or the user for cost of the telephone connections.

D. Access providers

The service of “providing user access to a global computer network (service providers)” is classified in class 38. This service is that of the access provider, that is, entities that provide the computer service that enables computer users to access databases and home pages of others.

The access provider provides the computer/server connection required for computer users to access a content provider. Internet access providers make an initial charge to the user for the computer connection to the Internet, and then charge the user for any time spent connected to the Internet.

The word “access” should only be used to describe the services of access providers. It should not be used to describe the services of a content provider.

Media

The unqualified term “media” is not considered sufficient to describe the relevant goods in a specification but is acceptable when used in conjunction with a description that adequately describes the type of media. For example, recording media and optical data media are acceptable.

Where a specification of goods includes the unqualified term “media”, a concern will be raised under section 32(2) of the Act. The applicant will be asked to qualify this term by specifying the exact goods in respect of which registration is desired.

Networks

The unqualified term “networks” or “network services” is not considered sufficient to describe the relevant services in a specification but is acceptable when used in conjunction with a description that adequately describes the type of network. For example, the term “communications network” is acceptable.

Where a specification of goods includes the unqualified term “networks”, a concern will be raised under section 32(2) of the Act. The applicant will be asked to qualify this term by specifying the exact goods in respect of which registration is desired.

Online services

Internet services.

Providing a website

IPONZ examines “providing a website” terms to be consistent with the NICE classification and the way these terms are treated internationally. Taking this approach benefits New Zealand applicants who file international registrations as it will help avoid irregularities being raised in relation to “providing a website” terms. It also means that trade mark specifications will be clear and easily understood.

IPONZ examines “providing a website” terms as unclear in any service class. Terms beginning with “providing a website featuring” are considered both unclear and unduly broad. Where these terms appear in a specification a concern will be raised under section 32(2) of the Act.

The applicant will be asked to qualify those terms by specifying the exact service or services in respect of which registration is desired.

If the applicant is providing a service via a website, the applicant should apply in the appropriate service class for those services. The term should be worded using the following format:

• Providing [insert X service] via a website.

If the applicant is providing online non-downloadable software via a website, the term is correctly classified in class 42, and should be worded using the following format:

• Providing on-line non-downloadable software [insert wording that describes the function or purpose of the software] via a website.

If the applicant is providing information via its website, the service should be worded as an information service. Information services are classified according to the subject matter of the information being provided. The applicant should apply in the correct service class, and the term should be worded using the following format:

• Providing [insert X information] via a website.
• Providing information via a website in the field of [indicate specific field].

Examples of acceptable wording:

Examples of unacceptable wording: