Specification
When you apply to register a trade mark you need to include a list of all the goods and services that you intend to use the trade mark for. This is called a specification of goods and services.
The easiest way to compile your specification is with our Trade Mark Specification Builder. You can search over 60,000 pre-approved goods and services terms. A reduced trade mark application fee is available if your specification uses only pre-approved terms.
The video opens on a title card showing the Intellectual Property Office of New Zealand logo. This fades to another screen showing the words “How to create a trade mark specification”.
We see a man standing in an office space, wearing a hat and jacket. He talks directly to the camera “It can be hard to know where to start with your trade mark specifications. Maybe you don't even know what that means. You won't be the first, and you definitely won't be the last. So, let's go over and see what you need to know.”
“All trade marks are registered for a list of goods and services. This is also known as a specification. ” We see close-up video of honey dripping from honeycomb, and words on screen describing the product type “Honey”, the goods and services class it falls in “Class 30 – Products derived from flours and grains; condiments and flavour enhancers; confectionary” and suggested terms that could be included in a specification, “honey, manuka honey, herbal honey, honey mustard, raw honey, natural honey”. The man continues speaking in the background “So when you are crafting your trade mark specification, it's important to include a list of all the goods and services that you might be using your trade mark for.
We see the man speaking directly to camera again “Think about what goods or services you're providing to customers, and what your business is known for.” The video cuts to show a woman working sitting at a desk working at a laptop computer, and words on screen describing the service type “Consulting”, the goods and services class it falls in “Class 35 – Retail, advertising and business management” and suggested terms that could be included in a specification, “business consulting, marketing consulting, commercial consulting, advertising consulting, business management consulting, business research consulting”. We hear the man continue speaking “Your specification is a key part of your trade mark application as it ultimately defines the scope of protection if your trade mark application is successful.”
We return to seeing him speaking directly to camera “Similar goods and services are grouped into 45 classes. Goods are grouped in class 1 to 34, and services are classes from 35 to 45.” The class numbers appear on screen. We cut to show another woman working at a laptop computer “When it comes to writing your specification, there's help available.” We see the website for the Trade Mark Specification Builder on a laptop screen, as the user searches for “Energy drink” and scrolls through the results. The man continues speaking “Check out the TM specification builder on the IPONZ website. The builder allows you to research and create your specifications before you start an application. There are over 60,000 pre-approved goods and services terms, so the good news is that you can write your own, but you don't need to.”
We see a woman using a stand mixer in a professional kitchen and then a group of people in a cooking class as the man continues speaking “Say you own a business that manufactures materials for making and decorating cakes, that also runs workshops for how to bake cakes.”
We return to seeing the man speak directly to camera “You can search for any and all keywords that could cover your business. In this example, keywords could be cakes, decorations, food, workshops, utensils, anything along those lines.”
We see another woman sitting at a desk using a computer, then the website for TM specification builder on screen. They navigate through and search for the term “cake”. “Let's take a look at the builder. Click on search for terms. You'll be taken to a section where you can enter the terms we mentioned earlier. As you can see, cake gives all these suggested terms and tells us what class they're in. Class 30 is for products derived from flours and grains. So, if you're making cakes and putting your trade mark on the packaging, you would select this class. If you also make icing and other similar food products, you can select the relevant class for that as well.” The user selects the term “cakes”, and then “cake icing”. The terms are added to their short list on screen.
“To see all options in this class, click on show more. After you select terms, they are moved over to the right side. If you've selected a term but you've decided that actually doesn't fit your business, just remove it by clicking on the minus sign.” The user adds the term “cake stands” to their short list, and then removes the term from their short list. “Scroll down the results of your search and you'll see that class 21 includes kitchen utensils.”
We return to seeing the man speak directly to camera “As class 21 is also a goods class, you should think about whether you'll be selling kitchen utensils. If you're not making them and putting your brand on them, you probably don't need to protect kitchen utensils.” We return to viewing the user choose terms for their specification, they now have the matches for retail of kitchen utensils under class 35 on screen, and then expands the information to find out more about what’s included in class 35. “If you are selling kitchen utensils that other companies make, either through your workshop or storefront, you may want to select retail and wholesale services for kitchen utensils and containers in class 35 as a service you offer.”
We see him speaking directly to camera again, and then back to the search results for “cake” under class 3 “As you look further through the list of terms, some of these options will not be relevant to your business, such as class 3, which refers to cakes of soap and the likes.” We go back to seeing the man speak “Simply ignore the results unless they apply to your particular business.
We see a search on screen for the term “workshop”, showing matches in class 41, showing matches in class 41, then expanding the information about class 41. “You can repeat your search using other keywords like, workshop, which brings up class 41, conducting workshops, which in this case, you would select as a core part of your business. We've only searched for two terms in this example, but you will want to search for all your keywords to find all terms that may be relevant to your business.”
We see him speaking to camera again, then see a user searching the trade marks register at the IPONZ website, then clicking through to a registered trade mark and highlighting text from the trade mark’s specification as an example “If you need a bit of inspiration to see what classes could be relevant to your trade mark application, you could even search the IPONZ register to see what competitors have selected for their specifications to protect their trade mark under.”
We see alternately the man speaking to camera again, and a user navigating through saving their specification a preview of the .pdf file that is saved, and the buttons where users can upload a specification .xml file to the IPONZ case management system trade mark application form. “Now that you have your shortlist to the right, you can select next and save your specification, so you've got it ready to upload when you're submitting your trade mark application. Save a copy as a PDF file to share with your team or legal counsel. Save as an XML file to upload later for your trade mark application.”
We see the man speaking to camera again. “It's best to get advice from an intellectual property professional if you're not sure what terms to choose for your specification or if you want to write your own.” We see another woman sitting at a table using a laptop. “You can't generally make changes to your application after you've submitted it, so, think about it carefully before you apply.”
We see the man speaking to camera again, as the trade mark fees appear on screen. “Okay, let's talk cost. A trade mark application made using pre-approved terms is $70 per class plus GST.” We see the payment screen for a trade mark application with 3 classes. “In our example, we chose three classes, so that takes the total to $210 plus GST.”
We see the man speaking to camera again and then a user searching for sample terms in their specification. “When it comes time to make your application, it'll help to be familiar with the specification builder tool as a version of the builder is available on the application form, allowing you to either build your specification from scratch or upload one you've saved earlier as an XML file.”
The image cuts to an end title screen showing the Intellectual Property Office of New Zealand and Digital Boost logos. The text on screen lists the IPONZ contact phone numbers, “Freephone within New Zealand 0508 447 669, Freephone from Australia 1800 796 338, International callers +64 3 962 2607”. The man continues speaking “Still have questions? The Intellectual Property Office of New Zealand is open between 8:30 AM and 5:00 PM, Monday to Friday.”
The text changes to show the website address of the contact us page on the IPONZ website with the words “For less urgent matters iponz.govt.nz/contact-us We’ll be in touch within 7 working days” and the man continues speaking “For less urgent matters you can head to the Contact Us page on the IPONZ website. We should be in touch within seven working days. The Contact Us page also has a common query section, so be sure to check this out in case it addresses your question or concern.”
The video finishes by showing the logo of the Ministry of Business, Innovation and Employment, and the logo of the New Zealand Government.
When deciding what to include in your specification, remember:
- You must have an honest intention to trade in all the listed goods and services.
- A specification is a description of what you trade in. Think about what people pay you to provide. This could include goods (such as coffee beans) or services (such as selling foodstuffs or running a café).
- You don’t need to list everything your trade mark will appear on. For example, there is no need to state “the trade mark will be used on a label” or “the trade mark will be used on a letterhead”. You only need to include “business cards” in your specification if that’s a good you’re selling to others, or “promotional services” if that’s a service you’re providing for others.
- You can list custom terms in your goods and services specification if needed. Your custom terms must be clear so that anyone looking at the trade mark register will be able to understand the exact nature of your goods and services – take a look at the pre-approved terms as an example.
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Classification
Classification means categorising goods and services of similar kinds into classes for ease of identification and searching.
Your specification must include the class or classes that your goods and services terms fall in. This is referred to as the classification of your goods and services.
New Zealand uses an international classification system called the International Classification of Goods and Services, also known as the Nice Classification, published by the World Intellectual Property Organization (WIPO). This classification system groups terms into 45 classes. Classes 1 to 34 are for goods and classes 35 to 45 are for services.
Charges for trade marks are per class, so the more classes in your application the higher the fee will be.
To easily compile your specification and find out what class or classes your goods and services fall into, use our Trade Mark Specification Builder.
When you apply we’ll examine your specification to confirm your goods and services terms are classified correctly. We’ll let you know of any changes required or if we need further information about a good or service term. If we find some of your goods and services terms should be in other classes you will have the opportunity to add those classes to your application (a fee will apply).
Note: You can't expand your specification scope after you've submitted your application. If you need your trade mark to protect more goods and services you will need to file a new application for these. You may want to speak with a business advisor or IP attorney about your IP strategy as part of your business plan.
For more information, see Practice guideline 3 on Classification and specification.