In this practice guideline
Classification and specification
Section 31 and 32 of the Trade Marks Act 2002
This document provides guidelines on sections 31 and 32 of the Trade Marks Act 2002, which concern the classification of goods and services and the breadth of a specification. These Guidelines do not constrain the judgment and discretion of the Commissioner of Trade Marks, and each application will be considered on its own merits.
1. Introduction
Section 31 of the Trade Marks Act 2002 (“the Act”) is concerned with the classification of goods and services.
Under section 31(1) of the Act, the goods and services in respect of which registration is desired must be classified according to the edition of the Nice Classification in effect at the time of application for registration of the trade mark.
Any question arising as to the class or classes within which the goods or services fall will be decided by the Commissioner 1 .
Section 32(1) of the Act allows a single application to be filed in either one class or more than one class.
Section 32(2) of the Act is concerned with the breadth of the specification of goods and services, and is virtually identical to section 20 of the Trade Marks Act 1953.
2. Classification of goods and services
Section 31(1) of the Act states:
Goods and services must be classified, for the purpose of registration of a trade mark, according to the edition of the Nice Classification in effect at the time of application for registration of the trade mark.
New Zealand uses the Nice Classification system 2 , an international classification system that comprises 45 classes. This system groups together similar goods or services. The classification system is set out in detail in the International Classification of Goods and Services (Nice Classification) published by the World Intellectual Property Office (WIPO).
The current edition is the Twelfth Edition of the Nice Classification which came into force on 1 January 2023 under the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of Registration of Marks 3 .
The international classification system was established in order to enable efficient searches for conflicting trade marks worldwide. The system is of benefit to Office staff, but also benefits outside users who wish to check whether there are registered marks in use that conflict with marks they are using or propose to use.
Goods and services are divided into 45 classes. Classes 1 to 34 pertain to goods and classes 35 to 45 pertain to services.
Changes are made to the international classification of goods and services from time to time. These changes are incorporated in new editions of the Nice Classification. Changes to the international classification are proposed by the Preparatory Working Group and confirmed by the WIPO Committee of Experts. Major changes are avoided wherever possible, but may be necessary to remove anomalies and inconsistencies and to make improvements with new entries.
2.1 Classification system
Under earlier legislation, the different editions of the Nice Classification were incorporated into the Schedules to the Trade Mark Regulations 1954. However, as the Schedules are no longer in force, all references to the Schedules to the Trade Mark Regulations 1954 have been amended.
The IPONZ database and the journal now record the previous Schedule and Classification Systems as follows:
- Schedule 4 (bases of Fourth Edition of Nice Classification is referred to as Nice Classification Schedule 4)
- The Eighth Edition of the Nice Classification is referred to as Nice Classification Schedule 8
- The Ninth Edition of the Nice Classification is referred to as Nice Classification Schedule 9
- The Tenth Edition of the Nice Classification is referred to as Classification Schedule 10
- The Eleventh Edition of the Nice Classification is referred to as Classification Schedule 11
The Ninth Edition of the Nice Classification came into force on 1 January 2007 4 . The main changes to the Nice Classification as a result of the introduction of the Ninth Edition are set out in Appendix 1.
The Tenth Edition of the Nice Classification came into force on 1 January 2012. The main changes to the Nice Classification as a result of the introduction of the Tenth Edition are set out in Appendix 2.
The Eleventh Edition of the Nice Classification came into force on 1 January 2017. The main changes to the Nice Classification as a result of the introduction of the Eleventh Edition are set out in Appendix 3.
The Twelfth Edition of the Nice Classification came into force on 1 January 2023. The main changes to the Nice Classification as a result of the introduction of the Twelfth Edition are set out in Appendix 4.
New versions of the current edition are released annually on 1 January. These changes are minor and our guidelines and databases are updated to reflect the modifications. Details on the specific changes can be found can be found online at the World Intellectual Property Organisation (WIPO) website as they are released.
2.2 Importance of classification
The specification of a trade mark is important both before and after registration.
While an application is still pending, it is in relation to its goods or services that a mark is tested for distinctive character (section 18), misleading reference and offensiveness (section 17) and confusing similarity to other trade marks (section 25). In encouraging applicants to make the specification precise, and by ensuring that the goods and services are classified correctly, examiners lay the groundwork for sound decisions in these areas. If an application has been registered in the wrong class, later searches may not find it and IPONZ may then inadvertently register two conflicting marks.
Once a mark is registered, the scope of the applicant’s rights in the mark is defined and limited by the scope of the specification 5 .
The owner of a registered trade mark may need to take legal action against infringement by another trader. One of the key questions in such an action is whether the mark complained of is being used for the same or similar goods or services as those of the registered mark.
It is vital therefore that the Court and all concerned are clear about what goods or services the registration covers. Applicants with registrations that are not clearly defined may have difficulty defending their rights, as the court may deem that their registrations do not cover the goods or services the applicants believed they had protection for.
2.3 Classification resources
WIPO publishes the current classification schedule, with class headings, general remarks and explanatory notes online.
WIPO, the UK Patent Office and the United States Patent and Trademark Office have online databases containing a list of goods and services. Although some of the items in these databases appear in the Nice Classification lists, others are not specifically mentioned there. The databases may thus be of assistance in determining the correct classification of goods or services that are not listed in the Nice Classification books.
View the United States Patent and Trademark Office classification database.
The Classification Annexure, which is annexed to these Guidelines, should also be referred to as it lists a number of common classification issues.
3. Classification examination
We will examine the application to ensure the goods and services are clear and have been correctly classified. When examining a specification of goods or services, an examiner must consider four things:
- Whether the nature of the goods and services is clear (section 31)
- Whether the goods and services are correctly classified in the class or classes applied for (section 31)
- Whether the specification contains a registered trade mark or the applicant’s own mark
- Whether the applicant has applied for an unreasonably wide range of goods and/or services (section 32(2)).
3.1 Clear specification
It is the responsibility of applicants or their agents to submit specifications that clearly set out the goods and/or services the applicants wish to cover in their applications.
If an examiner is unsure about the meaning of a particular item, the examiner should ask the applicant for either an explanation or an amendment to the specification.
3.1.1 Acronyms and abbreviations
Acronyms and abbreviations are generally acceptable in a specification providing they are well known, for example, VCR or CD-ROM. Unusual terms are acceptable if they are common in the particular trade, known to the examiner, or if the applicant has provided an explanation that can thereafter be viewed by outside parties.
3.1.2 Punctuation, spelling tautology and formatting
Where the specification is unclear due to poor punctuation, examiners should ask the applicant to correct this 6 . The examiner may suggest appropriate alternative punctuation.
Examiners will correct any obvious spelling errors, including adding spaces where required, but should ask the applicant where the spelling error is not obvious.
However, where the wording of the specification is unclear, then the examiner will request more information from the applicant, or alternatively, suggest appropriate alternative wording or punctuation.
In addition to the points noted above, IPONZ applies standardised formatting to trade mark specifications of goods and services in line with current international best practice.
- Specifications should take the form of a single sentence commencing with a capital letter and ending in a full stop;
- The body of the specification should be in lower case, except for acronyms and proper nouns;
- Goods and services in the specification should be separated by semicolons or commas instead of listed on separate lines;
- Double spaces are removed
To help applicants comply with the standardised format, our website incorporates an automatic reformatting function in the online trade mark application form.
Applicants retain the ability to file specifications in the format they choose, however, the examination team may reformat specifications so that they comply with the formatting standards of IPONZ. The reformatting of specifications will not change the scope or nature of the specification.
3.2 Correct classification
The onus is on an Applicant to ensure that goods and/or services are filed in the correct class or classes 7 , and to submit a specification that clearly sets out the goods or services the applicant wishes to cover. However, it is the responsibility of the Examiner to check whether the goods or services applied for have been correctly classified.
The following resources should be checked by the examiner in this order:
- Nice Classification, Parts 1 and 2.
- General Remarks and Explanatory Notes sections of the Nice Classification books.
- Classification Annexure: Common Classification Issues.
Where a trade mark applicant has previous registrations in respect of an incorrect specification, this does not justify allowing the later application to proceed with a similarly incorrect specification. If an error has occurred, it should not be perpetuated. In some instances the registered specification will have been correct as at the date of application, as international classification standards can change over time. It is important that the goods or services applied for are correctly classified in light of current international classification standards. Although consistency is desirable, prior registrations in respect of a particular specification are not binding on IPONZ.
If the correct classification cannot be determined on the information currently available, the examiner should write to the applicant requesting further details.
The Examiner may defer examination where:
- some of the listed goods/services fall within classes additional to those that have been nominated and paid for; or
- no class was indicated on the application, and the listed goods/services fall within a greater number of classes than has been paid for.
Where an Applicant explicitly lists goods or services which are incorrectly classified, the Examiner should bring this to the Applicant’s attention in the Compliance Report. In this situation, the examiner should give the Applicant the opportunity to either:
- Delete the incorrectly classified goods or services from the application;
- Transfer the incorrectly classified goods or services to the correct class where the other class exists in the application; or
- Add an additional class or additional classes to the application in which the goods or services in question are correctly classified 8 .
Where the Examiner does not raise a classification concern in the initial Compliance Report and the applicant is aware that the application contains incorrectly classified goods or services, the applicant may still apply to the Commissioner to delete or transfer the incorrectly classified goods or services or add a class or classes to the application pertaining to those incorrectly classified goods or services.
3.2.1 Transfer
Where there are incorrectly classified goods or services in a multi-class application, an applicant may transfer 9 items from one class to another.
Example
The applicant files a multiclass application in classes 39 and 43. The application includes “travel agency services and accommodation reservations” in the class 39 specification, although “accommodation reservations” fall in class 43. The examiner will ask the applicant to transfer “accommodation reservations” to the class 43 specification.
An applicant may also transfer incorrectly classified goods or services between different applications, where the trade mark applications:
- are for the same trade mark(s); and
- have the same filing dates and, where applicable, the same convention priority dates; and
- are in the name of the same applicant; and
- are classified according to the same classification system.
Where the transfer of incorrectly classified goods or services is from an application that is still at examination status to an application that has been accepted, the transfer may still be made; however, the whole application will be re-advertised.
Where the transfer of incorrectly classified goods or services is from an application that is still at examination status into the specification of a registered trade mark, the transfer may still be made; however, the part of the specification which has not been advertised will be advertised before it is merged with the registered trade mark.
3.2.2 Adding a class
Where there are incorrectly classified goods or services, the applicant may apply to the Commissioner to add additional classes to an application until the time the application is accepted 10 . The addition of classes cannot broaden the scope of the original application, and such an addition will be subject to an additional application fee(s) 11 .
For more information on adding a class or classes to an application, see the Practice Guidelines on Adding a Class to an Application.
3.3 Classification in other classes
Some goods and services appear in more than one class in the international classification system. For example, beverages may be classified in classes 5, 29, 30, 32 and 33, and building materials may be classified in classes 6, 17 and 19.
Care must be taken when a generic item appears in one class, and a more specific item appears in another. The specific item overrides the general item. The general item is often marked with an asterisk in the Nice Classification to indicate that those goods or services are also classified in other classes.
Example
Shoes are classified in class 25, and marked with an asterisk. Orthopaedic shoes are specifically classified in class 10, and shoes for protection against accidents, irradiation and fire are specifically classified in class 9.
In the past, applicants were required to add “all being goods/services in this class” (or similar wording) to satisfy IPONZ that the goods or services had been correctly classified. It is no longer necessary to qualify specifications in this way. The onus is on the applicant to ensure that the application is filed in the correct class, and to submit a specification that clearly sets out the goods or services the applicant wishes to cover. The examiner should 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 under the class applied in, the examiner will assume that the applicant has applied in the correct class.
Using the example given above, an applicant who applies for shoes in class 10 will be assumed to be applying for orthopaedic shoes.
3.4 Specifications that contain trade marks
A registered trade mark 13 or an applicant’s own mark must not appear in a specification.
3.4.1 Specifications that contain standard trade marks or collective trade marks
Specifications should only include generic descriptions of the goods or services. The presence of a word mark on the Register should be taken as evidence that the word(s) in that mark are not generic for the goods or services listed in the specification of that registered word mark.
Where the applicant’s own mark or a registered trade mark appears in a specification, the examiner will raise a concern and ask the applicant to delete the mark from the specification. The applicant may substitute a generic description of the goods or services.
Any amendment to the specification must not have the effect of extending the scope of the goods or services claimed.
3.4.2 Specifications that contain certification trade marks
The owner of a registered certification mark has the same rights as those attached to a standard trade mark registration, including the exclusive right to use – and allow other persons to use – the certification trade mark.
Where a registered certification mark appears in a specification, the examiner will raise a concern and ask the applicant to delete the certification mark from the specification. The applicant may substitute a generic description of the goods or services, or the wording from the certification mark’s specification.
Any amendment to the specification must not have the effect of extending the scope of the goods or services claimed.
Example
1053827 TEQUILA is a registered certification trade mark in class 33. Instead of the term “tequila”, applicants can substitute one of the following:
- spirits protected by the appellation of origin “Tequila”
- alcoholic beverages made from the agave tequilana weber blue variety
3.4.3 Table of registered trade marks that cannot appear in specifications
The following table sets out common examples of registered marks that often appear in applicants’ specifications and suggested alternative generic descriptions. The list in this table is not exhaustive.
|
Word |
Class |
Trade mark number |
Possible alternative description |
|---|---|---|---|
|
AERTEX |
25 |
2702 |
clothing |
|
ANDROID |
9 |
778949, 798638 |
operating system for mobile phones mobile phones using operating system program |
|
ASTROTURF |
27 |
151194 |
artificial turf |
|
AVATAR |
41, 42 |
1101000, 643014 |
digital representations of characters |
|
BABY BUGGY |
12 |
111082 |
baby strollers |
|
BABY BUNTING |
24, 25 |
1104119 |
babies’ sleeping bags (class 24) one piece garment without opening (class 25) |
|
BABYGRO |
25 |
206470 |
all-in-one stretch garments for babies |
|
BAND-AID |
5 |
90467, 712351 |
adhesive plasters, dressings |
|
BATH BOMB |
3 |
286300 |
bath fizzies |
|
BATTS |
17 |
105507 |
insulating materials |
|
BEANIE |
25 |
250214 |
small close-fitting hats, head-hugging brimless caps |
|
BHUJA |
29, 30 |
1082321 |
snack foods namely Bombay mix (nuts, pulses, dried vegetables and dried fruits predominating) (class 29) snack foods namely Bombay mix (cereal products, rice and noodles predominating) (class 30) |
|
BIRO |
16 |
43017 |
ball point pen |
|
BLU-RAY |
9 |
738550 |
digital optical disc that uses blue-violet laser |
|
BLUETOOTH |
9 |
744225 |
wireless communication apparatus |
|
BODUM |
21 |
153213 |
coffee plungers |
|
BODY SHAPERS |
25 |
258507 |
tight-fitting undergarments, tight fitting hosiery |
|
BOOGIE |
28 |
121304 |
body board |
|
BOTOX |
3, 5 |
208547, 629049, 738084 |
cosmetics containing preparations prepared from botulin (class 3) pharmaceutical preparations prepared from botulin (class 5) |
|
BUBBLEWRAP |
16 |
230965 |
plastic bubble sheets for wrapping or packaging |
|
CATERPILLAR |
7 |
29476 |
machines |
|
CELLOPHANE |
16 |
32954 |
cellulose sheet |
|
CHEERIOS |
29 |
70022 |
cocktail sausages |
|
COKE |
32 |
787483 |
aerated cola beverages |
|
CRONUT |
30 |
983406 |
doughnut pastry made from croissant dough |
|
CROSTINI |
30 |
255098 |
small pieces of toasted or fried bread |
|
DICKIES |
25 |
253325 |
shirt fronts, dickeys (shirt fronts) |
|
DOONA |
20 |
100949 |
quilted eiderdowns or padded quilts |
|
DULCE DE LECHE |
30 |
618232 |
caramel sauce or caramelised milk sauce |
|
ELASTOPLAST |
5 |
61498 |
plasters, bandages, dressings |
|
ESKY |
21 |
149065 |
portable cooling apparatus, ice boxes |
|
FIDGET SPINNER |
28 |
1064141 |
spinning fidget toys |
|
FLIPPA-BALL, FLIPPA BALL, FLIPPABALL |
41 |
666731 |
non-contact water polo for beginners |
|
FORMICA |
22 |
52144 |
laminated building material |
|
FRISBEE |
28 |
105659, 128313 |
flying discs (toys) |
|
GIB |
19 |
129506 |
plasterboard |
|
GORE-TEX |
24, 25 |
194632, 1092580 |
waterproof, breathable textiles (class 24) waterproof, breathable clothing (class 25) |
|
GRANOLA |
30 |
20067 |
muesli-type breakfast cereal |
|
HACKY SACK |
28 |
272966 |
footbags |
|
HDMI |
9 |
725302 |
high definition multimedia interface |
|
HOOVER |
7 |
27970 |
vacuum cleaner |
|
JACUZZI |
11 |
160171 |
whirlpool baths |
|
JANDALS |
25 |
60683 |
flip-flops |
|
JEEP |
12 |
39663 |
small military-style vehicle |
|
JOCKEY |
25 |
92171, 138118 |
clothing |
|
KEEPCUP |
21 |
850062 |
reusable cups, reusable mugs |
|
KIWISAVER |
36 |
729804 |
New Zealand retirement savings scheme |
|
KOMBUCHA |
32 |
298899 |
fermented soft drinks |
|
LAMINEX |
17 |
52599 |
plastic laminate sheets |
|
LI-LO |
20 |
87352 |
inflatable mattresses |
|
LYCRA |
22 |
61747 |
synthetic fibres and filaments |
|
MARQUEE |
22 |
767238 |
tents |
|
MEMORY STICK |
9 |
295222, 600478 |
flash drive |
|
MOUNTAIN BUGGY |
12 |
248996 |
baby strollers |
|
MYLAR |
9, 16, 17, 26 |
53877, 65674, 65675, 65711, 67851 |
polyester film |
|
PARMA |
29 |
746962 |
ham |
|
PERSPEX |
17 |
38211 |
heat resistant acrylic plastic |
|
PLASTICINE |
16, 28 |
34664 |
modelling materials (class 16) toy modelling dough (class 28) |
|
POLARFLEECE |
24, 25 |
221016, 221017 |
polyester fleece (class 24) X made from polyester fleece (class 25) |
|
POPSICLE |
30 |
72068 |
ice creams on sticks, ices on sticks |
|
POPSOCKETS |
9 |
1038657 |
grip holders for smart phones |
|
POST-IT |
16 |
166410 |
adhesive notepaper |
|
PRIMUS |
11 |
118572 |
portable cooking apparatus |
|
PYREX |
21 |
16072 |
glassware |
|
RADLER |
32 |
700726 |
shandy |
|
RISC-V |
9 |
1119862 |
fifth generation reduced instruction set computer architecture |
|
ROLLERBLADE |
28 |
196801 |
in-line skates |
|
RUBIK (in 'Rubik's Cube') |
28 |
267005 |
three-dimensional cube puzzles |
|
SCOTCH |
16, 17 |
248258, 248259 |
adhesive tapes |
|
SELLOTAPE |
16 |
78227 |
adhesive tape |
|
SHADE SAILS |
22 |
264937 |
fabric covers for providing shade from the sun |
|
SMART GLASS |
19 |
242352 |
building glass with light transmission properties altered by voltage, light, or heat |
|
STILTON |
29 |
231669 |
cheese |
|
STRANDBOARD |
19 |
302172 |
chipboard consisting of bonded oriented wooden strands |
|
STYROFOAM |
17, 19 |
60817, 176939 |
multicellular expanded synthetic resinous material (class 17) building materials made from multicellular expanded synthetic resinous material (class 19) |
|
TASER |
13 |
855872 |
electroshock weapons |
|
TEFLON |
2, 17, 21 |
83987, 82085, 83988 |
non-stick coatings (class 2) semi-processed plastics with non-stick properties (class 17) cookware with a non-stick lining, bakeware with a non-stick lining (class 21) |
|
TEQUILA |
33 |
1053827 |
alcoholic beverages made from the agave tequilana weber blue variety, spirits protected by the apellation of origin "Tequila" |
|
THERMOS |
21 |
7084 |
insulated flask |
|
TUPPERWARE |
21 |
158118 |
plastic or glass food storage containers |
|
VASELINE |
3, 5 |
47785, 717518, 901480 |
petroleum jelly (class 3) petroleum jelly for medical purposes (class 5) |
|
VELCRO |
10, 26 |
285671, 119143 |
self-fastening medical padding, strapping and belts (class 10) self-fastening synthetic fabric (class 26) |
|
WALKMAN |
9 |
134512 |
portable audio equipment |
|
WEED EATER |
7 |
111415 |
grass and weed cutting machines |
|
XEROX |
9 |
61928 |
electro-photographic copying machine |
|
ZUMBA |
9, 25, 41 |
809572, 832415 |
aerobic fitness programme incorporating dance moves |
3.5 Specifications that contain geographical indications (GIs).
Geographical indications (“GIs”) are signs that identify goods which come from a particular locality, region or territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.
Geographical indications can be registered in New Zealand under the Geographical Indications Registration Act 2006. The Office maintains a register of geographical indications, which can be accessed on the IPONZ website.
Geographical indications register
Specifications should only include generic descriptions of the goods or services. A geographical indication (“GI”) that is registered in New Zealand may not be used as the name of a good in a specification, in a class relevant to the GI. A suitable generic description of the good should be used instead.
A GI that is registered in New Zealand can be mentioned as part of the description of goods in a class relevant to the GI, provided the goods originate in the place the GI relates to and comply with the other requirements for that GI. Where a specification term mentions a GI that is registered in New Zealand as part of the description of the goods, the wording used must include a generic description of the goods and clearly identify the GI as a GI.
3.5.1 New Zealand and foreign GIs that are registered in New Zealand for wines and spirits
New Zealand GIs and foreign GIs that are registered in New Zealand for wines and spirits may not be used in specifications as the name of a good, in a class relevant to the GI.
Where a class 32 or class 33 specification includes a New Zealand or foreign GI that is registered in New Zealand as the name of a good, the examiner will object that the term is unclear. “Scotch whisky” is not acceptable as a specification term in class 33, for example, as Scotch Whisky is a registered foreign GI for spirits.
Examiners will also object where a class 32 or class 33 specification term mentions a registered New Zealand or foreign GI, and the wording used does not include a generic description of the goods and clearly identify the GI as a GI.
Where an applicant wishes to indicate that the goods originate in the place the registered New Zealand or foreign GI relates to and comply with the other requirements for that GI, the applicant may use the following format to describe the goods.
|
Acceptable specification format |
Examples |
|---|---|
|
“[GI name]” (GI) [products covered by the GI] |
“New Zealand” (GI) wines “Bannockburn” (GI) wine "Scotch Whiskey" (GI) spirits "Napa Valley" (GI) wines |
Applicants can use alternative wordings provided they include a generic description of the goods (such as “wines” or “spirits”), and the GI is clearly identified as a GI.
3.5.2 European GIs that are registered in New Zealand as EU FTA GIs
New Zealand signed a free trade agreement with the European Union (“the EU FTA”), which is now in force. On 1 May 2024 when the EU FTA came into force, New Zealand registered the European GIs listed in Section A of Annex 18-B of the EU FTA. These GIs cover a wide range of goods (primarily foods, wines and spirits), and are referred to as registered EU FTA geographical indications (“EU FTA GIs”).
A list of the registered EU FTA GIs can be viewed in the following document.
New Zealand - European Union Free Trade Agreement: Annex 18-B: List of Geographical Indications [PDF, 1.6 MB] — Ministry of Foreign Affairs and Trade
EU FTA GIs that are registered in New Zealand may not be used in specifications as the name of a good, in a class relevant to the GI.
Where a specification includes a registered EU FTA GI as the name of a good, in a class relevant to the GI, the examiner will object that the term is unclear. “Port” or “ports” are not acceptable as specification terms in class 33, for example, as Port is a registered EU FTA GI.
Examiners will also object where a specification term mentions a registered EU FTA GI, in a class relevant to that GI, and the wording used does not include a generic description of the goods and clearly identify the GI as a GI.
Where an applicant wishes to indicate that the goods originate in the place the registered EU FTA GI relates to and comply with the other requirements for that GI, the applicant may use the following format to describe the goods.
|
Acceptable specification format |
Acceptable specification terms |
Class |
|---|---|---|
|
"[GI name]" (GI) [products covered by the GI] |
“Jabugo” (GI) meats |
29 |
|
“Abondance” (GI) cheeses |
29 |
|
|
“Throumpa Thassou” (GI) olives |
29 |
|
|
“Lübecker Marzipan” (GI) confectionery |
30 |
|
|
“Aceto Balsamico di Modena” (GI) vinegar |
30 |
|
|
“Bordeaux” (GI) wines |
33 |
|
|
“Irish Whiskey” (GI) spirits |
33 |
Applicants can use alternative wordings provided they include a generic description of the goods (such as “cheese” or “vinegar”), and the GI is clearly identified as a GI.
Where an applicant’s goods do not originate in the place the registered EU FTA GI relates to or comply with the other requirements for that GI, the applicant should use alternative, generic wording in the specification. See the table below for some examples.
|
European GI |
Goods covered by the GI |
Specification term(s) using generic wording |
Class |
|---|---|---|---|
|
Feta |
Cheeses |
white, brined cheese made from goat’s milk white, brined cheese made from sheep’s milk |
29 |
|
Gruyère |
Cheeses |
nutty, pale yellow, firm cheese made from cow's milk |
29 |
|
Gorgonzola |
Cheeses |
bluish-green veined cheese made from cow’s milk using Penicillium glaucum |
29 |
|
Parmigiano Reggiano |
Cheeses |
hard, dry, grateable cheese |
29 |
|
Roquefort |
Cheeses |
soft blue cheese made from sheep’s milk using Penicillium roqueforti |
29 |
|
Grappa |
Spirits |
brandy distilled from the fermented residue of grapes |
33 |
|
Irish Cream |
Spirits |
liqueur made from whiskey and cream |
33 |
|
Madeira |
Wines |
amber-coloured fortified wine |
33 |
|
Ouzo |
Spirits |
aniseed-flavoured liqueur |
33 |
|
Port |
Wines |
fortified wine made from a blend of wine and brandy |
33 |
|
Prosecco |
Wines |
sparkling wine made from Glera grapes |
33 |
|
Sherry |
Wines |
fortified wine made from white grapes |
33 |
3.5.3 GIs that are not registered in New Zealand
Examiners will not object that a specification term is unclear because it is a GI, or mentions a GI, unless that GI is registered in New Zealand.
Where an overseas GI is not registered in New Zealand, we encourage applicants to avoid using the overseas GI in a trade mark specification as the name of a good, in a class relevant to that GI. We also encourage applicants to mention the overseas GI (in a class relevant to that GI) as part of the description of goods in a specification, only if the goods originate in the place the overseas GI relates to and comply with the other requirements for that GI.
Where an overseas GI is not registered in New Zealand, and the applicant wishes to indicate that the goods originate in the place the overseas GI relates to and comply with the other requirements for that GI, the applicant may use the following format to describe the goods.
|
Acceptable specification format |
Acceptable specification terms |
Class |
|---|---|---|
|
[products covered by the GI]; all the aforesaid complying with the specifications of the geographical indication “[GI name]” protected in [country of origin] |
cheese; all the aforesaid complying with the specifications of the geographical indication “Blue Stilton” protected in the United Kingdom |
29 |
|
wines; all the aforesaid complying with the specifications of the geographical indication “Barossa Valley” protected in Australia |
33 |
4. Broad specifications
Once a mark is registered, the scope of the applicant’s rights in the mark is defined by the scope of the specification 14 . Registration of a mark with a very wide specification may cause problems for both IPONZ and subsequent applicants.
If IPONZ allows registration of a mark with a very broad specification, that mark is more likely to be raised as a citation against future applications. Future applicants may be blocked from getting registration for their own trade marks, even though the owner of the original mark is not actually using their trade mark on all the goods or services stated in the specification.
When examining a specification of goods or services, an examiner should consider whether the applicant has applied for an unrealistically broad range of goods or services.
Section 32(2) of the Act states:
The Commissioner must not register a trade mark in respect of all of the goods and services included in a class, or a large variety of goods or services, unless the specification is justified by the use or intended use of the sign.
Therefore, 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. For example an application that specified every item listed in the Nice Classification for a single class, for instance class 3 would appear to be unrealistically broad.
Where an Examiner raises concerns under section 32(2) of the Act, the applicant can usually overcome those concerns by –
- agreeing to limit the specification of goods and services; or
- satisfying IPONZ that they have a definite intention to trade in all of the specified goods or services applied for. For example, IPONZ will consider statutory declarations wherein the applicant shows use of the mark in relation to all of the goods and/or services claimed.
Applicants should also refer to the General Annexure and the Computer, Telecommunication and Online Goods and Services Annexure for guidance on what terms will concerns be raised under section 32(2) of the Act.
4.1 Factors to consider
When determining whether concerns should be raised under section 32(2) of the Act, examiners should consider the circumstances of the particular case. Examiners should ask: “is it commercially realistic that the mark will be used in relation to the wide range of goods and/or services specified in the application?”
In answering this question examiners should take into account the applicant themselves and the types of goods and services in which the applicant is known to trade. For example, a large company may be more likely to provide a wide range of goods or services than a smaller company. Each case must be considered on its merits, however, large companies should not automatically be granted wider rights than smaller applicants.
It may be helpful to check whether the applicant has previous registrations for a similarly wide specification. However, as stated above, each case must be considered on its merits. The fact that an applicant has a previous registration with a wide specification should not automatically be taken as justification for allowing a later application to proceed with a similarly wide specification.
4.2 Class headings
The Nice Classification class headings 15 are only an indication of the goods and services that are included within a particular class.
When a class heading is used as a specification, it loses its capacity to function as a class heading and becomes part of an application or registration as a statement of goods or services. Therefore, a claim for a class heading does not equate to a claim for all the goods or services that may be in that class. An application which specifies a class heading only claims protection in respect of the goods or services actually stated in the heading, or that may be clearly encompassed by the heading.
This is particularly relevant when considering whether an amendment to overcome concerns raised under section 31 or 32(2) is acceptable, or whether an alteration or correction of error is acceptable.
Examples
The class heading for class 15 is “musical instruments”. Applicant A applies to register a mark in respect of “musical instruments”. The applicant then wishes to amend the application to “trumpets; music stands; cases for trumpets”. This would not be acceptable as “music stands” and “cases for trumpets” are not musical instruments and are not encompassed in the specification as originally filed and the amendment would constitute a broadening of the original specification.
Applicant B applies to register a mark in respect of the class heading for class 9. In order to overcome a section 32(2) concern the applicant requests that the specification be amended to “computer software for graphic design”. This would be acceptable for registration as the class heading for class 9 specifically includes computer software.
As an application which specifies a class heading claims protection only in respect of the goods/services actually stated in the heading, or may be clearly encompassed by the heading, concerns under section 32(2) of the Act will not, in the main, be raised for applications which contain specifications that are drafted in the form of the class heading.
5. Commissioner's ruling
Section 31(2) of the Act states:
Any question arising as to the class within which any goods or services fall must be determined by the Commissioner, whose decision is final.
Section 31(2) of the Act gives the Commissioner the power to decide any questions arising as to the class within which any goods or services fall.
From time to time IPONZ receives requests for a Commissioner’s ruling on the correct classification of goods or services. An Assistant Commissioner deals with these requests.
6. Conversion to the current Nice edition
The owner of a trade mark registered with a specification classified under a previous Nice Classification Schedule may apply to the Commissioner for conversion of the specification to the current Nice Classification Schedule (Edition of the Nice Classification) 16 .
Where a person applies for conversion to the current Nice Classification Schedule, they will be required to submit the following information 17 :
- The name of the owner;
- The address for service;
- If the owner has an agent, the agent’s name; and
- The registration number of the trade mark.
An applicant for conversion may also nominate registration in additional classes if the current registration falls into additional classes under the most recent edition of the Nice Classification 18 .
6.1 Notice of proposed conversion
Where the Commissioner receives an application for conversion, the Commissioner must first notify the applicant for conversion of the proposed form of the conversion 19 . The applicant will be sent a Notice of Proposed Conversion, advising the proposed form of the conversion. Where the applicant does not agree to the proposed conversion, the applicant has a right to a hearing on this matter.
A time limit will be stipulated, being not less than one month from the date of the Notice of Proposed Conversion, in which the applicant must indicate that it wishes to be heard before the Commissioner exercises his power to convert the application 20 .
Appendix one - changes to the Ninth Edition of the Nice Classification
| New indications added | |
|---|---|
| Class | Indication |
|
1 |
Chemical additives for oils Additives (Chemical –) for oils Oils (Chemical additives for –) |
|
3 |
Joss sticks |
|
6 |
Refractory construction materials of metal |
|
9 |
Bracelets (Encoded identification –), magnetic Encoded identification bracelets, magnetic Identification bracelets (Encoded –), magnetic |
|
2 |
Covers for vehicle steering wheels Steering wheels (Covers for vehicle –) |
|
13 |
Sprays for personal defense purposes Sprays for personal defence purposes |
|
17 |
Insulating refractory materials Refractory materials (Insulating –) |
|
19 |
Refractory construction materials, not of metal |
|
29 |
Fermented vegetable foods [kimchi] Soya milk [milk substitute] |
|
35 |
Compilation of statistics Statistics (Compilation of –) Layout services for advertising purposes Sponsorship search |
|
37 |
Restoration of musical instruments Musical instruments (Restoration of –) Installation of doors and windows Doors and windows (Installation of –) Windows (Installation of doors and –) Swimming-pool maintenance Refilling of toner cartridges Toner cartridges (Refilling of –) |
|
38 |
Providing access to databases Voice mail services |
|
39 |
Franking of mail Traffic information |
|
41 |
Layout services, other than for advertising purposes |
|
42 |
Consultancy in the field of energy-saving Energy-saving (Consultancy in the field of –) Research in the field of environmental protection Environmental protection (Research in the field of –) |
|
44 |
Sauna services Solarium services Health spa services Visagists’ services Pharmacists’ services to make up prescriptions |
|
45 |
Computer software (Licensing of –) [legal services] Licensing of computer software [legal services] Lost property return Mediation Inspection of factories for safety purposes Safety (Inspection of factories for –) purposes Rental of fire alarms Fire alarms (Rental of –) Rental of fire extinguishers Fire extinguishers (Rental of –) Registration of domain names Domain names (Registration of –) |
|
Existing indications deleted |
|
|
Class |
Indication |
|
1 |
Aggressor repellent chemicals Self-defence (Chemical preparations for -) |
|
6 |
Winding keys of metal |
|
31 |
Spawn (Mushroom - ) |
|
35 |
Statistical information |
|
Existing indications changed or transferred |
||
|
Current class |
New class (if applicable) |
Indication |
|
2 |
1 |
Oil cement [putty] Cement (Oil - ) [putty] |
|
20 |
19 |
Duckboards, not of metal |
|
37 |
40 |
Fulling of cloth |
|
39 |
- |
“Storage of electronically-stored data or documents” amended to read “Storage (Physical -) of electronically-stored data or documents” |
|
42 |
45 |
Arbitration services Intellectual property consultancy Consultancy (Intellectual property –) Copyright management Management (Copyright –) Licensing of intellectual property Intellectual property (Licensing of –) Intellectual property watching services Legal research Litigation services |
|
Amendments to class headings and explanatory notes |
|
|
Class |
New class heading/Amendment to class heading or explanatory note |
|
35 |
In the Explanatory Note under “This class includes, in particular:” delete in the text of the second paragraph: “--- exploitation or ---” |
|
42 |
In the Class Heading Replace: “Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.” with “Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.” In the Explanatory Note: replace: “Class 42 includes mainly 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, lawyers, etc.” with “Class 42 includes mainly 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 programmers, etc.” under “This class does not include, in particular:” add: “– legal services (Cl. 45).” |
|
45 |
In the Class Heading replace: “Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.” with “Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.” In the Explanatory Note: under “This class includes, in particular:” add: “– services rendered by lawyers to individuals, groups of individuals, organizations and enterprises;” under “This class does not include, in particular:” delete: “– legal services (Cl. 42);” under “This class does not include, in particular:” add: “– computer services for the protection of software (Cl. 42);” |
Appendix two - changes from the Ninth Edition to the Tenth Edition of the Nice Classification
| New indications added | |
|---|---|
| Class | Indication |
|
1 |
Biological tissue cultures other than for medical or veterinary purposes Genes of seeds for agricultural production Stem cells other than for medical or veterinary purposes |
|
2 |
Repositionable paint patches |
|
3 |
Aloe vera preparations for cosmetic purposes Balms other than for medical purpose Douching preparations for personal sanitary or deodorant purposes (toiletries) Dry shampoos Drying agents for dishwashing machines Lip glosses Massage gels other than for medical purposes Breath freshening strips |
|
4 |
Ethanol (fuel) |
|
5 |
Aloe vera preparations for pharmaceutical purposes Diapers (babies' napkins) Pearl powder for medical purpose Babies’ napkins (diapers) Reparations for reducing sexual activity |
|
6 |
Arbours (structures of metal) |
|
7 |
Brake pads other than for vehicles Gas-operated blow torches Wind turbines |
|
8 |
Draw wires (hand tools) Emery files Fish tapes (hand tools) Wire strippers (hand tools) |
|
9 |
Cell phone straps Global positioning systems (GPS) apparatus Light-emitting diodes (LED) USB flash drives |
|
10 |
Love dolls (sex dolls) Stents Body rehabilitation apparatus for medical purposes |
|
11 |
Bread-making machines Hydromassage bath apparatus Light-emitting diodes (led) lighting apparatus Fabric steamers Electric appliances for making yogurt |
|
12 |
Brake pads for automobiles Headlight wipers Spare tire covers Spare tyre covers Spare wheel covers |
|
13 |
Belts adapted for ammunition Hand grenades Side arms (firearms) |
|
14 |
Beads for making jewelry |
|
15 |
Bass drum sticks |
|
16 |
Correction tapes (office requisites) Document holders (stationery) Flyers Marking pens (stationery) Trading cards other than for games |
|
18 |
Pouch baby carriers |
|
19 |
Porphyry (stone) Prefabricated houses (kits) |
|
20 |
Baby changing platforms Interior textile window blinds Knobs, not of metal Paper blinds Wall-mounted diaper (napkin) changing platforms Door bolts not of metal Indoor window shades (furniture) Indoor window blinds (shades) (furniture) |
|
21 |
Window-boxes |
|
22 |
Body bags |
|
25 |
Ski gloves |
|
26 |
Arm bands (clothing accessories) Beads other than for making jewelry Bobbins for retaining embroidery floss or wool (not parts of machines) |
|
27 |
Textile wallpaper |
|
28 |
Portable games with liquid crystal displays Arcade video game machines Ascenders (mountaineering equipment) Chips for gambling Pachinkos Poles for pole vaulting Scale model kits (toys) Slot machines (gaming machines) Video game machines Bags especially designed for skis and surfboards |
|
29 |
Ajvar (preserved peppers) Aloe vera prepared for human consumption Non-alcoholic egg nog Processed fish spawn Preserved garlic Fish mousses Vegetable mousses Processed seeds Processed sunflower seeds |
|
30 |
Cheeseburgers (sandwiches) Ham glaze Noodle-based prepared meals Pesto (sauce) Fruit coulis (sauces) Cake frosting (icing) Chocolate mousse Dessert mousses (confectionery) |
|
31 |
Aloe vera plants Spinach, fresh |
|
32 |
Aloe vera drinks, non-alcoholic Smoothies |
|
33 |
Pre-mixed alcoholic beverages, other than beer-based |
|
35 |
Telemarketing services Organization of fashion shows for promotional purposes |
|
37 |
Drilling of deep oil or gas-wells |
|
38 |
Transmission of digital files Transmission of greeting cards online Wireless broadcasting Transmission of greeting cards online |
|
39 |
Aircraft rental Transportation logistics |
|
40 |
Cryopreservation services Sandblasting services |
|
41 |
Coaching (training) Conducting fitness classes Disc jockey services Games equipment rental Personal trainer services (fitness training) Production of music Toy rental Vocational retraining Organization of fashion shows for entertainment purposes |
|
42 |
Digitization of documents (scanning) Handwriting analysis (graphology) Monitoring of computer systems by remote access Provision of scientific information, advice and consultancy in relation to carbon offsetting Water analysis Quality evaluation of standing timber Quality evaluation of wool Quality evaluation of standing timber Quality valuation of standing timber Scientific laboratory services |
|
43 |
Rental of drinking water dispensers Rental of cooking apparatus |
|
44 |
Aquaculture services Medical equipment rental Therapy services Tree planting for carbon offsetting purposes |
|
45 |
Alternative dispute resolution services Genealogical research Planning and arranging of wedding ceremonies Rental of safes |
|
Existing indications deleted |
|
|
Class |
Indication |
|
1 |
Algarovilla (tanning material) |
|
2 |
Blues (colorants or paints) Bright gold for ceramics Bright platinum for ceramics Glossy platinum paint for ceramics Silver paint for ceramics |
|
5 |
Air freshening preparations Anti-horse-fly oils Perfumed air-freshening preparations Pills for pharmaceutical purposes Sal ammoniac lozenges |
|
6 |
Bolts Chains for dogs Common metal money boxes Money boxes of metal Pins for wheels, etc. Wire for aerials |
|
7 |
Drying machines Flour mills Igniting magnetos Igniting magnetos for engines Pressing machines (to make satin-like) Root slicers (machines) Turnip cutters (machines) Weaving looms |
|
8 |
Personal protection devices (side arms), other than firearms Side arms (not firearms) Side arms, other than firearms |
|
9 |
Batteries for pocket lamps Buzzers, electric Contacts, electric, of precious metal Electric buzzers Electric welding apparatus Eye shades (headgear) Eye shades, other than headgear Eyeshades |
|
10 |
Horsehair gloves for massage |
|
11 |
Furnaces Gas generators (installations) Lanterns |
|
14 |
Ornaments made of silver Silver ornaments |
|
15 |
Bass drum sticks |
|
16 |
Babies' nappies (diapers) of paper and cellulose (disposable) Diapers made of cellulose Diapers made of paper Disposable diapers of cellulose for babies Disposable diapers of paper for babies Disposable paper diapers Impregnated napkins (diapers) of paper Infants' diapers (disposable) of cellulose Infants' diapers (disposable) of paper Infants' disposable diapers of cellulose Infants' disposable diapers of paper Paper diapers for babies Paper diapers for infants Tear-off calendars |
|
18 |
Collars for dogs Dog collars |
|
20 |
Nesting boxes for household pets |
|
21 |
Coal scuttles Feeding troughs Knobs of porcelain Lye washtubs Mangers for livestock Shirt stretchers Troughs for livestock Trouser stretchers |
|
22 |
Stuffing |
|
25 |
Babies' diapers of textile Babies' nappies (diapers) of textile Cloth diapers (nappies) Paper liners for babies' nappies (diapers) Textile liners for babies' nappies (diapers) |
|
28 |
Electronic amusement apparatus adapted for use with liquid crystal displays Fencing foils Foils for fencing Games adapted for use with dot matrix liquid crystal displays Small balls for games |
|
30 |
Edible decorations for cakes |
|
31 |
Poultry for breeding |
|
34 |
Mouthpieces of yellow amber for cigar and cigarette holders Tips of yellow amber for cigar and cigarette holders |
|
35 |
Grading of wool |
|
39 |
Information services relating to storage Storage information |
|
41 |
Digital imaging services |
|
Existing indications changed or transferred |
||
|
Current class |
New class (if applicable) |
Indication |
|
1 |
- |
“cream of tartar, other than for pharmaceutical purposes” amended to read ”cream of tartar (chemical additive)” |
|
3 |
- |
“alum stones (antiseptic)” amended to read “alum stones (astringents)” “deodorants for personal use” amended to read “deodorants for human beings or for animals” “shaving stones (antiseptic)” amended to read “shaving stones (astringents)” |
|
5 |
- |
“deodorants, other than for personal use” amended to read “deodorants, other than for human beings or for animals” |
|
6 |
- |
“cotter pins” amended to read “cotter pins of metal” |
|
7 |
- |
“aerated beverages making machines” amended to read “aerated beverages-making machines” “spin driers” amended to read “spin driers (not heated)” “looms (machines)” amended to read “looms” |
|
9 |
7 |
electric welding apparatus soldering apparatus, electric welding electrodes electric arc welding apparatus welding apparatus (electric are -) electric arc cutting apparatus cutting apparatus (electric arc -) vending machines |
|
9 |
- |
“floats for bathing and swimming” amended to read “floats for bathing and swimming for life saving purposes” “furnaces for laboratory experiments” amended to read “furnaces for laboratory use” “furnaces for laboratory experiments” amended to read “furnaces, other than for laboratory use” “ovens for laboratory experiments” amended to read “ovens for laboratory use” “ovens for laboratory experiments” amended to read “ovens, other than for laboratory use” “computer memories” amended to read “computer memory devices” |
|
11 |
7 |
soldering lamps |
|
11 |
- |
“beverages cooling apparatus” amended to read “beverage-cooling apparatus” “ionization apparatus for the treatment of air” amended to read “ionization apparatus for the treatment of air or water” “solar collectors (heating)” amended to read “solar thermal collectors (heating)” |
|
13 |
4 |
tinder |
|
16 |
5 |
babies’ napkin-pants (diaper-pants) of paper and cellulose (disposable) |
|
16 |
- |
“photographs” amended to read “photographs (printed)” |
|
18 |
- |
“key cases (leatherware)” amended to read “key cases” |
|
19 |
- |
“arbours (structures)” amended to read “arbours (structures not of metal)” |
|
20 |
21 |
drinking straws straws for drinking |
|
21 |
- |
“coffee services” amended to read “coffee services (tableware)” “figurines (statuettes) of porcelain, terracotta or glass” amended to read “figurines (statuettes) of porcelain, ceramic, earthenware or glass” “piggy banks, not of metal” amended to read “piggy banks” “statues of porcelain, terracotta or glass” amended to read “statues of porcelain, earthenware, ceramic or glass” “statuettes of porcelain, terracotta or glass” amended to read “statuettes of porcelain, porcelain, ceramic, earthenware or glass” “tea services” amended to read “tea services (tableware)” |
|
22 |
|
“hair” amended to read “human hair” |
|
25 |
- |
“babies' pants” amended to read “babies' pants (clothing)” |
|
26 |
21 |
tea cosies |
|
26 |
23 |
thread of metal for embroidery |
|
28 |
- |
“creels (fishing equipment)” amended to read “creels (fishing traps)” |
|
30 |
- |
“pasty” amended to read “pasties” |
|
31 |
- |
“cucumbers” amended to read “cucumbers, fresh” “leeks” amended to read “leeks, fresh” “lemons” amended to read “lemons, fresh” “lettuce” amended to read “lettuce, fresh” “peanuts” amended to read “peanuts, fresh” |
|
35 |
36 |
“evaluation of standing timber” amended to read “financial evaluation of standing timber” “evaluation of wool” amended to read “financial evaluation of wool” |
|
41 |
- |
“film production” amended to read “film production, other than advertising films” “health club servicess” amended to read “health club services (health and fitness training)” |
|
42 |
- |
“consultancy in the design and development of computer hardware” |
|
Amendments to class headings and explanatory notes |
|
|
Class |
New class heading/Amendment to class heading or explanatory note |
|
35 |
In the Explanatory Note under “This class includes, in particular:” delete in the text of the second paragraph: “--- exploitation or ---” |
|
42 |
In the Class Heading replace: “Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.” with “Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.” In the Explanatory Note: replace: “Class 42 includes mainly 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, lawyers, etc.” with “Class 42 includes mainly 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 programmers, etc.” under: “This class does not include, in particular:” add: “– legal services (Cl. 45).” |
|
45 |
In the Class Heading replace: “Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.” with “Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.” In the Explanatory Note: under “This class includes, in particular:” add: “– services rendered by lawyers to individuals, groups of individuals, organizations and enterprises;” under “This class does not include, in particular:” delete: “– legal services (Cl. 42);” under “This class does not include, in particular:” add: “– computer services for the protection of software (Cl. 42);” |
|
Amendments to explanatory notes (2013 Tenth Edition Nice classification) |
|
|
Class |
Amendment |
|
5 |
In the Explanatory Note: This class does not include, in particular:
Has been amended to read: This class does not include, in particular:
|
|
39 |
In the Explanatory Note: Class 39 includes mainly services rendered in transporting of people or goods from one place to another (by rail, road, water, air or pipeline) and services necessarily connected with such transport, as well as services relating to the storing of goods in a warehouse or other building for their preservation or guarding. Has been amended to read: Class 39 includes mainly services for the transport of people, animals or goods from one place to another (by rail, road, water, air or pipeline) and services necessarily connected with such transport, as well as services relating to the storing of goods in a warehouse or other building for their preservation or guarding. |
Appendix three - changes from the Tenth Edition to the Eleventh Edition of the Nice Classification
| New indications added | |
|---|---|
| Class | Indication |
|
1 |
Seaweeds (fertilisers) nitrogenous fertilizers calcium cyanamide (fertiliser) fertilisers fertilising preparations phosphates (fertilizers) slag (fertilizers) superphosphates (fertilizers) artificial resins, unprocessed salts (fertilizers) peat (fertilizer) fish meal fertilisers organic digestate (fertiliser) flavonoids for industrial purposes [phenolic compounds] thymol for industrial purposes topsoil transmission oil polymer resins, unprocessed chemical coatings for opthalmic lenses calomel (mercurous chloride) animal manure |
|
3 |
phytocosmetic preparations cleansers for intimate personal hygiene purposes, non medicated herbal extracts for cosmetic purposes nail varnish removers nail polish removers floor wax shampoos for animals (non-medicated grooming preparations) eye-washes, not for medical purposes vaginal washes for personal sanitary or deodorant purposes |
|
4 |
colza oil for industrial purposes benzene fuel xylene fuel |
|
5 |
bone cement for surgical and orthopedic purposes phytotherapy preparations of medical purposes herbal extracts for medical purposes sexual stimulant gels immunostimulants nutraceutical preparations for therapeutic or medical purposes freeze-dried food adapted for medical purposes lyophilized food adapted for medical purposes lyophilised food adapted for medical purposes homogenized food adapted for medical purposes homogenised food adapted for medical purposes pre-filled syringes for medical purposes freeze-dried meat adapted for medical purposes lyophilized meat adapted for medical purposes lyophilised meat adapted for medical purposes reagent paper for veterinary purposes astringents for medical purposes medicated dentifrices lice treatment preparations (pediculicides) pediculicidal shampoos insecticidal animal shampoo insecticidal veterinary washes antibacterial soap antibacterial handwashes medicated after-shave lotions medicated shampoos medicated toiletry preparations medicated hair lotions medicated dry shampoos medicated shampoos for pets |
|
6 |
strongboxes (metal or non-metal) nameplates of metal hot-rolled steel bars bright steel bars peeled metal bars drawn and polished metal bars bag hangers of metal brackets of metal for furniture labels of metal jerrycans of metal stakes of metal for plants or trees flagpoles of metal clips of metal for sealing bags shoe pegs of metal shoe dowels of metal safes, electronic folding doors of metal mouldings of metal for building moldings of metal for building fireplace mantles of metal |
|
7 |
suction nozzles for vacuum cleaners pigs for cleaning pipes juice extractors, electric screwdrivers, electric joysticks being parts of machines, other than for game machines camshafts for vehicle engines rubber tracks being parts of crawlers on construction machines rubber tracks being parts of crawlers on loading-unloading machines and apparatus rubber tracks being parts of crawlers on agricultural machines rubber tracks being parts of crawlers on mining machines rubber tracks being parts of crawlers on snow ploughs |
|
8 |
tattoo needles spatulas for use by artists sculptors' chisels plastic spoons, table forks and table knives baby spoons, table forks and table knives |
|
9 |
eyeglass lenses needles for surveying compasses security tokens (encryption devices) infrared detectors covers for personal digital assistants (PDAs) baby scales electronic access control systems for interlocking doors thermal imaging cameras scales with body mass analysers scales with body mass analyzers covers for tablet computers black boxes (data recorders) digital weather stations charging stations for electric vehicles interactive touch screen terminals smart rings electric and electronic effects units for musical instruments audio interfaces equalizers (audio apparatus) equalisers (audio apparatus) subwoofers bathroom scales thermo-hygrometers biochips protective films adapted for smartphones virtual reality headsets electronic interactive whiteboards humanoid robots with artificial intelligence audio mixers batteries for electronic cigarettes electronic key fobs being remote control apparatus electronic sheet music, downloadable T-squares for measuring squares for measuring square rulers for measuring |
|
10 |
gurneys, wheeled bolus guns knee bandages, orthopaedic respiratory masks for artificial respiration orthodontic rubber bands analysers for bacterial identification for medical purposes analyzers for bacterial identification for medical purposes apparatus for DNA and RNA exams for medical purposes apparatus for the regeneration of stem cells for medical purposes body fat monitors body composition monitors toe separators for orthopaedic purposes toe separators for orthopedic purposes |
|
11 |
cooking stoves heat guns chocolate fountains, electric disinfectant apparatus for medical purposes wine cellars, electric fairy lights for festive decoration string lights for festive decoration |
|
12 |
bicycle wheel hubs fitted footmuffs for prams fitted footmuffs for baby carriages fitted footmuffs for pushchairs fitted footmuffs for strollers tyre mousse inserts tire mousse inserts bags adapted for pushchairs bags adapted for strollers remotely operated vehicles for underwater inspections autonomous underwater vehicles for seabed inspections bellows for articulated buses electric bicycles saddle covers for motorcycles motor racing cars |
|
14 |
amulets (jewelry) silver thread (jewelry) bracelets (jewelry) jewelry charms charms for jewellery charms for jewelry brooches jewelry chains jewelry necklaces (jewelry) threads of precious metal (jewelry) wire of precious metal (jewelry) lockets (jewelry) gold thread (jewelry) pearls (jewelry) rings (jewelry) hat jewelry shoe jewelry pins (jewelry) cloisonné jewelry misbaha [prayer beads] bracelets made of embroidered textile [jewellery] bracelets made of embroidered textile [jewelry] charms for key rings charms for key chains |
|
15 |
banjos melodicas colophony for stringed musical instruments rosin for stringed musical instruments |
|
16 |
plastic bags for pet waste disposal washi table runners of paper printed sheet music banners of paper bunting of paper |
|
17 |
fittings, not of metal, for flexible pipes fittings, not of metal, for rigid pipes |
|
18 |
labels of leather grips for holding shopping bags tefillin [phylacteries] suitcases with wheels saddlebags* clothing for pets |
|
19 |
plastic landscape edgings rubber bearings for seismic isolation of buildings armour-plating, not of metal armor-plating, not of metal |
|
20 |
chaise lounges bag hangers, not of metal plastic keys brackets, not of metal, for furniture labels of plastic console tables bookcases valet stands jerrycans, not of metal birdhouses clips of plastic for sealing bags bumper guards for cots, other than bed linen bumper guards for cribs, other than bed linen boxes of wood or plastic cots for babies cribs for babies moses baskets legs for furniture feet for furniture wardrobes footstools shoe pegs, not of metal shoe dowels, not of metal |
|
21 |
eyelash brushes egg separators, non-electric, for household purposes foam toe separators for use in pedicures plug-in diffusers for mosquito repellents cold packs for chilling food and beverages reusable ice cubes tablemats, not of paper or textile place mats, not of paper or textile decanter tags wine aerators heads for electric toothbrushes coin banks lint removers, electric or non-electric polishing cloths pig bristles for brush-making horsehair for brush-making ice tongs salad tongs serving ladles pestles for kitchen use mortars for kitchen use ice cream scoops |
|
22 |
animal feeding nets |
|
24 |
sleeping bags for babies baby buntings |
|
25 |
bodies [underclothing] hairdressing capes karate uniforms judo uniforms leotards kimonos |
|
26 |
charms, other than for jewellery, key rings or key chains charms, other than for jewelry, key rings or key chains |
|
27 |
floor mats, fire resistant, for fireplaces and barbecues yoga mats |
|
28 |
toy robots needles for pumps for inflating balls for games pumps specially adapted for use with balls for games baby gyms plush toys with attached comfort blanket tricycles for infants [toys] |
|
29 |
low-fat potato chips guacamole [mashed avocado] onion rings falafel lemon juice for culinary purposes freeze-dried meat lyophilized meat lyophilised meat oat milk vegetable-based cream freeze-dried vegetables lyophilized vegetables lyophilised vegetables extra virgin olive oil galbi [grilled meat dish] escamoles [edible ant larvae, prepared] edible insects, not live sweet corn, processed nut-based spreads potato-based dumplings hot dog sausages corn dogs soya bean oil for food milk substitutes almond milk peanut milk coconut milk coconut milk for culinary purposes coconut milk-based beverages rice milk for culinary purposes |
|
30 |
chocolate-based beverages chocolate spreads containing nuts flour-based dumplings agave syrup [natural sweetener] mirror icing [mirror glaze] freeze-dried dishes with main ingredient being rice lyophilized dishes with main ingredient being rice lyophilised dishes with main ingredient being rice freeze-dried dishes with main ingredient being pasta lyophilized dishes with main ingredient being pasta lyophilised dishes with main ingredient being pasta chamomile-based beverages dulce de leche bibimbap [rice mixed with vegetables and beef] onigiri [rice balls] instant rice hot dog sandwiches ice cubes processed seeds for use as a seasoning sesame seeds [seasonings] |
|
31 |
eggs for hatching, fertilized anchovy, live edible insects, live unprocessed sweet corn ears [husked or unhusked] |
|
32 |
soft drinks |
|
35 |
registration of written communications and data updating and maintenance of information in registries compiling indexes of information for commercial or advertising purposes business intermediary services relating to the matching of potential private investors with entrepreneurs needing funding production of teleshopping programmes production of teleshopping programs consultancy regarding public relations communications strategy consultancy regarding advertising communications strategy negotiation of business contracts for others |
|
36 |
rental of offices for co-working |
|
37 |
sterilization of medical instruments sterilisation of medical instruments hydraulic fracturing services fracking services pest control services, other than for agriculture, aquaculture, horticulture and forestry rental of dish washing machines rental of dish drying machines |
|
39 |
rental of electric wine cellars cash replenishment of automated teller machines car sharing services |
|
40 |
tinting of car windows |
|
41 |
training services provided via simulators providing films, not downloadable, via video-on-demand transmission services providing television programmes, not downloadable, via video-on-demand transmission services providing television programs, not downloadable, via video-on-demand transmission services sado instruction [tea ceremony instruction] aikido instruction rental of artwork rental of indoor aquaria |
|
42 |
unlocking of mobile phones monitoring of computer systems to detect breakdowns creating and designing website-based indexes of information for others [information technology services] internet security consultancy data security consultancy data encryption services monitoring of computer systems for detecting unauthorized access or data breach electronic monitoring of personally identifying information to detect identity theft via the internet electronic monitoring of credit card activity to detect fraud via the internet |
|
43 |
reception services for temporary accommodation [management of arrivals and departures] washoku restaurant services |
|
44 |
aerial and surface spreading of fertilisers and other agricultural chemicals in vitro fertilisation services pest control services for agriculture, aquaculture, horticulture and forestry human tissue bank services |
|
45 |
legal services in relation to the negotiation of contracts for others conducting religious ceremonies dog walking services leasing of internet domain names kimono dressing assistance |
|
Existing indications deleted |
|
|
Class |
Indication |
|
1 |
manure for agriculture artificial resins, unprocessed |
|
2 |
preservative oils for wood coloring (colouring) wood |
|
3 |
floor wax |
|
4 |
blocks of peat (fuel) |
|
5 |
headache pencils dog lotions |
|
6 |
building or furniture fittings of nickel-silver vice benches of metal building boards of metal chests of metal for foods meat safes of metal |
|
7 |
separators |
|
9 |
respirators, other than for artificial respiration waling glasses |
|
10 |
orthopaedic (orthopedic) belts sprayers for medical purposes |
|
11 |
installations for conditioning air fuel economisers fuel economizers stoves fairy lights for festive decoration torches for lighting flashlights (torches) disposable sterilization pouches |
|
12 |
lifting cars (life cars) ships' steering gears audible warning systems for bicycles |
|
13 |
gun stocks |
|
14 |
trinkets (jewellery, jewelry (AM.)) ornaments (jewellery, jewelry AM.)) paste jewellery cabochons for making jewelry |
|
16 |
artists' watercolor [watercolour] saucers watercolor [watercolour] saucers for artists bookbindings |
|
18 |
clothing for pets envelopes, of leather, for packaging pouches, of leather, for packaging bandoliers |
|
19 |
framework for building, not of metal installations, not of metal, for parking bicycles |
|
20 |
cots knife handles, not of metal scythe handles, not of metal tool handles, not of metal broom handles, not of metal cases of wood or plastic bins of wood or plastic boxes of wood or plastic footstools |
|
21 |
strainers |
|
22 |
sacks [bags] of textile, for packaging |
|
24 |
sanitary flannel bed clothes |
|
28 |
chalk for billiard cues |
|
30 |
binding agents for ice cream [edible ices] binding agents for edible ices |
|
Existing indications changed or transferred |
||
|
Current class |
New class (if applicable) |
Indication |
|
1 |
- |
“tartar other than for pharmaceutical purposes” amended to read “tartar, other than for pharmaceutical purposes” “earth for growing” amended to read “soil for growing” “isinglass other than for stationery, household or alimentary purposes” amended to read “isinglass, other than for stationery, household or alimentary purposes” “scale removing preparations, other than for household purposes” amended to read “descaling preparations, other than for household purposes”. “electrophoresis gels, other than for medical or veterinary purposes” amended to read “electrophoresis gels”. “stem cells other than for medical or veterinary purposes” amended to read “stem cells, other than for medical or veterinary purposes” “biological tissue cultures other than for medical or veterinary purposes” amended to read “biological tissue cultures, other than for medical or veterinary purposes”. |
|
3 |
- |
“detergents other than for use in manufacturing operations and for medical purposes” amended to read “detergents, other than for use in manufacturing operations and for medical purposes” “parquet floor wax” amended to read “wax for parquet floors” “scale removing preparations for household purposes” amended to read “descaling preparations for household purposes” “toiletries” amended to read “toiletry preparations” “turpentine, for degreasing” amended to read “turpentine for degreasing” “glass cloth” amended to read “glass cloth (abrasive cloth)" “shampoos for pets” amended to read “shampoos for pets (non-medicated grooming preparations)” “massage gels other than for medical purposes” amended to read “massage gels, other than for medical purposes” “balms other than for medical purposes” amended to read “balms, other than for medical purposes” |
|
3 |
5 |
Disinfectant soap Medicated soap |
|
4 |
- |
“oil for the preservation of masonry” amended to read “oils for the preservation of masonry”. “preservatives for leather (oils and greases)” amended to read “greases for the preservation of leather” “oil for the preservation of leather” amended to read “oils for the preservation of leather” |
|
4 |
1 |
xylol xylene benzene benzol |
|
4 |
2 |
wax for skis |
|
5 |
- |
“cattle washes” amended to read “cattle washes (insecticides)” “calomel” amended to read “calomel (fungicide)” “dog washes” amended to read “dog washes (insecticides)” “animal washes” amended to read “animal washes (insecticides)” “milk of almonds for pharmaceutical purposes” amended to read “almond milk for pharmaceutical purposes” “vaginal washes” amended to read “vaginal washes for medical purposes" “eye-washes” amended to read “medicated eye-washes” “reagent paper for medical or veterinary purposes” amended to read “reagent paper for medical purposes” |
|
5 |
10 |
anti-rheumatism bracelets anti-rheumatism rings bracelets for medical purposes |
|
6 |
- |
“nickel-silver” amended to read “nickel silver” “cashboxes of metal” amended to read “cashboxes (metal or non-metal)” “safes (strong boxes)” amended to read “safes (metal or non-metal)” “armour-plating” amended to read “armour-plating of metal” “armor-plating” amended to read “armor-plating of metal” “keys” amended to read “key of metal” “flashing of metal, for building” amended to read “flashing of metal for building” "angle irons" amended to read "angle irons of metal" "ducts of metal for ventilating and air conditioning installations" amended to read "ducts of metal for ventilating and air-conditioning installations" "roofing of metal, incorporating solar cells" amended to read "roofing of metal, incorporating photovoltaic cells" |
|
6 |
8 |
“tool handles of metal” amended to read “handles for hand-operated hand tools” “knife handles of metal ” amended to read “knife handles” “scythe handles of metal” amended to read “scythe handles” |
|
6 |
21 |
“broom handles of metal ” amended to read “broom handles” |
|
7 |
- |
“clutches other than for land vehicles” amended to read “clutches, other than for land vehicles” “driving motors other than for land vehicles” amended to read “driving motors, other than for land vehicles” “propulsion mechanisms other than for land vehicles” amended to read “propulsion mechanisms, other than for land vehicles” “jet engines other than for land vehicles” amended to read “jet engines, other than for land vehicles” “freewheels other than for land vehicles” amended to read “freewheels, other than for land vehicles” “pepper mills other than hand-operated” amended to read “pepper mills, other than hand-operated” “turbines other than for land vehicles” amended to read “turbines, other than for land vehicles” “couplings other than for land vehicles” amended to read “couplings, other than for land vehicles” “agricultural implements other than hand-operated” amended to read “agricultural implements, other than hand-operated” “brake linings other than for vehicles” amended to read “brake linings, other than for vehicles” “brake shoes other than for vehicles” amended to read “brake shoes, other than for vehicles” “brake segments other than for vehicles” amended to read “brake segments, other than for vehicles” “gear boxes other than for land vehicles” amended to read “gear boxes, other than for land vehicles” “driving chains other than for land vehicles” amended to read “driving chains, other than for land vehicles” “torque converters other than for land vehicles” amended to read “torque converters, other than for land vehicles” “transmission chains other than for land vehicles” amended to read “transmission chains, other than for land vehicles” “reduction gears other than for land vehicles” amended to read “reduction gears, other than for land vehicles” “brake pads other than for vehicles” amended to read “brake pads, other than for vehicles” “engine mounts other than for land vehicles” amended to read “engine mounts, other than for land vehicles” |
|
8 |
- |
“mortars for pounding” amended to read “mortars for pounding (hand tools)” “pestles for pounding” amended to read “pestles for pounding (hand tools)” “screwdrivers” amended to read “screwdrivers, non-electric” |
|
8 |
26 |
needler-threaders |
|
8 |
21 |
sugar tongs nutcrackers “ladles for wine” amended to “ladles for serving wine” |
|
9 |
- |
“acoustic (sound) alarms” ameneded to read “acoustic alarms” “compasses (measuring instruments)” amended to read “compasses for measuring” “spectacles (optics)” amended to read “spectacles” |
|
9 |
11 |
socks, electrically heated |
|
10 |
- |
“air mattresses, for medical purposes” amended to read “air mattresses for medical purposes" “bougies (surgery)” amended to read “surgical bougies” “tips for crutches for invalids” amended to read “tips for crutches” “beds, specially made for medical purposes” amended to read “beds specially made for medical purposes” “physical exercise apparatus, for medical purposes” amended to read “physical exercise apparatus for medical purposes |
|
11 |
- |
"air conditioning installations" amended to read "air-conditioning installations" "pocket torches, electric" amended to read "electric torches" "pocket searchlights" amended to read "electric flashlights" "air conditioning apparatus" amended to read "air-conditioning apparatus" "heat exchangers, not parts of machines" amended to read "heat exchangers, other than parts of machines" "flares" amended to read "flaming torches" "ice boxes" amended to read "cool boxes, electric" "ice chests" amended to read "coolers, electric" "heating apparatus for defrosting windows of vehicles" amended to read "heating apparatus for defrosting vehicle windows" "autoclaves (electric pressure cookers)" amended to read "autoclaves, electric, for cooking" "pressure cookers (autoclaves), electric" amended to read "pressure cookers, electric" |
|
12 |
- |
“fork lift trucks” amended to read “forklift trucks” “ships' hulls” amended to read “ship hulls” “transmission, for land vehicles” amended to read “transmissions for land vehicles” “saddle covers for bicycles or motorcycles” amended to read “saddle covers for bicycles” |
|
13 |
- |
“detonating caps other than toys” amended to read “detonating caps, other than toys” “signal rockets” amended to read “signal rocket flares” “percussion caps other than toys” amended to read “percussion caps, other than toys” |
|
14 |
- |
“amulets (jewellery, jewelry (AM.))” amended to read “amulets (jewellery)” “silver thread (jewellery, jewelry (AM.)) amended to read “silver thread (jewellery)” “bracelets (jewellery, jewelry (AM.))” amended to read “bracelets (jewellery)” “charms jewellery, jewelry (AM.))” amended to read “jewellery charms” “brooches (jewellery, jewelry AM.))” amended to read “brooches (jewellery)” “chains jewellery, jewelry (AM.))” amended to read “chains (jewellery) “necklaces (jewellery, jewelry AM.))” amended to read “necklaces (jewellery)” “threads of precious metal (jewellery, jewelry AM.))” amended to read “threads of precious metal (jewellery)” “wire of precious metal (jewellery, jewelry (AM.))” amended to read “wire of precious metal (jewellery)” “lockets (jewellery, jewelry (AM.))” amended to read “lockets (jewellery)” “gold thread (jewellery, jewelry (AM.))” amended to read “gold thread (jewellery)” “pearls jewellery, jewelry (AM.))” amended to read “pearls jewellery” “paste jewellery (costumer jewellery (AM.))” amended to read “paste jewellery” “rings jewellery, jewelry (AM.))” amended to read “rings (jewellery)” “hat ornaments of precious metal” amended to read “hat jewellery” “shoe ornaments of precious metal” amended to read “shoe jewellery” “pins (jewellery, jewelry (Am.))” amended to read “pins (jewellery)” “key rings (trinkets or fobs)” amended to read “key rings (split rings with trinket or decorative fob)” “key chains [trinkets or fobs]” amended to read “key chains [split rings with trinket or decorative fob]” “cloisonne jewellery [jewelry (Am.)]” amended to read “cloisonne jewellery” “cabochons for making jewellery” amended to read “cabochons” |
|
16 |
- |
“square rulers” amended to read “square rulers for drawing” “envelope sealing machines, for offices” amended to read “envelope sealing machines for offices” “boxes of cardboard or paper” amended to read “boxes of paper or cardboard” “bottle envelopes of cardboard or paper” amended to read “bottle envelopes of paper or cardboard” “drawing squares” amended to read “squares for drawing” “drawing T-squares” amended to read “T-squares for drawing” “bottle wrappers of cardboard or paper” amended to read “bottle wrappers of paper or cardboard” “labels, not of textile” amended to read “labels of paper or cardboard” “trading cards other than for games” amended to read “trading cards, other than for games” |
|
16 |
14 |
rosaries chaplets |
|
17 |
- |
“guttapercha” amended to read “gutta-percha” “junctions, not of metal, for pipes” amended to read “junctions, not of metal, for flexible pipes” |
|
18 |
- |
“valises” amended to read “suitcases” “suitcases” amended to read “valises” |
|
18 |
29 |
gut for making sausages |
|
19 |
- |
“tarred strips, for building” amended to read “tarred strips for building” “mantelpieces” amended to read “fireplace mantles, not of metal” “plate glass [windows], for building” amended to read “plate glass [windows] for building” “reeds, for building” amended to read “reeds for building” “wood pulp board, for building” amended to read “wood pulp board for building” |
|
20 |
- |
“bassinettes” amended to read “bassinets” “tortoiseshell imitation” amended to read “imitation tortoiseshell” “easy chairs” amended to read “chaise lounges” “stakes for plants or trees” amended to read “stakes, not of metal, for plants or trees” “meat chests, not of metal” amended to read “meat safes” “hampers [baskets]” amended to read “hampers [baskets] for the transport of items” “vice benches, not of metal” amended to read “vice benches [furniture]” |
|
20 |
19 |
“flagpoles” amended to read “flagpoles, not of metal” |
|
20 |
24 |
sleeping bags for camping sleeping bags |
|
21 |
- |
“bread baskets, domestic” amended to read “bread baskets for household purposes” “spouts” amended to read “pouring spouts” “scoops [tableware]” amended to read “scoops for household purposes” “glass wool other than for insulation” amended to read “glass wool, other than for insulation” “mills for domestic purposes, hand-operated” amended to read “mills for household purposes, hand-operated” “trays for domestic purposes, of paper” amended to read “trays of paper, for household purposes” “napkin holders” amended to read “table napkin holders” “autoclaves [pressure cookers], non-electric” amended to read “autoclaves, non-electric, for cooking” “pressure cookers [autoclaves], non-electric” amended to read “pressure cookers, non-electric” “coasters, not of paper and other than table linen” amended to read “coasters, not of paper or textile” “non-electric portable coldboxes” amended to read “portable cool boxes, non-electric” “non-electric portable coolers (Am.)” amended to read “portable coolers, non-electric” “baskets for domestic use” amended to read “baskets for household purposes” “trays for domestic purposes” amended to read “trays for household purposes” “fibreglass other than for insulation or textile use” amended to read “fibreglass, other than for insulation or textile use” “fiberglass other than for insulation or textile use” amended to read “fiberglass, other than for insulation or textile use” “litter boxes [trays] for pets” amended to read “litter boxes for pets” “spatulas [kitchen utensils]” amended to read “spatulas for kitchen use” |
|
21 |
22 |
pig bristles |
|
21 |
8 |
ladles for serving wine |
|
21 |
6 |
broom handles of metal |
|
22 |
- |
“bags [sacks] for the transport and storage of materials in bulk” amended to read “sacks for the transport and storage of materials in bulk” |
|
24 |
- |
“banners” amended to read “banners of textile or plastic” “lining fabric for shoes” amended to read “lining fabric for footwear” “table runners” amended to read “table runners of textile” “flags, not of paper” amended to read “flags of textile or plastic” “bunting” amended to read “bunting of textile or plastic” “gummed cloth, other than for stationery” amended to read “gummed cloth, other than for stationery purposes” “coasters [table linen]” amended to read “coasters of textile” “tablemats, not of paper” amended to read “tablemats of textile” “labels of cloth” amended to read “labels of textile” “fiberglass fabrics, for textile use” amended to read “fiberglass fabrics for textile use” “place mats, not of paper” amended to read “place mats of textile” |
|
25 |
- |
“slips [undergarments]” amended to read “slips [underclothing]” “teddies [undergarments]” amended to read “teddies [underclothing]” |
|
26 |
- |
“hat ornaments, not of precious metal” amended to read “hat trimmings” “shoe ornaments, not of precious metal” amended to read “shoe trimmings” |
|
26 |
18 |
reins for guiding children |
|
26 |
8 |
needle-threaders |
|
28 |
- |
“toys for domestic pets” amended to read “toys for pets” “lines for fishing” amended to read “fishing lines” “radio-controlled toy vehicles” amended to read “remote-controlled toy vehicles” |
|
28 |
4 |
wax for skis |
|
28 |
8 |
scrapers for skis |
|
29 |
- |
“anchovy” amended to read “anchovy, not live” “edible oils” amended to read “oils for food” “maize oil” amended to read “maize oil for food” “corn oil” amended to read “corn oil for food” “sesame oil” amended to read “sesame oil for food” “coconut oil” amended to read “coconut oil for food” “silkworm chrysalis, for human consumption” amended to read “silkworm chrysalis for human consumption” “soya milk [milk substitute]” amended to read “soya milk” “milk of almonds for culinary purposes” amended to read “almond milk for culinary purposes” “rice milk [milk substitute]” amended to read “rice milk” |
|
29 |
30 |
piccalilli |
|
29 |
32 |
“milk of almonds [beverages]” amended to read “almond milk-based beverages” "peanut milk [non-alcoholic beverage]” amended to read “peanut milk-based beverages” |
|
29 |
18 |
“gut for making sausages” amended to read “sausage casings, natural or artificial” |
|
30 |
- |
“meat tenderizers, for household purposes” amended to read “meat tenderizers for household purposes” “linseed for human consumption” amended to read “linseed for culinary purposes [seasoning]” “flaxseed for human consumption” amended to read “flaxseed for culinary purposes [seasoning]” |
|
31 |
- |
“algae for human or animal consumption” amended to read “algae, unprocessed, for human or animal consumption” “seaweed for human or animal consumption” amended to read “seaweed, unprocessed, for human or animal consumption” “roots for food” amended to read “roots for animal consumption” “sanded paper for pets [litter]” amended to read “sanded paper [litter] for pets” “aromatic sand for pets” amended to read “aromatic sand [litter] for pets” |
|
32 |
29 |
milk of almonds [beverage] peanut milk [non-alcoholic beverage] |
|
34 |
- |
“liquid nicotine solutions for use in electronic cigarettes” amended to read “liquid solutions for use in electronic cigarettes” |
|
37 |
- |
“air conditioning apparatus installation and repair” amended to read “installation and repair of air-conditioning apparatus” “vermin exterminating, other than for agriculture” amended to read “vermin exterminating, other than for agriculture, aquaculture, horticulture and forestry” “drilling of deep oil or gas-wells” amended to read “drilling of deep oil or gas wells” |
|
40 |
- |
“planing [saw mill]” amended to read “planing of materials” “sawing [saw mill]” amended to read “sawing of materials” “rental of air conditioning apparatus” amended to read “rental of air-conditioning apparatus” |
|
41 |
- |
“services of schools [education]” amended to read “educational services provided by schools” |
|
42 |
- |
“technical project studies” amended to read “conducting technical project studies” “data conversion of computer programs and data [not physical conversion]” amended to read “conversion of computer programs and data, other than physical conversion” |
|
44 |
- |
“vermin exterminating for agriculture, horticulture and forestry” amended to read “vermin exterminating for agriculture, aquaculture, horticulture and forestry” “pharmacists' services to make up prescriptions” amended to read “preparation of prescriptions by pharmacists” “speech therapy services” amended to read “speech therapy” |
|
45 |
- |
“security consultancy” amended to read “physical security consultancy” “baggage inspection for security purposes” amended to read “security screening of baggage” |
|
Amendments to class headings |
|
|
Class |
Amendment |
|
3 |
In the class heading, replace: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices with: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; non-medicated soaps; perfumery, essential oils, non-medicated cosmetics, non-medicated hair lotions; non-medicated dentifrices |
|
6 |
In the class heading, replace: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; ores. with: Common metals and their alloys, ores; metal materials for building and construction; transportable buildings of metal; non-electric cables and wires of common metal; small items of metal hardware; metal containers for storage or transport; safes |
|
10 |
In the class heading, replace: Surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopedic articles; suture materials with: Surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopaedic articles; suture materials; therapeutic and assistive devices adapted for the disabled; massage apparatus; apparatus, devices and articles for nursing infants; sexual activity apparatus, devices and articles |
|
14 |
In the class heading, replace: Precious metals and their alloys; jewellery, precious stones; horological and chronometric instruments with: Precious metals and their alloys; jewellery, precious and semi-precious stones; horological and chronometric instruments |
|
16 |
In the class heading, replace: Paper and cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ material; paintbrushes; typewriters and office requisites (except furniture); instructional and teaching materials (except apparatus); plastic materials for packaging; printers’ type, printing blocks with: Paper and cardboard; printed matter; bookbinding material; photographs; stationery and office requisites, except furniture; adhesives for stationery or household purposes; artists’ and drawing materials; paintbrushes; instructional and teaching materials; plastic sheets, films and bags for wrapping and packaging; printers’ type, printing blocks |
|
17 |
In the class heading, replace: Unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal with: Unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials; plastics and resins in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, tubes and hoses, not of metal |
|
18 |
In the class heading, replace: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery. with: Leather and imitations of leather; animal skins and hides; luggage and carrying bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; collars, leashes and clothing for animals |
|
20 |
In the class heading, replace: Furniture, mirrors, picture frames; unworked or semi-worked bone, horn, ivory, whalebone or mother-of-pearl; shells; meerschaum; yellow amber with: Furniture, mirrors, picture frames; containers, not of metal, for storage or transport; unworked or semi-worked bone, horn, whalebone or mother-of-pearl; shells; meerschaum; yellow amber |
|
21 |
In the class heading, replace: Household or kitchen utensils and containers; combs and sponges; brushes, (except paintbrushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass, (except glass used in building); glassware, porcelain and earthenware with: Household or kitchen utensils and containers; combs and sponges; brushes, except paintbrushes; brush-making materials; articles for cleaning purpose; unworked or semi-worked glass, except building glass; glassware, porcelain and earthenware |
|
22 |
In the class heading, replace: Ropes and string; nets; tents, awnings, and tarpaulins; sails; sacks; padding and stuffing materials, (except of paper, cardboard, rubber or plastics); raw fibrous textile materials with: Ropes and string; nets; tents and tarpaulins; awnings of textile or synthetic materials; sails; sacks for the transport and storage of materials in bulk; padding, cushioning and stuffing materials, except of paper, cardboard, rubber or plastics; raw fibrous textile materials and substitutes therefor |
|
24 |
In the class heading, replace: Textiles and substitutes for textiles; bed covers; table covers with: Textiles and substitutes for textiles; household linen; curtains of textile or plastic |
|
26 |
In the class heading, replace: Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers with: Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers; hair decorations; false hair |
|
28 |
In the class heading, replace: Games and playthings; gymnastic and sporting articles; decorations for Christmas trees with: Games, toys and playthings; video game apparatus; gymnastic and sporting articles; decorations for Christmas trees |
|
31 |
In the class heading, replace: Agricultural, horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables ; natural plants and flowers; live animals; foodstuffs for animals; malt with: Raw and unprocessed agricultural, aquacultural, horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables, fresh herbs; natural plants and flowers; bulbs, seedlings and seeds for planting; live animals; foodstuffs and beverages for animals; malt |
|
45 |
In the class heading, replace: Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals with: Legal services; security services for the physical protection of tangible property and individuals; personal and social services rendered by others to meet the needs of individuals |
|
Amendments to explanatory notes (2017 Eleventh Edition Nice classification) |
|
For additions, deletions and amendments to the explanatory notes for the Eleventh Edition of the Nice classification, please see WIPO resources. |
Appendix four - changes from the Eleventh Edition to the Twelfth Edition of the Nice Classification
|
Current Class |
New Class |
Indications |
|
11 |
7
|
“loading apparatus for furnaces” amended to read “furnace loading machines” |
|
16 |
21 |
“bags for microwave cooking” amended to read “bags for use in cooking” |
|
17 |
9 |
“insulating gloves” amended to read “bags for use in cooking” |
|
21 |
10
|
Hospital beds |
|
21 |
6 |
“boxes for dispensing paper towels” amended to read “boxes of metal for dispensing paper towels” |
|
21 |
6 |
“toilet paper dispensers” amended to read “toilet paper dispensers of metal” |
|
25 |
9 |
“wet suits for water-skiing” amended to read “wet suits” |
|
26 |
7 |
needles for wool combing machines |
Footnotes
- 1 See section 31(2) of the Act.
- 2 The International (Nice) Classification of Goods and Services for the Purposes of the Registration of Marks was established by an Agreement concluded at the Nice Diplomatic Conference 1957. The countries that are party to the Nice Agreement constitute a Special Union within the framework of the Paris Union for the Protection of Industrial Property.
- 3 Section 31 of the Trade Marks Act 2002.
- 4 Trade Marks Amendment Regulations 2006
- 5 See section 10 of the Act.
- 6 Practice Guideline Amendment 2006/05, IPONZ Newsletter, June 2006
- 7 Practice Guideline Amendment 2004/09, Information For Clients, Issue 34: 30 December 2004.
- 8 Regulation 43 of the Trade Marks Regulations 2003.
- 9 Practice Guideline Amendment 2007/07, Intellectual Property Office Newsletter, August 2007.
- 10 Regulation 43 of the Trade Marks Regulations 2003.
- 11 Regulation 43(2)(b) of the Trade Marks Regulations 2003.
- 13 Practice Guideline Amendment 2004/1, Information For Clients, Issue 30: 31 March 2004.
- 14 Practice Guideline Amendment 2005/01, IPONZ Newsletter, May 2005
- 15 Practice Guideline Amendment 2007/01, IPONZ Newsletter, March 2007
- 16 See regulation 139 of the Trade Marks Regulations 2003.
- 17 See regulation 140 of the Trade Marks Regulations 2003.
- 18 See regulation 141 of the Trade Marks Regulations 2003.
- 19 See regulation 142(1) of the Trade Marks Regulations 2003.
- 20 See regulation 142(3) of the Trade Marks Regulations 2003