Classification and specification policy changes: broad specifications and the introduction of the 9th edition of the Nice Classification

Introduction

This year the New Zealand Intellectual Property Office (IPONZ) has changed a number of its practices regarding classification and the acceptability of certain items in specifications of goods and services. The following explains the main changes, first, in IPONZ's approach to section 32(2) of the Trade Marks Act 2002 and secondly, implemented due to the introduction of the 9th edition of the Nice Classification.

Section 32(2) – Broad and Vague Specifications

Broad goods and services

There have been a number of changes to IPONZ's practice guidelines regarding broad specifications. In particular the following items, which in the past have been objected to for being too broad and vague, are now acceptable:

Machines (class 7)
Computer software (class 9)
Computer Programs (class 9)
Retail services (class 35)
Wholesale services (class 35)
Mail order services (class 35)
Catalogue shopping services (class 35)
Television shopping services (class 35)
Electronic shopping services (class 35)
Internet shopping services (class 35)
Online shopping services (class 35)
E-tailing services (electronic retailing services)(class 35)
The bringing together, for the benefit of others, of a variety of goods (excluding the transportation of such goods), enabling customers to conveniently view and purchase those goods (class 35)
Construction Services (class 37)
Installation Services (class 37)
Maintenance Services (class 37)
Repair Services (class 37)
Treatment of Materials (class 40)
Personal and Social Services (class 45)

There are a number of specific items which IPONZ continues to object to for being too broad and vague. These are listed in IPONZ’s practice guidelines, Sections 31 and 32 of the Trade Marks Act 2002: General Annexure. In particular we note that IPONZ still considers "electric, electrical or electronic, apparatus, devices, equipment or instruments" (in class 9) and variations thereof to be too broad and vague.

Class headings

IPONZ no longer objects to the inclusion of any class heading in a specification. It is noted however, that a class heading does not cover all goods or services in the relevant class, but only those covered by the individual items listed in the class heading.

Goods/services in the nature of, in relation to, of, for, etc…

IPONZ has also changed its policy regarding the following phrases:

Goods/services in the nature of
Services in
Services of
Services for
Services in relation to

Previously, IPONZ considered the above items to be too vague but they are now generally acceptable in specifications. However, IPONZ’s practice guidelines, Sections 31 and 32 of the Trade Marks Act 2002: General Annexure, state that examiners will interpret these phrases in a particular way. For example, examiners will interpret "goods in the nature of clothing" to by synonymous with "clothing" and "services for transport" to be synonymous with "transport services".

The above items will however, not be acceptable where the item which they are combined with is in itself unclear or vague. In this situation, the examiner will require the specification to be amended. For example, "services for clubs" will not be acceptable because the item "club services" is not acceptable.

The following phrases are still considered to be too vague and therefore, unacceptable in a specification:

Goods in relation to
Services associated with

Nice Classification – 9th Edition

The 9th edition of the Nice Classification came into effect as of 1 January 2007. The following deals with the most significant changes.

Goods of precious metal

The 9th edition brings about a change in the way that goods made of precious metal are classified. The class heading for class 14 includes "Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes. It is clear from the Explanatory Note that the words "not included in other classes" are important. Goods are no longer automatically classified in class 14 simply because they are made of precious metal. Instead, goods made of precious metals are classified according to their purpose or function. For example, cutlery made of precious metal is classified in class 8, pen nibs of gold are classified in class 16, and teapots made of precious metal are classified in class 21.

Legal services

The 9th edition also changes the classification of legal services. Under the 8th edition legal services were classified in class 42 whereas they are now classified in class 45. Associated services such as mediation, registration of domain names, arbitration and intellectual property consultancy are also now classified in class 45.

Environmental services

The amended class heading for class 42 also confirms IPONZ’s previous practice of classifying environmental consultancy, research and other related services in class 42. In this regard we note that the following indications have been added to class 42 in the 9th edition: "consultancy in the field of energy-saving" and research in the field of environmental protection.