3. Requirement for a clear specification and for correct classification

Date Published

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

Infringement is defined more broadly under the Trade Marks Act 1995 than under the repealed 1955 Act, and extends to infringing use in respect of goods or services similar to, and closely related to, those for which the trade mark is registered (see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

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

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

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