6. Wording of the specification

Date Published



6.1  General considerations

The need for a clear and unambiguous specification of the goods and services covered by an application has been referred to in 14.3. The requirements under the legislation are clearly prescribed in regulation 4.4 and applicants should comply with these requirements when filing applications. The primary requirement however is for clarity. Bearing in mind the matters raised in paragraphs 6.2 and 6.3, if it is clear what the application covers, and if the goods or services as specified can be classified, the specification should not be questioned.


6.2  Words and phrases which should be avoided or qualified

The following expressions which commonly occur in specifications may lead to ambiguity if they are used inappropriately. If there is no other reason to issue a report, problems with a specification should only be raised when there is a real likelihood that it may be misconstrued. If however a report is to issue on other matters, then amendments to clarify the specification should be suggested.

6.2.1 Parts and fittings (or accessories)

The following comments relate also to claims for accessories. Parts and fittings should relate to specific goods and should not be accepted without qualification. For example:

Class 12: Parts and fittings

does not adequately identify the goods to be covered, but the following wording would be acceptable:

Class 12: Parts and fittings for motor vehicles.

Punctuation can be important in ensuring that the parts and fittings relate to the goods intended by the applicant. It is also important to ensure that any claim for “parts and fittings” is applied sensibly and logically, and only to goods which would in a practical sense have parts and fittings.

For example:

Class 9: Computers and parts and fittings therefor

makes it clear that both the “parts” and the “fittings” relate to the computers,

Similarly:

Class 9: Computers and modems; parts and fittings therefor

leaves no ambiguity that the parts and fittings must relate to all the preceding goods.


6.2.2 Apparatus, instruments, equipment, systems

No question should be raised on the use of these and similar terms where they are suitably qualified, e.g. Heating apparatus, Measuring instruments, Mining equipment, Computer systems


6.2.3 Goods, services

These terms, used on their own in a specification, are considered to be too vague, and expressions such as “goods in this class” or “services in this class” are not acceptable. If used in conjunction with a description that adequately describes the type of goods or services, they will however be acceptable, for example:

Class 16: Stationery goods.


6.2.4 And the like, ancillary, related

These terms are too vague if used as descriptions of goods or services as in:

Class 28: Bats and balls and the like goods.

Class 35: Advertising and related services.

In all such cases the goods or services should be fully specified.

However, where the goods or services are clearly stated, the terms may be accepted as a secondary qualifier, for example:

Class 25: Sports and casual shirts, tee shirts and polo shirts, for use in games and the like leisure activities.

Class 41: Training of personnel in data processing and related office skills.

In both of these examples the primary goods or services are clearly defined.


6.2.5 Services in relation to...

It will depend on the manner in which this term is used as to whether a specification is acceptable. For example, if the applicant were to claim consultancy services in relation to financial affairs in class 36, this claim would be taken as acceptable on the basis that the applicant has specified the service provided -“consultancy services”- and described the nature of the consultancy services -“in relation to financial affairs”. These types of claims are also acceptable where the services have been clearly defined and are in the class claimed.  For example, a claim for services in relation to education claimed in class 41 would be acceptable as education services clearly fall in class 41.  However, a claim for services in relation to water in any class is not acceptable because the services which are being claimed have not been stated, only the topic to which the unspecified services relate.  These services could conceivably fall in a number of different classes (e.g. water testing in class 42, water supply in class 39, installation of water supply systems in class 37 etc.).


6.2.6 Principally or Predominantly (in relation to goods classified by material)

When goods which are normally classified by material consist of more than one material, it is up to the applicant to advise the principal material of which the goods are made. Phrases along the lines of “all made wholly or principally of plastic” or “made predominantly of metal” are usually used for such descriptions. Qualifications along these lines should only be requested if the nature of the goods is unclear and they cannot be classified.


6.2.7 Abbreviations

Abbreviations should generally be avoided in specifications. While the meaning of many abbreviations and acronyms may be well known today, it is difficult to know how some of them may be interpreted in the future. Some abbreviations tend to drop from current use, e.g. the LP and EP (long playing and extended play records) have been overtaken by CD (compact disc). Other abbreviations may have more than one meaning, e.g. VCR means both “video cassette recorder” and “visual control room”, and its use in a specification could result in an ambiguous claim. Other abbreviations may be so recently coined or so specialised that their use in a statement of goods or services will mean that the specification is not clear.  However, if the meaning of the abbreviation is clear and/or the abbreviation is in common use, there is no need to propose its replacement.


6.3  Registered trade marks are not to be used in specifications

6.3.1

Applications are sometimes filed with a specification in which a registered trade mark is used to specify the goods which the applicant wishes to cover. A list of trade marks which must not be used in specifications is provided in Annex A3 (this list is not exhaustive). The registered trade marks, including some certification trade marks, are usually well known in respect of particular products and the applicant incorrectly uses them as the name of the same or similar products. This may have the effect of prejudicing the trade mark owner’s registration rights. There are however some instances where trade marks may be acceptable in a specification for services. In such circumstances the specialised services may be applied to, or are in relation to another traders goods. For instance:

Class 37: repair and maintenance of Carrier air conditioners


6.3.2

Examiners should familiarise themselves with the list in Annex A3 and if these, or other, trade marks appear in a specification, the applicant should be requested to delete them and provide a generic description of the goods or services, along the lines of the alternative descriptions given in Annex 3. For example, WINDCHEATER would not be acceptable in a class 25 specification where the applicant intends to cover close fitting garments for wind protection. WALKMAN would not be acceptable in a class 9 specification to cover portable audio equipment. Any amendment to the specification must not have the effect of extending the goods or services claimed as this is not allowed under section 65.


6.4  Wording of exclusions and restrictions

6.4.1

Exclusions in a specification are intended to exclude items which would otherwise fall within the specification claimed. This is usually done in order to overcome grounds for rejection. For example if there are grounds for rejection under section 44 the applicant may seek to exclude items from the specification which are the same as, or similar to, the goods or services of the cited application. Goods or services may also be excluded to overcome an objection under section 41 by removing from the specification those items which the trade mark is not capable of distinguishing.


6.4.2

An exclusion is not acceptable if it attempts to exclude goods and/or services which are not actually included in the original specification. The usual form of exclusion uses the words “but not including” or “none being” as in the following examples:

Class 7: Washing machines and spin driers; but not including any such goods for domestic use.

Class 16: Articles of stationery, paint brushes, typewriters; but not including adhesives.

Class 30: Pies; flans; pasties; none being foods containing pork.

Class 41: Providing courses of instruction, examination services and arranging of seminars, all at tertiary level; but not including any such services relating to laboratory research.


6.4.3

Exclusion may include goods and/or services which are similar to those which form the primary part of the exclusion. Such an exclusion is not acceptable if it attempts to exclude goods or services which are not actually included in the original specification. Acceptable exclusions of this kind are given in the following examples:

Class 12: Road vehicles; but not including bicycles or any goods similar to bicycles

Class 16: Office machines and parts and fittings therefor; pens and printed matter; but not including typewriters, stapling machines or addressing machines and not including parts and fittings of any of these excluded goods.


6.4.4

A specification may be restricted, or an endorsement limiting the use of the trade mark may be entered, to ensure that in use the trade mark will not be deceptive or confusing.

  • Part 29 Trade Marks likely to Deceive or Cause Confusion


6.5  The scope of class headings

The section titled Guidance for the User in the NICE Classification provides information on the function and scope of the class headings. The opening sentence states “The class headings indicate in a general manner the fields to which the goods and services in principle belong.” This heavily qualified statement makes it clear that a claim for a class heading does not equate to a specific claim for all the particular goods or services placed in that class. An application which claims a class heading covers only the goods or services actually specified in the heading, or clearly encompassed by the heading. Such a claim does not cover all the items in the class, and is not equivalent to a claim for all goods or all services. This is particularly relevant if an amendment is requested which mentions goods or services not specifically referred to in the class heading. Such an amendment should be considered carefully as it may in fact increase the scope of the application (paragraph 4.8.4 gives an example of this) and therefore may not be acceptable under section 65 of the Act (see paragraph 4.2).


6.6  Unrealistically broad specifications

An applicant may not claim as part of the specification of goods and/or services a range of goods or services in a particular class which is unrealistically broad so that in commercial terms it is unlikely that the applicant would deal in or provide that range of goods or services (reg 4.8(3)). For example an application that specified every item listed in NICE for a single class, for instance class 3 would appear to be unrealistically broad. In these circumstances the applicant should be asked to provide a declaration to confirm an intention to use the trade mark on all the goods or services specified, or to propose an amended specification which is limited to the actual range of goods and services in relation to which the trade mark is used or intended to be used.

Claims for class headings are acceptable, as are claims for parts of class headings


6.7  Claims for all goods, all other goods or all services, all other services

Under regulation 4.4(2) an applicant must not use the phrases “all goods”, “all services”, “all other goods” or “all other services” in their specification. If the claim is simply for “all goods” or “all services”, the owner must specify the goods or services for which they are seeking coverage, and delete their claim for “all goods” or “all services”. If the owner has specified some goods or services but has also claimed “all other goods” or “all other services”, then they must limit their claim to the goods or services already specified, by deleting the terms “all other goods” or “all other services”. However, should the applicant wish to replace the prohibited term with a reasonable list of goods which does not increase the scope of the claim, they should be allowed to do so.  Related expressions such as “all items” are also unacceptable.


Amended Reasons

Amended Reason Date Amended

Minor edit to include reference to certification trade marks.