27.3. Amending the goods and/or services of the applicant's specification

Applications are often filed with broad specifications in a number of classes and may include general terms which cover a wide range of goods and services. The applicant may not actually intend to trade in or offer all the goods or services which might be covered by such wide terms and therefore may be able to be more specific about the intended activities.

The applicant may request an amendment under s 65 of the Act which will limit the goods and or services covered by the application so that it no longer covers goods or services which are similar or closely related to those of the conflicting trade mark(s). This may be done by:

• deleting or excluding goods or services from the specification as filed;
• substituting a more specific list of the goods or services for which protection is required;
• defining more specifically the purpose or nature of the goods or services.

Note: An applicant seeking amendment of a specification of goods or services under subsection 65(7) must clearly state the wording of the proposed amended statement. No amendment can be allowed which would substitute different goods or services from those originally claimed or which would extend the scope of that claim.

3.1  Deleting goods or services from the application

An applicant may attempt to overcome grounds for rejection raised under s 44 by deleting goods and/or services so as to remove all conflict with the goods/services of the earlier trade mark(s). The examiner must consider whether a proposed deletion removes all similar and/or closely related goods and services. If the examiner is satisfied that goods or services that remain still conflict with those of the cited trade mark, the examiner must provide reasons and further options. The following is an example of a proposed deletion that clearly removes goods that are similar to those of the an earlier registration:

3.2  Excluding goods and/or services from the application

Applicant’s may request that specific goods and services be excluded from a specification, rather than deleting specific items.

For example, if a trade mark covering ‘computer software; computer hardware’ is objected to on the basis that it conflicts with an earlier registration covering 'accounting software’, an applicant may request to amend the goods to computer software, excluding accounting software, rather than deleting the claim for computer software entirely.  

However, exclusions can raise issues around clarity and scope of the specification and therefore should routinely not be recommended as an option for an applicant to consider. For instance, in the example above, while the specific goods covered by the earlier registration are excluded, the specification is still broad and likely to contain other software similar to the accounting software of the earlier registration (e.g. apps for filing tax returns). In such cases, specifying the particular software of interest to the applicant (e.g. computer game software) is a more appropriate means of removing the conflict with the earlier registration.

If an applicant offers to exclude goods and/or services, examiners need to carefully assess whether the proposed amendment excludes goods and/or services which are similar or closely related to the goods and/or services claimed by the conflicting trade mark.

An exclusion to a specification of goods and/or services should be written in specific terms and treated with extreme caution. The onus is on the applicant to clearly nominate goods and/or services in the application which are not the same/similar/closely related to those of a conflicting trade mark. (But refer to below.)

The area of conflict between the specifications needs to be identified and then the relevant goods and/or services excluded. The exclusion required will usually be broader than the goods or services covered by the conflicting trade mark as it is necessary to remove any conflict which may result from the coexistence of similar and closely related goods and/or services.

It is the applicant’s responsibility to propose any amendments which result in limiting the specification as only the applicant knows the exact area of business interest within which the trade mark is or will be used. Examiners may assist with the wording of a proposed exclusion statement once the area of interest is defined. The usual form of exclusion uses the words ‘but not including’ or ‘none being’ followed by goods or services which would otherwise fall within the scope of the specification. For example,

Class 16:  Articles of stationery, but not including adhesives; printed matter; 

and

Class 7:  Washing machines and spin driers; none being for domestic use.

3.2.1

An example where an exclusion may assist in overcoming grounds for rejection under s 44 is:

3.2.2

Proposed exclusions should be considered carefully to ensure that they do differentiate the goods and/or services. The following exclusion would not be allowable, since a transistor remains the same whether or not it is used in electronics or for other purposes.

3.2.3

An exclusion of goods and/or services from the application will not overcome a citation when the conflicting trade mark covers all goods in the class. In this situation, an amendment to the specification of the conflicting application or registration would also be required to differentiate the goods.

Note: Specifications claiming “all goods” etc. are not acceptable under the 1995 Act but such specifications may exist for trade marks which were entered on the Register under the repealed Act.

3.2.4

A proposed specification which seeks to exclude goods which are obviously not included in the statement is not acceptable.  For example, “Eggs and cheese, but not including butter” would not be allowable for the obvious reason that butter is not included in the statement “eggs and cheese” and the exclusion clause would be redundant.

 

3.3  Defining the area of interest of the goods and/or services

An applicant may overcome grounds for rejection by limiting their specification to particular goods of interest.

In the example above the applicant’s area of interest is limited to “spraying machines all for use in the automotive industry”.  As long as the specification reads “spraying machines” without any qualification, the goods claimed are of the same description as some of the goods which are specified in the conflicting trade mark. Limiting the range of goods covered by the application by means of the qualification “all for use in the automotive industry” will allow the ground for rejection to be withdrawn.

• Part 14 Classification of Goods and Services - 6.4 Wording of exclusions and restrictions
• Part 9 Amendments and Changes to Name and Address - 4. Amendments after particulars of an application have been published
• Part 60 The Madrid Protocol - 4.10 Amendments​​​​​​​