14.4. Classification procedures in examination

4.1  Introduction

4.1.1

This section sets out general practice for determining whether specifications adequately define the scope of the goods and/or services claimed, for determining whether individual items are correctly classified, and for determining the acceptability of amendments. In applying this practice it should be remembered that classification is not an end in itself. The aim is to ensure that it is clear what goods and/or services are claimed in an application. If there are no other matters needing to be raised in a report, a specification should only be queried when the classification is clearly incorrect, or when part or all of the specification is vague or unclear, or broad in scope to the extent that it cannot be classified. Section 5 of this Part deals with the classification of specific goods or services, and section 6 deals with wording used in specifications.

4.1.2

Sometimes help may be needed when classifying difficult items. If items cannot be classified using NICE, the picklist or the other classification resources available, the application should be referred to the Classification Subject Matter Experts for advice.

4.2  Considerations under sections 64, 65 and 65A of the Act on the scope of amendments

4.2.1 Section 64

Section 64 of the Act applies at the time of filing an application. Under this section of the Act, an amendment can be made to correct a clerical error or an obvious mistake, provided it is requested before the particulars of the application have been published under section 30. Pre-publication amendments that extend the scope of the application are allowable under section 64.

• Part 9 Amendments and Changes to Name and Address - 3.  Amendments before particulars of an application are published.

4.2.2

Once the details of the application have been published, amendments to the specification are only possible under s65(4), 65(5) and 65A of the Act.

• Part 9 Amendments and Changes to Name and Address - 4.  Amendments after particulars of an application have been published.

4.2.3 Section 65(4)

Section 65(4) allows amendments to be made to correct an error in the classification of goods or services specified in the application. For example, an owner may apply for clothing in class 2 either as a result of simply entering the wrong number on the application form or being mistaken about the correct class. In considering amendments that are allowable under this subsection it must be remembered that the scope of an application is essentially determined by the specification of goods and/or services, not by the class number(s). Class numbers are simply an administrative tool for the purpose of grouping related goods or services into easily searchable lists. Any section 65(4) amendment made to correct an error in the classification of goods or services specified in the application must not extend the applicants rights.

4.2.4 Section 65(5)

Section 65(5) specifically allows an amendment to be made to add one or more classes of goods or services to an application, providing that the Registrar believes it is fair and reasonable in all the circumstances to do so. The addition of one or more classes is not an extension to the scope of the application if:  

• the only goods or services which are claimed in the additional class(es) are ones falling within the scope of the original claim, and;
• the original claim was not limited or specified in a way which restricted it only to the class(es) originally specified.

It is Office practice to allow the following amendment under section 65(5):

• The addition of a class or classes when the applicant has applied for goods or services using an unqualified general or generic term, and further information (for example information supplied as part of evidence of use) shows the trade mark is used or intended to be used on goods or services clearly within the original description, but falling in a different class or classes. A class or classes can also be added in this situation without evidence, and on the basis of a simple request from the owner or their agent. This covers situations where the applicant had intended and expected coverage wider than or different from the limited coverage provided by the particular class(es) in which they made their unqualified general or generic claim. There are differences in Office practice between first and further reports in relation to this, and these are stated in paragraph 4.3.

Section 65(5) does not allow for class(es) to be added to an application where specific items have been claimed, and the NICE classification clearly shows that these items fall only in the class(es) applied for. This subsection does allow for amendments where it is clear that it is fair and reasonable in all the circumstances to do so e.g., only one class number has been claimed when two or more were required to cover the nominated goods or services.

4.2.5 Section 65(7)

Section 65(7) amendments relate to any other particulars in the application. Amendments made under this subsection must not extend the scope of the goods and/or services covered by the application immediately prior to the amendment.

4.2.6

There is no provision under section 65 for items or classes to be added to applications where the items initially claimed have been clearly specified or qualified and are correctly classified. Requests from applicants for amendments must therefore sometimes be refused, and Examiners should at all times be careful in suggesting amendments. Paragraphs 4.7 to 4.11 give examples of amendments which would or would not be acceptable under section 65.

4.2.7 Section 65A

Section 65A provides the Registrar with more scope to correct the kind of clerical errors or obvious mistakes in published applications not allowable under section 65. An error or mistake could be in relation to an applicant's specification of goods or services (e.g. a typographical error). The amendment can only be made if it is the Registrars opinion that it is fair and reasonable in all the circumstances of the case to make the amendment. Since the amendment may result in an extension of the applicant's rights it must be published to allow any affected third party an opportunity to oppose.

• Part 9 Amendments and Changes to Name and Address - 4.7  Section 65A

Examiners should refer any requests relating to a section 65A amendment to their team leader for consideration.

4.3  Differences in examination practice for first and further reports

An Examiner preparing a first report is in a different position from an Examiner preparing a further report. In preparing a first report they will in almost all cases have no additional information in front of them in relation to the goods and/or services being claimed. In preparing a further report they may have to consider additional explanatory material supplied by the owner or their agent. They may also need to respond to requests that have been made to amend the goods and/or services that have been claimed. This may include a request for an additional class or classes. Paragraphs 4.5 onwards provide guidelines to follow, but they should be read in the following context:

4.3.1 First reports

In general, classification matters should only be raised in a first report in the following circumstances:

• If the specification includes a claim for goods or services that clearly do not fall in the class applied for, and instead clearly fall in another class. An example would be a claim for detergents for medical purposes made in class 10, when such goods are classified in class 5. The applicant should be asked to delete the misclassified item, OR to pay an additional fee, add the correct class and transfer the item to that class.
• If the specification is unclear to the extent that it can't be understood without further information being supplied. An example would be a complex claim using technical terms not found in standard references, or a vague and imprecise claim where the nature of the claimed goods and/or services is difficult to determine. The applicant should be asked to supply additional information, such as trade pamphlets, brochures or information from the applicant's website, or to reword the specification to clarify the exact nature of the claimed goods and/or services.
• If goods or services applied for are not found in the NICE classification, and the picklist or advice from the Classification Subject Matter Experts has placed them in a different class. The applicant should be asked either to delete the misclassified item, or to pay an additional fee to add the correct class and transfer the item to that class.
• If the specification uses terms not allowed for under the regulations. An example would be a claim for all goods or all other goods (reg 4.4(2)) or a similar claim such as all products. The applicant should initially be asked to delete the prohibited terms and limit their claim to the items already specified.  However, should the applicant wish to replace the prohibited term with a reasonable list of goods that do not increase the scope of the claim, they may do so.
• If the item appears in the List of terms too broad for classification.

4.3.2 Further reports

If additional information has not been supplied by the owner or their agent, classification matters should be treated as for a first report.

If additional information has been supplied in response to a request made by the Examiner, or in relation to other matters (e.g. additional information provided as part of evidence of use), the following points must be considered before offering to add an extra class or classes, or before responding to a request for an extra class or classes to be added.

In general (subject to any amendment allowable under s65A), a class or classes should only be added to an application in the following circumstances:

• If the original specification included claims for goods or services clearly not falling in the class applied for and instead clearly falling in another class or classes. In this case a class or classes can be added, and the claim in the original class must be deleted.
• If clarification of unclear items shows that they do not fall in the class applied for, and instead fall in another class or classes. In this case a class or classes can be added, and the claim in the original class must be deleted.
• If information/clarification provided shows that an unqualified claim for a general or generic item such as valves or accessories or information services or for any items marked with an asterisk in NICE (an asterisk marks a generic item for which there are entries in more than one class - see paragraph 5.1.4 of this Part), was intended to cover specific goods or services encompassed by that term but falling in another class(es).  In this case a class or classes can be added, and the claim in the original class only needs to be deleted if the information/clarification shows that the trade mark is not being used or is not intended to be used in relation to that class. An item cannot be transferred to another class if its scope is already qualified as falling in the original class, or not being included in other classes.  A class or classes can only be added if the necessary fee has been paid. If the additional classes were not included in the Examiners initial RIO Search a further search must be done in relation to the additional classes and those classes associated with them.

4.4  Quick guide to classification procedures

The following questions need to be considered in assessing classification. Some should be considered in light of paragraph 4.3. All are amplified in succeeding paragraphs:

• In multi-class applications are the goods and/or services grouped by class number? - see paragraph 4.5.
• Is it clear what the applicant's proposed specification covers? If it is not, and if the specification is not based on a general or generic term, the applicant will have to be asked for clarification - see paragraph 4.6. An extra class or classes should not be offered at the time of this request.
• Is it clear from the NICE classification list or the picklist which class or classes the goods and/or services fall into? - see section 5.
• Does the specification claim goods and/or services not included in the class or classes listed on the application? - see paragraphs 4.8 and 4.10.2.
• Is it necessary to transfer goods and/or services between classes? - see paragraph 4.9.
• Has a request been made, or is there a need, to add an extra class or classes? - see paragraph 4.8.
• Would a proposed amendment widen the scope of the specification as filed? If so it will not be allowed under section 65 - see paragraph 4.8.
• Is the application filed in the correct class or classes? - see paragraph 4.10.1.

4.5  Goods or services to be grouped together by class number

4.5.1

According to section 27(5) of the Act, an application may be made in more than one class. Such applications are commonly referred to as multi-class applications although this is not a term used in the legislation. Regulation 4.4 prescribes the manner in which the specification of goods and/or services in a multi-class application should be set out:

• the goods and services must be grouped together according to their class (reg 4.4(3));
• the class number must be nominated for each group (reg 4.4(4)), and;
• the groups must be listed in the order of their class numbers (reg 4.4(5)).

Where the specified goods and/or services are not in line with the class number or numbers in which they are filed, it is possible to transfer them to the correct class number if this class also appears on the application. If misclassified goods or services cannot be transferred in this way, the applicant must either delete them from the application or add an extra class or classes to the application, subject to payment of the appropriate fee for each additional class (fee item 4 of Schedule 9).

An additional RIO Search based on the new class(es) and associated classes must be done if those classes were not included in the Examiner's original search.

• Part 10 Details of Formality Requirements - 5.3  Problems with a specification

4.5.2

If an item can fall in more than one class it may be nominated in more than one class in a multi-class application. However if only one class is nominated for such an item, this matter should only be raised with the applicant if the item is too vague or unclear to be interpreted, or if it appears on the List of Terms Too Broad for Classification. The application will be treated at the first report stage as only covering the goods or services which fall in that particular class. (See paragraph 4.7.2.)

4.6  Clarity of the specification of goods and/or services

4.6.1

All terms used to specify the goods and/or services for which registration is sought must be clear and easily understood. Terms found in the NICE classification or the picklist (reg 4.4(6)) will be accepted without question. Other terms are acceptable if they can be found in mainstream or specialist dictionaries, or are easily understood terms common to particular trades.

4.6.2

If part or all of the specification is vague or unclear to the extent that it cannot be classified, the Examiner should request further information from the applicant. It should not be suggested to the applicant at this stage that they may be able to add a class or classes. The request should be for further information in the form of information from the applicant's website, or trade brochures or pamphlets published by the applicant, which are directly relevant to the application (reg 4.4(7)). While specifications should name the goods and/or services, the generic description of a range of goods falling in the class may be used if the applicant uses or intends to use the trade mark on that range of goods. For example industrial chemicals, substances for laundry use and computer hardware are all adequate descriptions for goods in classes 1, 3, and 9 respectively.  Section 5 of this Part explains the principles applied in determining the classification of specific goods or services, and section 6 deals with wording used in specifications.

4.7  Goods or services incorrectly classified by the applicant

Incorrect classification exists when an item of goods or services included in a specification falls totally in a class other than the one nominated in the application. In such instances, the initial search for conflicting trade marks should be based on the class(es) in which the goods and/or services actually fall, and not just on the class(es) in which the application has been made.

Action to correct incorrect classification will depend on the particular circumstances. Options include:

• the deletion of the incorrectly classified item(s);
• the transfer of the misclassified item(s) to the appropriate class(es) if they exist on a multi-class application, or;
• the addition of a further class or classes to which the misclassified item(s) can be transferred, in which case the appropriate fee must be paid before the class(es) can be added.

4.7.1

An example of where a class may be added (or an item transferred in a multi-class application) would be where the applicant has specified, in class 39:

Arranging of travel; providing car hire; booking of accommodation for travellers.

The Examiner should inform the applicant in the first report that booking of accommodation for travellers is classified in class 43, not class 39. The applicant should then be offered the option of paying an additional fee and adding class 43 to cover this particular service, or deleting the misclassified service from the application.  See paragraph 4.8 for further details regarding when classes may and may not be added to an application.

4.7.2

In the case of applications where the goods and/or services are correctly classified but could also fall in classes not included in the application, these items should be queried only if they appear in the List of terms too broad for classification.

If they do not, they should be taken to be correctly classified, and no action should be taken in the first report. It should be assumed, in the absence of any further information, that only the goods and/or services in the nominated class(es) were intended to be covered.

List of terms too broad for classification

The List of terms too broad for classification is a predefined list of common terms that are broad in nature and could be correctly classified in several different classes.

The purpose of this list is to:

• better define the scope of protection of a trade mark’s goods or services,
• prevent cluttering on the register, reducing barriers for new entrants,
• reduce section 44 grounds for rejection based on notional conflicts between specifications
• align with international practice, reducing irregularities for the benefit of Australian holders seeking international registrations.

The applicant will be asked to provide further information if they claim an unqualified term appearing in this list. The examiner will provide more precise terminology for the applicant to consider.

For example, if an application is filed for:

Class 3: Detergents

Detergents appear in classes 1, 3 and 5, and are classified according to purpose.

It is not clear which class an unqualified claim for detergents falls in without further information, and it should therefore be queried.

A suitable suggestion might be:

Class 3: Detergents for household cleaning purposes.

4.8  Adding a class or classes to an application

4.8.1

As indicated previously it is possible to add a class or classes to cover goods and/or services specified in an application but not in any way covered by the class(es) originally nominated.  This is a matter which should be raised in the first report. It is also possible to add a class or classes if the applicant has supplied, at a later stage of examination, further information on what was intended to be encompassed by general or generic terms such as detergents or accessories or information services or items identified in the NICE classification with an asterisk, appearing in the original specification.  A class or classes can only be added if the necessary fee has been paid. In all cases, once a class or classes have been added, and if they were not covered in the Examiner’s initial search, a further search must be done covering these additional classes and the classes associated with them.

The addition of a class or classes will not always be permitted, and the following criteria must be kept in mind:

• The widening of a specification to add goods or services not encompassed by the application as filed is generally not allowed after the particulars of an application have been published in terms of section 30. However section 65A amendments may result in an extension of the owner’s rights.
• Classes may only be added to correct an error in the classification of a specification, including when unqualified general or generic terms have been used and further information has been supplied on the applicant’s use or intended use of the trade mark. If an applicant has claimed specific goods and/or services which are properly classified in the class or classes specified, no extension to other classes can be considered.  Similarly, if an applicant has specifically limited their claim by the use of phrases such as “in this class” or “not falling in other classes”, no extension to other classes can be considered unless the claimed items clearly do not fall in the nominated class(es). Extensions to other classes in these circumstances could only be considered if the provisions of section 65A were applied.
• Fees must always be paid before any classes are added, and an additional search must always be done if the added class or classes were not covered by the original search.

4.8.2

The following examples are a guide to examination practice:

A class could not be added if an application was filed for any of:

Class 3 : Detergents for household purposes or detergents in this class or detergents not falling in other classes.

It would not be possible (after publication under section 30) to add a class or classes to cover the other classes in which detergents fall (classes 1 and 5). This is because the application is clearly made with the intention of covering only detergents for household use, and not those for medical purposes or for use in industrial or manufacturing processes, or is clearly made with the intention of covering only detergents classified in class 3, and not those in other classes. An additional class or classes would therefore widen the specification. Similarly, if an application was filed for detergents for household purposes without a class number the class would have to be entered as class 3, as it would not be possible to widen the specification to cover goods for other uses.

A class could be added if an application was filed for:

Class 3: Detergents for household use and for medical purposes.

The application could be extended to cover an additional class, because class 5 goods are specified and are intended to be covered by the application. The separation of the goods into the added class would not widen the specification. The Examiner should do a search based on classes 3 and 5. The Examiner should then inform the applicant in the first report that two classes are appropriate and ask whether both classes are required, in which case payment for the additional class is needed before the application can proceed. Alternatively, the applicant can delete one of the sets of goods. In both cases the applicant will need to consent to an appropriate amendment of the specification.

A class or classes could be added if an application was filed for:

Class 3: Detergents of all kinds or Detergents in all classes.

The application could be amended to include all of classes 1, 3 and 5 since the full range of goods has been claimed. The allocation of the goods to their proper classes would not widen the specification. The Examiner should do a search based on classes 1 and 3 and 5 (and associated classes). The Examiner should then inform the applicant in the first report that the claim covers two additional classes and ask whether these additional classes are required, in which case payment for the additional classes is needed before the application can proceed. The appropriate wording in each class would be detergents. Alternatively, the applicant can amend the claim to read detergents and continue solely in class 3, or transfer the amended claim to one or both of the other two classes and delete the original claim in class 3.

A class or classes could be added if an application was filed for:

Class 3: Detergents.

Without any qualification or intended purpose for their use being indicated, it will be assumed that protection is only required for detergents in class 3, and the scope of the application should not be queried in the first report, and an additional class or classes should not be suggested.

But if the applicant then submits that the goods to be covered actually fall in, say, class 5, or if evidence of use shows that this is the case, the error in classification can be corrected by transferring the application to class 5.

Alternatively, if the applicant submits that the goods to be covered actually fall in both classes 3 and 5, or if evidence of use shows that this is the case, the error in classification can be corrected by adding class 5 and retaining class 3.

Alternatively, if the applicant submits that the goods to be covered actually fall in all of classes 1, 3 and 5, or if evidence of use shows that this is the case, the error in classification can be corrected by adding classes 1 and 5 and retaining class 3.

4.8.3

Any change that occurs to the classes covered by an application must be entered on the trade mark database as soon as possible.

4.8.4

Care must be taken to ensure that amendments are not made if they would widen the scope of the goods and/or services covered by the application immediately prior to the amendment (an exception being amendments made under section 65A which may result in an extension of the applicant’s rights).  It should be noted in relation to this that a class heading provides a general indication of the goods or services within a class and does not encompass all the goods or services belonging in the class. An application that contains a specification comprising the class heading is considered only to cover the goods or services encompassed by the heading and will not necessarily, for example, cover parts and fittings, or accessories (see also paragraph 6.5). This also needs to be borne in mind if international priority claims need to be verified.

4.9  Transfer of goods and services where an application covers more than one class

4.9.1

If there are goods or services in a multi-class application which are incorrectly classified it is possible to transfer those goods or services to the appropriate class if this is also nominated on the application. For example if the application as filed claims:

Class 3:  Deodorants for personal use; room deodorants; perfumes.

Class 5:  Air freshening preparations.

Class 11: Air deodorising apparatus.

the room deodorants are wrongly classified in class 3 and need to be deleted from the class 3 specification. They could however be transferred to the class 5 specification which could be amended to read Air freshening preparations; room deodorants.

4.9.2

If there are insufficient classes nominated to allow transfer of all the mis-classified items in an application, it may be possible to transfer some goods or services and add classes to cover the remaining goods or services. If an application claims:

Class 3:  Deodorants for personal use; perfumes; room deodorants.

Class 5:  Air freshening preparations.

Class 11: Air deodorising apparatus; deodorising apparatus for personal use.

the room deodorants could be transferred to the class 5 specification, but deodorising apparatus for personal use falls in class 21 and this class is not nominated in the application. The Examiner should inform the applicant in the first report that the goods room deodorants may be transferred and that the applicant may make a request to add class 21 to the application for deodorising apparatus for personal use. The class can only be added once the extra fee has been paid, and a search for class 21 and classes associated with it must be done in the Examiners original search. Alternatively, the applicant may delete deodorising apparatus for personal use from the specification.

4.10  Amendment of a class incorrectly nominated in the specification

4.10.1

If the Examiner or the owner finds that an application has been filed in the wrong class it may be necessary to transfer it to another class. If the goods or services have been correctly and clearly stated on the application form but do not fall in the class as filed, amendment of the class number can be allowed. For example, a single class application filed for:

Class 9: Computer programming services.

clearly indicates a service, even though the application claims a goods class, and the claimed services should be transferred to class 42. In this case no adjustment to the fee which has been paid is needed. The Examiner’s initial search should be for class 42 and associated classes, and should not be limited to class 9 and associated classes.

If the application had been a multi-class application already claiming class 42, for example:

Class 9: Computer programming services

Class 42: Scientific and industrial research

then the transfer of the item from class 9 to the pre-existing class 42 would leave no items in class 9.  In this case the filing fee for class 9 will not be refunded.

4.10.2

If, however, an application was filed in class 36 for insurance services when the applicant in fact sold computers to insurance agents, a transfer to class 35 to cover computer retailing services would not be possible as the original claim for insurance services could not be interpreted as having included these other specific services, being retailing services. The amendment would not be allowed under section 65.

4.10.3

Requests to substitute one class for another need to be considered carefully since it may result in an extension of the owner’s rights.

4.11  Goods claimed in a services class, or services claimed in a goods class

Paragraphs 4.7 to 4.10 deal predominantly with the classification of goods in goods classes, and services in services classes. Classification issues can also arise however between these two groups of classes. Such issues will fall generally in one of two categories.

4.11.1

The first category covers instances when items clearly specified as goods or as services have been claimed in the wrong class group, for example, a claim for goods being computer software made in class 42. In such instances the incorrect classification is obvious, and the item will need to be deleted or transferred to class 9 under the guidelines given in paragraphs 4.7 to 4.10. The applicant should be informed of this option in the first report.

4.11.2

The second category is not as clear cut, and concerns issues which often arise after evidence showing actual use of the trade mark has been submitted.  This category covers claims such as children’s rides and games in class 28.  On the face of it this claim is valid, and should not be questioned in the first report.  Significantly however, the wording does not strictly specify that the claim is for goods or limits or qualifies the claim in any way.  That is, the claim is not along the lines of goods being children’s rides and games or children's rides and games in this class. In some instances it will become clear during the course of examination, including perhaps consideration of evidence of use of the trade mark, that the intended coverage was actually for services and not for goods. An example of such an instance would be for provision of children’s rides and games in class 41. In such instances the applicant should be allowed to transfer their application to the appropriate class and amend their specification to clarify their claim.  The guidelines given in paragraphs 4.7 to 4.10 will apply.