14.5. Principles of classification and finding the correct class for specific items

5.1  Classification tools

5.1.1

The first reference point for Examiners when considering the classification of particular goods and/or services should be IP Australia’s Trade Mark Classification Search (refer to Annex A5 of this Part). This tool allows users to search the Australian picklist, which includes all the NICE classification terms as well as  tens of thousands of additional terms from WIPO’s Madrid Goods & Services Manager. Individual entries should always be read in the context of the explanatory notes for each class contained in the NICE classification or in the Trade Mark Classification Search. 

5.1.2

Other classification resources are available to Examiners on-line, but to allow the best possible consistency in examination, the order of priority for classification must be:

• NICE (including the General Remarks section which offers guidance in classifying items not specifically listed in NICE).
• IP Australia guidance
• EUIPO's TM class search tool (which includes the UKPTO and USPTO databases).

5.1.3

Applicants are encouraged to use the terms listed in the NICE classification or in the published IP Australia picklist when nominating the goods and/or services covered by an application (reg 4.4(6)). However it is not always possible to do so. If the meaning of a term is unclear the applicant should be requested to provide further information to assist with correct classification. The classification for an unlisted item may be decided on the basis of the general principles underlying NICE as outlined in Annex A2. If the correct classification cannot be determined on this basis, examiners should consult their supervisor, who will decide whether the file should be referred to the Classification Subject Matter Experts for advice.

5.1.4

Care must be exercised in using the NICE classification list when a generic (broad or general) item appears in one class and a related but more specific term appears in another. In this case the specific term will override the generic entry. Generic NICE items are often marked with an asterisk in WIPO’s Madrid Goods and Services Manager to indicate that there are entries for that item in more than one class. For example the generic term aluminium foil is found in class 6 and is marked with an asterisk, and foils of metal for insulating as specific goods are classified in class 17. However the generic term headwear appears in NICE without an asterisk in class 25, even though headgear being protective helmets are listed in class 9. This latter example shows that a check should be made for a more specific term even where the generic term is not marked with an asterisk.

5.1.5

Classification using the principles set out in Annex A2 may not always be straight forward. Some goods cause particular difficulty since they are sometimes classified by purpose and sometimes by material. Complex or specialised services such as internet services can also present difficulties.

5.2  Classification of some specific goods and services

5.2.1

The following sub-paragraphs deal with some specific classifications which either commonly cause problems, or which can act as examples for some of the basic approaches used in the classification of goods and services. The items covered are:

• Consultancy services  

• Advisory and Information services 

• Electronic Games  

• Filters and Filtering Materials 

• Rental (or Hire or Leasing) services  

• Telecommunication services  

• Valves  

• Manufacturing of Goods 

• Club or association services  

• Internet services  

• Kits,  

• Distribution services  

• Business services 

• Virtual goods 

• Metaverse and virtual environments 

• Non-fungible Tokens (NFTs) 

• Blockchain 

5.2.2 Consultancy services

In general, consultancy services belong to the same class as the service or field in relation to which they are being supplied. The fact that the advice or information obtained through the service may be used for commercial or business purposes is not a relevant factor, nor is the manner in which the advice or information is supplied, for example by way of a computer database, over the Internet, or over the telephone.

All consultancy services relating directly to the management or administration of a commercial undertaking are in class 35. Management and administration refer to the way the business is organised or run. Thus, consultancy services for management or administration are in class 35 regardless of the specific activities of the business using the consultancy service. Technical consultancy services concerning the specific activities of a business may however fall in any of a number of classes, depending on the nature of the activities.

Consultancy services provided by a member of a profession and which fit the following description from the 12th edition of the Nice Classification are classified in class 42: services provided by persons in relation to the theoretical and practical aspects of complex fields of activities, for example, scientific laboratory services, engineering, computer programming, architectural services or interior design. 

Also in class 42 are consultancy services relating to activities analogous to the above activities but perhaps not covered by the concept of “professions” as defined above. Such services include most design services, and most research services (market research and business research are an exception and are classified in class 35). It is possible that the consultancy services of a single organisation could fall in more than one class; eg. a management consultant might advise on business organisation (class 35) and also on computer software (class 42).

It is possible in fact for “consultancy services” to fall in any of the service classes, as the following examples show:

Class 35 - Consultancy services in the field of business administration

Class 36 - Financial consultancy

Class 37 - Building consultancy

Class 38 - Consultancy services relating to telecommunications

Class 39 - Travel consultancy

Class 40 - Wine making consultancy

Class 41 - Training consultancy

Class 42 - Consultancy in the field of computer programming

Class 43 - Food preparation consultancy

Class 44 - Pharmaceutical consultancy

Class 45 - Physical security consultancy 

Despite the fact that it is possible for consultancy services to fall in any of the service classes, a simple claim for consultancy services in any of the service classes will be considered too vague. The applicant must identify the area in which they are consulting as it is the field in which they are supplying the consultancy services that will determine the correct class.

5.2.3 Advisory and information services

Similar to consultancy services, advisory and information services are classified according to the subject content of the advice or information being provided. For example business advisory services are in class 35, insurance advice is in class 36, transport information is in class 39, weather information is in class 42 and so on. This classification practice applies irrespective of how the advisory or information service is provided, for example by electronic means such as by way of a computer database, over the Internet or over the telephone. It should also be noted that the gathering together of information in the sense of market research or opinion polling, falls in class 35 regardless of subject matter.

Similar to consultancy services, a simple claim for advisory services or information services will be considered too vague. The applicant should be requested to provide more information about the specific area/s in which it provides advisory or information services, as it is the subject content of the advice or information being provided which will determine the correct classification of the services.

5.2.4 Electronic games

Electronic games apparatus will be classified in class 28.  Games software and programs will remain in class 9 as set out below.

The classification set out in NICE 11 is:

Class 9:  Programs (computer game-)

Class 28:  Games (apparatus for - )

This means, in general terms, that:

Class 9 includes computer games software and programs

Class 28 covers all computer and electronic gaming apparatus

Note:  Computer games programs and software, irrespective of the nature of the games themselves, are all classified in class 9.

5.2.5 Filters and filtering materials

Filters are usually finished articles and are normally classified according to their use, for example:

Filters being parts of engines or machines - class 7

Filters (photographic) - class 9

Filters for ultra violet rays for medical purposes - class 10

Filters being parts of water supply apparatus - class 11

Filters being parts of electric coffee machines - class 11

Filters (coffee) of paper - class 16

Filters (cigarette) - class 34

Filtering materials however are classified by material, for example:

Filtering materials (unprocessed plastics) - class 1

Filtering materials of paper - class 16

Filtering materials (semi-processed foams or films of plastic) - class 17

Filtering materials of textile materials - class 24

5.2.6 Rental (or hire or leasing) services

The General Remarks on page 3 of NICE, 11th edition, state the criterion to be applied where there is no specific alphabetical listing is:

“Rental services are in principle classified in the same classes as the services provided by means of the rented objects (eg, Rental of telephones, covered by Class 38).”

Other examples are rental of cars in class 39, rental of office machines and equipment in class 35 and rental of sporting equipment in class 41. Leasing services which are the financing of lease arrangements fall in class 36 because they are essentially financial services e.g. lease-purchase financing is classified in class 36.

A claim for "rental services" in any of the service classes will be considered too vague. The applicant will need to provide specific information about the items for which it is providing a rental service as this will be the determining factor in the correct classification of the rental services.

5.2.7

Telecommunication services

Class 38 in general only covers services directly relating to the means of telecommunication (e.g. land lines, satellite transmission facilities, rental of communications systems) and does not in general cover entertainment, information or advice services provided via telecommunications, such as games services provided on-line (class 41), financial information (class 36), and so on. Class 38 does include, however, information or advice or consultancy services about telecommunications.

5.2.8 Valves

Valves are classified either according to their use or according to the materials from which they are made, for example:

Class 6   - if made of common metal

Class 7   - if parts of machines

Class 9   - (Solenoid -)[electromagnetic switches]

Class 10 - if for feeding bottles or medical purposes

Class 11 - if level controlling valves in tanks parts of heating installations

Class 12 - if for vehicle tyres

Class 15 - if parts of musical instruments

Class 17 - if made of rubber or vulcanised fibre

Class 18 - if made of leather

Class 20 - if water pipe valves of plastics or materials in this class

5.2.9 Manufacturing of goods

With the exception of custom manufacturing of goods (that is, the manufacture of particular goods to a specific customer’s special requirements and specifications), which is a service falling in class 40, manufacturing of goods is not considered to be a service offered to others. This process is incidental to the creation of a product. Applicants should apply in the goods class appropriate to the products on which they are using or intend to use their trade mark.

5.2.10 Club or association services

Services provided by a club or association to its members are classified according to the nature of the service provided. For example, entertainment or education services provided by a club to its members will fall in class 41 and arranging of tours by a club for its members will fall in class 39.  A claim such as services in this class rendered by a club to its members would not specify the scope of the services sufficiently. At the same time the applicant would not be able to amend their claim to include services rendered by a club and falling in another class or other classes, because of the limiting phrase “in this class”. An application claiming services rendered by an association to its members would also need to have the services specified more precisely, but the claim could be transferred to another class, or other classes could be added to the application, to cover the services once they were specified.

5.2.11 Internet services (global computer network services or website services)

This is a rapidly expanding area, and the exact nature of the claimed Internet services can sometimes be difficult to determine. The question to be asked in classifying such services is this: is the application being made for Internet services as such, or is it simply being made for services offered over the Internet or in relation to the Internet?

• If the services are simply ones being offered over the Internet, then it is these services which need to be classified, as they are not an Internet service as such. For example Internet-based retailing services fall in class 35, Internet-based education services fall in class 41, Internet-based publication of texts (other than publicity texts) falls in class 41, Internet-based publication of publicity texts falls in class 35, and information services offered over the Internet fall in the class appropriate to the information being supplied (see paragraph 5.2.3).
• If the services are specialised Internet services as such, they will fall predominantly in classes 38 or 42. Class 38 covers access-related services such as Internet access provider services. Class 42 covers general computer, computer programming and computer software-related services such as creating and maintaining web sites for others or hosting web sites for others as well as search engine services.

5.2.12 Kits

Classification will vary according to the specific nature of the kit, and in particular whether it is the goods making up the kit or the purpose of the kit which is the most significant aspect. In general, kits will be classified in one of the following ways:

• According to the nature of the dominant goods brought together in the kit if that is clearly specified. Cosmetic kits for example are classified in class 3 with other cosmetic goods.
• According to the purpose of the goods making up the kit if the purpose is clear. Bleeder kits for testing brakes for example are classified in class 9 because the purpose of the kit is to act as testing apparatus.
• According to the product which will result if the kit, in use, is consumed in the production of a definite finished product. Craft kits for jewellery construction for example are classified in class 14.

Kits made up of items which individually fall in many classes, and which do not fall in one of the above categories, can present problems in classification particularly if it is the applicant’s intention to sell some of the components separately. When dealing with an application for such a kit it is first necessary to know what the kit comprises (if no indication has been given). The goods proper to the class in which the application has been made should then be itemised followed by a qualifying phrase such as "all for inclusion in kits" or "all for sale as part of a kit" or "all for sale in kit form". An applicant claiming “kits” or “kits in this class” should always be asked for further information about the nature of the kits.

​​​​​​​5.2.13 Distribution services​​​​​​​

Distribution services will fall either within class 35, 39 or 41 depending on their primary purpose or function.

The distribution services contained in class 35 involve disseminating promotional materials and other material to promote the sale of goods/services. In the context of class 39 distribution services represent any service that has the transport and movement of goods as its primary function. In the context of class 41 distribution services represent the process of making film, television and radio shows available for an audience. 

A simple claim for distribution services in any of these classes will be considered too vague. The applicant should be requested to provide more information about the specific purpose of their distribution services, for example:

Class 35: Distribution of goods for advertising purposes; distribution of advertising matter

Class 39: Distribution of goods (transportation)

Class 41: Film distribution

5.2.14 Business services

Broad claims for business services are too vague and should be queried, even when claimed in class 35. A claim for business services could cover a number of services across multiple classes. The field of interest, branch of activity, or specific purpose will determine the classification of these claims. If the field of interest or specific purpose is not provided, then the claim cannot be considered to provide a clear and accurate description.

For example, the following claim must be queried:

Class 35: Business services

Further information should be requested from the applicant because the specific field of interest or purpose of the services has not been indicated. While the services are related to business, some business-related services fall outside of class 35 such as business insurance services (class 36) and business training services (class 41).

An example of an acceptable claim in class 35 would be: business management services or business consultancy services. 

5.2.15 Virtual goods, metaverse, NFTs, and blockchain

Virtual goods

Virtual goods are digital objects used in online virtual environments. Virtual goods are correctly classified in class 9 because the goods to which they relate consist essentially of data. However, terms such as “virtual goods” or “downloadable goods” alone lack specificity and are not acceptable. Applications must specify the exact nature of the virtual goods (such as software, image files, music, or clothing).

For example:

Class 9: Downloadable virtual clothing

 

Services relating to virtual goods will fall into other classes depending on the nature of the service.

For example:

Class 35: Online retail services for downloadable virtual clothing

Metaverse and virtual environments

As the marketplace evolves, services are increasingly being offered virtually. Applicants use various wording to describe online virtual environments where users interact such as “metaverse,” “virtual environments,” and “web3”. While we will accept the terms “metaverse” and “web3” in specifications, the term “virtual environments” is preferred for its broad application to many contexts.

For example:

Class 41: Entertainment services provided in virtual environments
Class 42: Hosting virtual environments

Classification of services in a virtual environment must be carefully considered. IP Australia is taking an approach which considers the impact of the service in the real world.

In many cases, the purpose of the service and the real-world impact is the same whether provided virtually or in person. In these cases, the virtual service will be classified in the same way as its real-world counterpart. For example, education services are classified in Class 41 whether provided virtually or in person because the real-world impact is the same. Banking services, where real funds are sent and received, are classified in Class 36 because the real-world impact is the same. The manner in which the service is provided does not change the benefit received.

However, there are some situations where the impact in a virtual environment is different to the real world. For example, a virtual restaurant appearing in an online environment does not involve physical food because the avatar is consuming virtual food. Restaurant services provided in an online environment would be considered a Class 41 entertainment service, not a Class 43 restaurant service. Similarly, travel simulations in a virtual environment do not involve physical transportation and would be considered a Class 41 entertainment service, not a Class 39 transportation service.

NFTs

An NFT (non-fungible token) is a unique token that exists on a blockchain. It acts as a digital certificate used to record ownership of an item such as a digital artwork or collectible. An NFT is not considered a good or service but a means of certification.

A claim for “NFT” or “non-fungible token” on its own lacks specificity and is not acceptable. Applications must specify the exact nature of the goods being authenticated.

For example:

Class 9: Downloadable digital image files authenticated by non-fungible tokens [NFTs]
Class 9: Downloadable digital music files authenticated by non-fungible tokens [NFTs]

Services relating to NFTs must also be adequately specified.

For example:

Class 35: Retail services relating to downloadable digital image files authenticated by non-fungible tokens [NFTs]
Class 42: Providing online non-downloadable computer software for minting non-fungible tokens [NFTs]

Physical items can also be authenticated by NFTs where digital tokens are linked to physical assets and are used to demonstrate ownership of real-world goods such as art or fashion. Where an NFT authenticates physical goods, it will be classified in the appropriate goods class.

For example:

Class 25: Clothing authenticated by non-fungible tokens [NFTs]
 

Note: As “NFT” is an understood shorthand for “non-fungible token”, it may appear in specifications without expansion of the acronym.

Blockchain

A blockchain is a ledger or distributed database that records encrypted blocks of data. Blockchain technology has a wide variety of applications and is commonly used in the fields of cryptocurrency, finance, gaming, and digital authentication.

A claim for “blockchain” on its own lacks specificity and is not acceptable. For classification purposes, blockchain technology is a feature of goods or the means through which services are provided.

For example:

Class 9: Downloadable computer software for blockchain technology
Class 36: Electronic funds transfer provided via blockchain technology
Class 42: Computer programming of smart contracts on a blockchain