14.7. Interpretation of specifications

7.1 General Guidance

The interpretation of specifications of goods and services is a question of construction of that statement, and specifications will be strictly construed. This means that it will be the ordinary meaning conveyed by the wording of the claim itself rather than the applicant’s subjective intentions that determines the scope of a claim (for guidance, see Nikkken Wellness Pty Ltd v van Voorst [2003] FCA 816, [40], [44]; Daiquiri Rum Trade Mark [1969] RPC 600).

The terminology of claims is therefore important in determining the scope of a particular application or registration. When in doubt, dictionary definitions should be utilised to assist an examiner in interpreting the scope of a particular claim. Internet research may also be utilised to identify the meaning of terms which are not found in the dictionary, such as specialised trade terms. It is also permissible to give some regard to extrinsic materials such as the NICE Classification where there is ambiguity in the meaning of a claim (see Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490, [48]-[61], Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235, [74]). Each specification must however be read and interpreted on its individual merit.

7.2 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).

7.3 Limiting and Non-Limiting Words

The following guidance should provide some assistance in interpreting wording commonly found in specifications of goods/services that may or may not limit a claim. Please note that these are only guidelines, and the terms should always be interpreted in the context of the claim as a whole, which may affect the extent to which they limit the claim.

7.3.1 Wording that limits a claim:

These qualifying words specifically limit the claim of the subsequent item/s to ONLY those goods/services.

Examples:

• Being
• Comprising
• Consisting of
• Exclusively for
• Goods/Services in the nature of
• In relation to the afore-mentioned
• In relation to/relating to
• In the nature of
• Made from/made of
• Namely
• Solely
• Specifically

7.3.2 Wording that does not limit a claim

These qualifying words do not limit the claim of the subsequent item/s in any way.

A claim for computer software including computer game software is not limiting and will be taken to encompass ALL forms of computer software.

Examples:

• For example
• For instance
• Including
• Including in relation to
• Including, but not limited to
• Like
• Such as

7.3.3 Wording that may somewhat limits a claim by indicating a particular area of interest or specialisation.

These words do not specifically limit a claim in the same way as restrictive words like ‘being’ or ‘namely’ do. They do however indicate a field or area of interest related to those particular goods/services, which may place a practical limit on the scope of the claim. For instance:

Computer software featuring architecture software

Although the term featuring does not definitively limit the scope of the claim, it does impose a practical limitation on the scope as the software must possess that feature. An integral part of the software featuring architecture software would be to have the ability/functionality to design and draw. The term featuring in this case indicates that architecture software is a prominent attribute or aspect of the claimed software. Although this type of software may have other functionality or purposes, there will be practical limits to the scope of the claim. For example, it would be nothing to do with gaming. No software that can be used for architecture purposes can also be used for gaming.

When considering claims containing these words, the context will be vital to determine to what extent, if any, the term places a limit on the possible scope of the claim.

Examples:

• Containing
• Especially
• Featuring
• In particular/particularly
• In the field of
• Mainly
• Mostly
• Predominantly
• Primarily
• Principally