The classification addendum
Section last updated: May 2023.
The purpose of this Addendum is to provide more detailed guidance on how to find the correct class for specific items and notes on classification practice (including words or phrases that should not be used)
Abbreviations
Abbreviations should be used with caution. While the meaning of many abbreviations might be well known today, it is difficult to know how some of them may be interpreted in the future. However, providing an abbreviation only has one meaning in relation to the class of goods or services applied in, it may be allowed. Therefore, for example CD-ROMs and DVDs - are acceptable in Class 9, but where the abbreviation is a lesser known term it would have to be followed by the word or phrase abbreviated.
Accessories, Components, Parts and fittings
These terms are acceptable but they must relate to specific goods and cannot be accepted
Parts and fittings. Class 12
but allow:
Parts and fittings for motor vehicles. Class 12
Care should be taken in the use of “accessories”. For example, in Class 25, “suits and accessories therefore” is an acceptable specification as there are accessories (e.g. hats) that are in this class but goods such as “handbags” and “umbrellas”, which are also clothing accessories, are proper to Class 18.
Punctuation is important so 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, i.e. only to goods which would in a practical sense have parts and fittings.
Allow the following and similar:
Computers and parts and fittings therefore. Class 9
Computers and parts and fittings for the aforesaid goods. Class 9
Computers and parts and fittings for all the aforesaid goods. Class 9
Computers and parts and fittings all for the aforesaid goods. Class 9
It is clear in all the above examples that both the “parts” and “fittings” relate to the computers.
Allow the following and similar:
Computers and modems; parts and fittings therefore. Class 9
Computers and modems; parts and fittings for the aforesaid goods. Class 9
Computers and modems; parts and fittings for all the aforesaid goods. Class 9
Computers and modems; parts and fittings all for the aforesaid goods. Class 9
Again there is no ambiguity and the parts and fittings must relate to all the preceding goods.
In the following example there could be difficulty in interpreting what is meant to be covered and the punctuation should be queried:
Computers, modems and parts and fittings therefore. Class 9
The question arises are the “parts and fittings” intended only to cover the “modems”? In such instances edit to:
Computers and modems; parts and fittings therefore Class 9
Advisory services
See guide at Consultancy, advisory and information services
Amusement apparatus and electronic games
Following changes to the International Classification on 1st January 2012, these goods are now classified as:
Class 28 Electronic games apparatus; electronic games and amusement apparatus adapted for use with television receivers or other external display screens or monitors.
Amusement machines, automatic and coin operated
Class 28 covers coin operated games apparatus and amusement rides as well as fruit machines, one-armed bandits and other arcade games such as pinball machines. Please note: All computer games programs, software and cartridges for any type of games apparatus are in Class 9 (even if the equipment is in Class 28).
And/or and use of oblique strokes
Oblique strokes may be used in specifications and are normally put in the phrase “and/ or”. It is acceptable in the following:
“Chemical/biochemical products” or “Chemical and/or biochemical products”. It may also be used in the following ways:
“Chemicals for use in industry/science” or “Chemicals for use in industry and/or science” and “Import/export agency services”
And the like, ancillary and related
These terms are too vague as descriptions as goods or services as in:
Class 25 Shirts and tee shirts and the like clothing
or:
Class 36 Banking, insurance and related financial services.
In all cases the goods or services should be specified.
However, where the goods or services are clearly stated, the terms may be accepted as a secondary qualifier, for example
Class 25 Shirts, tee shirts and polo shirts, for use in games and the like leisure activities
or:
Class 41 Training of personnel in data processing and the like office skills.
In both of these examples the goods or services are clearly defined.
Apparatus, instruments and equipment
No objection will be raised against the use of these terms where they are suitably qualified, for example
“Mining apparatus” or “Mining equipment”.
Association services or services provided by an association to its members
Too vague and broad a description. The type of service being provided needs to be specified,
Class 35 Business administration
Class 45 Legal services
Babies nappies, napkins and diapers
These goods were formally classified under International class 16, but from 1st January 2012 are proper to Class 5.
Badges
Badges are classified differently if for wear or not for wear
Badges for wear, of precious metal Class 14
Badges for wear, not of precious metal Class 26
Badges, not for wear, are classified by material
Common metal Class 6
Leather Class 18
Plastics Class 20
Textile materials Class 24
Beverages
Beverages can be found in a number of classes, the classification being dependent on their content or purpose, for example:
Class 5 Dietetic beverages adapted for medical purposes.
This class includes drinks specifically prepared to treat a medical disorder. Also medicinal wines and other medicinal drinks (including medicinal tea) and beers for diabetics fall in this class.
Calorie reduced soft drinks such as lemonade or carbonated cola beverages are generally proper to Class 32, although they could be proper to Class 5, e.g. for diabetics.
Class 29 Milk beverages and milk shakes. Beverages containing milk when the milk predominates. Yoghurt beverages.
Class 30 Coffee, tea, cocoa, and beverages based on these products, including chocolate drinks.
Class 31 Beverages specially made for animals, for example, cat milk.
Class 32 Beers, mineral and aerated waters, non-alcoholic carbonated beverages such as lemonade, fruit drinks and fruit juices.
This class includes all beers (including stout, porter, lager etc) regardless of their alcoholic strength; shandy; drinking water and tonic water; soft drinks such as fruit juices, lemonade or carbonated cola beverages (including low calorie versions of these drinks); isotonic drinks; low alcohol beverages which contain no more than 1.2% alcohol by volume (these include very low alcohol cider and wine or any other very low alcohol drink which would ordinarily be regarded as an alcoholic beverage). Non- alcoholic or de-alcoholised wines, cider or perry also fall in Class 32.
Note that mineral water for medical purposes is proper to Class 5.
Class 33 Wines, spirits, liqueurs, cider and perry.
This class includes drinks with an alcohol content which exceeds 1.2% by volume with the exception of beers which are proper to Class 32. Also under Class 33 are drinks which are alcoholic versions of soft drinks (more than 1.2% by volume) e.g. alcoholic lemonade. Very low alcohol wines, cider or perry (1.2% by volume or less) are proper to Class 32.
Blinds and curtains
In classification terms these are viewed as distinct products. Blinds may be used on windows either internally or externally and their classification follows a different path depending on the purpose of the product and its material composition. Curtains are usually only used indoors and are classified according to their material. The classification of these items, based on the following entries in the 10th edition of the International Classification, is shown below.
Blinds: International Classification:
| Class | Entry | Example of goods |
| 6 | Outdoor blinds of metal | An external metal blind as part of a building for security purposes |
| 19 | Blinds [outdoor] not of metal and not of textile | A wooden version |
| 20 | Blinds (slatted indoor) | Venetian and vertical window blinds |
| 20 | Indoor window blinds | Blinds of any material for furnishing a [shades] [furniture] window |
As a consequence of these entries, the following classification applies:
Outdoor window blinds:
Class 6 Outdoor blinds of metal
Class 19 Outdoor blinds, not of metal and not of textile
Class 22 Outdoor blinds of textile
Indoor window blinds:
Class 20 Indoor blinds (regardless of material) Curtains: International Classification:
Class 17 Curtains of asbestos (Safety-)
Class 20 Curtains (Bamboo)
Class 20 Curtains (Bead-) for decoration
Class 24 Curtains of textile or plastic
The classification is more straightforward here since “curtains” do not normally become parts of building structures (or if they do they are not really part of the fabric of a building). The vast majority of curtains will fall under Class 24 since most domestic curtains are of textiles or plastic (woven to simulate textiles).
Book club services
Normally applied for in Class 41, this is too vague. It could mean either a library type service e.g. lending and loaning of books - Class 41 but is usually intended to cover retail services for the supply of books to club members (and it therefore proper to Class 35).
Cases
Cases adapted to the product they are intended to contain, are in principle, classified in the same class as the product. Therefore, “spectacle cases” are in Class 9, “rifle cases” Class 13, “violin cases” Class 15 and cigarette cases of precious metal” are in Class 34.
Charitable services
Charitable services are classified in the same class as to the service which is being offered under that heading e.g.
Charitable collections Class 36
Charitable fund raising Class 36
Charitable services, namely education and training Class 41
Charitable services, namely providing food and drink catering Class 43
Charitable services, namely providing temporary accommodation Class 43
Charitable services, namely providing medical services Class 44
Charitable services, namely mentoring [personal or spiritual] Class 45
Cheque book holders
Although these can be of leather, they fall under Class 16 (regardless of material) since they are specially adapted to hold cheque books. Wallets or cases incorporating cheque book holders are proper to Class 18.
Cleaning machines, apparatus or installations and polishing machines
The International Classification classifies these goods in three classes - 7, 9 and 21:
Acetylene cleaning apparatus Class 7
Air suction machines Class 7
Cleaning machines Class 7
Electric carpet shampooing machines and apparatus Class 7
Polishing machines and apparatus [electric] Class 7
Dust removing installations for cleaning purposes Class 7
Vacuum cleaners Class 7
Cleaning apparatus for sound recording discs or phonograph records Class 9
Non-electric polishing apparatus and machines for household purposes Class 21
Carpet sweepers Class 21
Cloud computing services
With the development in computer services in the last few years the term Cloud computing is seen as the delivery of computing as a service rather than a product. With this in mind the term is acceptable in class 42
Components
See guide at accessories, components and parts and fittings
Computer and video gaming apparatus
These goods were formally classified under International class 9, but from 1 January 2012 are proper to Class 28.
Construction services
Building construction is proper to Class 37 and is intended to cover building of structures, roads, bridges and similar civil engineering projects. Construction of manufactured products for example
Custom manufacture of cars are proper to Class 40.
Shipbuilding, however, is proper to Class 37.
Consultancy, advisory and information services
In general, consultancy services will belong to the same class as the service or field on which they are being consulted e.g. installation of double glazing is in Class 37, therefore consultancy on double glazing installation is proper to Class 37; chemical analysis falls in Class 42, therefore the services of consultant chemist are also proper to that class. The fact that the advice or information obtained through the service may be used for business purposes is not a relevant factor when determining the classification.
All services relating to the business 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 are in Class 35 regardless of the nature of the business using the consultancy service, whereas consultancy services for technical matters concerning the nature of a business may fall into a number of classes e.g. a business in the food industry might want to: (a) reorganise its sales and marketing operation and (b) improve its bakery products. Consultancy services on (a) would be in Class 35 and on (b) in Class 42 (consultancy services on food chemistry). It is probable that the consultancy services of a single organisation could fall in more than one class, e.g. a management consultant may advise on business organisation and on complementary computer software.
Therefore as a general guide, “consultancy services” may fall in all the service classes and the following examples illustrate the practice:
Consultancy services in the field of business administration Class 35
Financial consultations Class 36
Building consultations Class 37
Consultancy services relating to telecommunications Class 38
Travel consultants Class 39
Dress making consultancy Class 40
Training consultation services Class 41
Computer programming consultancy Class 42
Holiday accommodation consultants Class 43
Beauty and medical consultancy Class 44
Security consultancy Class 45
Note that from 1 January 2002, the distinction between “professional and non professional consultancy” which formerly played a role in the classification of these services has been removed and therefore the criterion used to determine the classification is simply on the basis of subject matter (as for advisory and information services). For example:
Consultancy relating to business management Class 35
Consultancy relating to banking Class 36
Consultancy relating to construction Class 37
Consultancy relating to telecommunications Class 38
Consultancy relating to computer services Class 42
Consultancy services relating to security Class 45
Advisory and information services are similarly classified according to the subject content of the advice or information being provided e.g., business advisory services are in Class 35, insurance advice in Class 36, transport information falls in Class 39, weather information in Class 42 etc. This classification practice applies even if the consultancy, advice or information is provided by electronic means, e.g. by way of a computer database or over the telephone. It should also be noted that the compilation of statistical data, market research and opinion polling falls in Class 35.
Given that consultancy, advisory and information services may fall in all of the service classes, it is not necessary to state the subject matter of these services. For example, in Class 45 a specification reading “consultancy services” is acceptable without further qualification since the consultancy is restricted to fields covered by Class 45.
However, it is advisable to specify the type of consultation, advisory or information service since such a specification is unlikely to be accepted by WIPO (in the event that an application for an International Registration is subsequently made). The WIPO normally requires the type of consultancy, advice or information to be specified.
Curtains and blinds
See guide at Blinds and curtains
Custom manufacture
The term “Custom manufacture” is acceptable in Class 40 and is interpreted as meaning either the one off manufacture of a prototype, or assembly of items on behalf of others.
Design services
Design services are proper to Class 42 apart from landscape design, floral design, turf design and planning [Design] of gardens which are all proper to Class 44.
Dietary supplements for humans and animals
These covers dietary supplements intended to supplement a normal diet or to have health benefits and are proper to class 5.
Doors
Doors are classified as follows:
Doors of metal (other than for furniture) Class 6
Doors not of metal (other than for furniture) Class 19
Doors for vehicles Class 12
Doors for furniture Class 20
Drinking straws
These goods were formally classified under International class 20, but from 1 January 2012 are proper to Class 21.
Drinks
See guide at Beverages
Electric door openers and closers
These goods were formally classified under International class 9, but from 1 January 2012 are now proper to Class 7.
Electric flat irons
These goods were formally classified under International class 9, but from 1 January 2012 are now proper to Class 8.
Electric welding and soldering apparatus
These goods were formally classified under International class 9, but from 1 January 2012 are now proper to Class 7.
Electronic data storage
These services were formally classified under International class 35, but from 1 January 2013 are now proper to Class 42.
Electronic games
See guide at Amusement apparatus and electronic games
Filters and filtering materials
Filters are normally classified according to use, e.g.:
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 being parts of non-electric coffee machines Class 21
Filters (coffee) of paper Class 16
Filters (cigarette) Class 34
Filtering materials are classified by material, for example:
Chemical preparations, mineral substances, unprocessed plastics Class 1
of metal Class 6 of paper Class 16
of semi-finished plastics Class 17
of textiles Class 24
Floats for bathing and swimming
These goods were formally classified under international class 9 but from 1 January 2012 are now proper to Class 28.
Franchising services
Services rendered in the framework of franchising are in the same classes as the particular services being provided by the franchisor e.g;
Business consultancy services relating to franchising Class 35
Financial services relating to franchising Class 36
Legal services relating to franchising Class 45
Fuel dispensing pumps for service stations and self regulating fuel pumps
These goods were formally classified under international class 9 but from 1 January 2012 are now proper to Class 7.
Goods
This term will be accepted in specifications when used in conjunction with a description that adequately describes the type of goods, for example:
Goods for the care of the nails Class 3
Metal goods for use in building Class 6
Optical goods Class 9
Textile goods for bathroom use Class 24
Fancy goods [embroidery] Class 26
However, in line with the judgment of 19 June 2012, IP Translator, insufficient clarity with regards to ‘goods’ will not be accepted. It must be clear what the goods are; reference to the material of which the goods are made does not provide sufficient clarification as to what goods are intended to be covered. The following examples demonstrate unacceptable references to goods:-
Class 14 Goods in precious metals or coated therewith Class 16 Goods made from paper and cardboard Class 18 Goods made from leather and imitations of leather Class 20 Goods made from wood, cork, reed and plastics
Hair curlers (electric)
These goods were formally classified under International Class 9, but from 1 January 2012 are proper to Class 26.
Hire
See guide at Rental.
Including, for example, namely, as well as, in particular, specifically i.e.
While not desirable in specifications since it encourages tautology, such wording should usually not be changed. Such terms are not allowable in Class 35 (with the exception of “namely” see below) for specifications covering retail services as they do not create the legal certainty that is required. However, in other class the terms may be allowed. For example we would allow:
Biocides including insecticides and pesticides Paper articles of stationery in particular envelopes Dairy products namely cheese and butter
Note that specifications including “namely” should be interpreted as only covering the named Goods, that is, the specification is limited to those goods. Thus, in the above “dairy products namely cheese and butter” would only be interpreted as meaning “cheese and butter” and not “dairy products” at large. This is consistent with the definitions provided in Collins English Dictionary which states “namely” to mean “that is to say” and the Cambridge International Dictionary of English which states “which is or are”.
Information services
See guide at Consultancy, advisory and information services
Internet services, on-line services and associated goods
The activities provided by on-line and Internet suppliers are varied and wide ranging and the classification can include all of the service classes. For example, the UK along with the US, EUIPO and WIPO classify information services according to their subject matter. Thus, business information falls in Class 35, insurance information in Class 36, travel information in Class 39 and so on. This classification applies regardless of whether the information is provided face-to-face, over the telephone, on-line from a database or from the Internet. The following guidance sets out what is accepted.
Note that the terms “multi-media services, Internet services and on-line services” are too vague and should be clarified.
Classification: Acceptable identifications of goods and services and explanatory notes:
Class 9:
Computer software downloaded from the internet
Computer software supplied from the internet
Electronic publications [downloadable] provided on-line from computer databases or the internet
Computer software and telecommunications apparatus (including modems) to enable connection to computer databases and the Internet
Computer software to enable searching of data
Digital music [downloadable] provided from the internet Telephone ring tones [downloadable] provided from the internet
Explanatory note:
This class includes the provision of computer software by whatever means (e.g. through retail sale, mail order or downloaded from the Internet to a computer); any apparatus which allows electronic or telecommunication connection to the Internet or computer databases. Also covered by Class 9 are publications in electronic format [downloadable]. Many publications which are sold in printed matter form are also available on the Internet (e.g. The Times).
They may be browsed or supplied to the user. If merely viewed then a service under Class 41 is provided but if downloaded from the Internet to a computer, Class 9 is appropriate (by analogy with CD-ROMs).
Class 35:
Advertising information and business information; all provided on-line from a computer database or the Internet; compilation of advertisements for use as web pages on the Internet
Compilation of directories for publishing on the Internet Provision of space on web sites for advertising goods and services Auctioneering provided on the Internet Business administration services for the processing of sales made on the Internet
The bringing together, for the benefit of others, of a variety of [indicate goods or types of goods], enabling customers to conveniently view and purchase those goods.
Electronic shopping retail services connected with [indicate goods or types of goods]
Explanatory note:
Although Class 35 includes the advertising and promotion of goods and services, when products are sold on the Internet or through other electronic means, unless a “bringing together service” is provided, the classification is determined by the nature of products which are purchased. The means by which they are sold are irrelevant. For instance, selling ones own branded clothing from a web site may involve the advertising of these products but in order to ensure that proper protection is given to the mark, an applicant will need to include Class 25 to cover the goods. Similarly, selling an airline ticket on the web could involve promotional activities under Class 35 but these services are peripheral to travel arranging under Class 39.
Applications in this class sometimes include claims to e-commerce, home shopping, TV shopping, on-line shopping, Internet shopping malls, e-tailing, digital commerce etc, but none of these vague terms are acceptable as service descriptions in their own right (but may be allowed when further qualified by a specific service, e.g. “advertising to promote e- commerce”). Such descriptions are essentially variants of retail services which are carried out by electronic means.
Class 36:
Financial and insurance information, provided on-line from a computer database or the Internet
Home banking Internet banking
Class 37:
Repair, maintenance and installation information, provided on-line from a computer database or the internet Installation and repair of telecommunication apparatus Installation and repair of computer hardware
Explanatory note:
The service of “installation and maintenance of computer software” is proper to class 42.
Class 38:
Telecommunication of information (including web pages), computer programs and any other data;
Electronic mail services
Providing access to computer databases
Providing user access to the internet [service providers]
Providing telecommunications connections to the internet or databases
Providing access to digital music web sites on the internet Delivery of digital music by telecommunications
Rental (or leasing*) of access time to computer databases
- note that WIPO recommends that the term “leasing” should not be used on applications for International Registrations other than when used in relation to financial leasing services in Class 36.
Explanatory note:
Class 38 covers the telecommunication infrastructure for transmitting and receiving information but not the information itself (unless that information is about telecommunications). Additionally, the core activities of Internet Service Providers (ISPs) are included in this class. Note that if a specification is filed as “Internet services” it will be edited to:
Providing access to the internet; providing telecommunications connections to the internet or databases.
The practice in force until 30 June 1999 was to classify “providing access to the Internet” under Classes 38 and 42, the determining factor being whether the applicant is primarily a telecommunications business. Given that many Internet Service Providers (ISPs) may also provide telecommunications services directly to customers (or at least form part of a telecommunications link) the distinction that was originally drawn had become somewhat blurred and artificial. Therefore, the following identifications are included in the International Classification:
Class 38: Providing telecommunications connections to a global computer network Class 38: Providing user access to a global computer network [service providers]
This in effect puts under class 38 all access services provided by ISPs, whether they are able to provide telecommunications directly or merely provide a link in the access chain. Although the term “Internet” is not used in the above (because it is not accepted in specifications by some national trade mark offices) its use in specifications in the UK will continue to be allowed.
Class 39:
Airline booking services provided on the Internet
Arranging travel and information therefore, all provided on-line from a computer database or the internet
Class 40:
Material treatment information, provided on-line from a computer database or the internet.
Photographic printing services provided on the Internet
Class 41:
Entertainment information and education information, all provided on-line from a computer database or the internet
Electronic games services provided by means of the internet Providing on-line electronic publications [not downloadable] Publication of electronic books and journals on-line Providing digital music [not downloadable] from the internet
Explanatory note:
This class includes providing publications on the Internet which may be browsed (by analogy with “Library services”).
Class 42:
Computer rental; design, drawing and commissioned writing, all for the compilation of web pages on the internet
Creating and maintaining web sites for others Hosting the web sites of others
Installation and maintenance of computer software Operating search engines
Providing search engines for the Internet
Class 43:
Holiday accommodation information provided on-line from a computer database or the internet
Class 44:
Medical information provided on-line from a computer database or the internet
Class 45:
Security information provided on-line from a computer database or the internet
Legal information provided on-line from a computer database or the internal compilation, creation and maintenance of a register of domain names
Kits, sets and outfits
It is unlikely that all items included in a kit would fall in one class but it is recognised that it is too onerous to expect an applicant to enumerate the contents of a particular kit, set or outfit. “Kits” and “Outfits” appear in the International Classification, for example, as in the following:
Cosmetic kits Class 3
Inner tube repair outfits Class 12
The criteria used for this classification is unclear and inconsistent. Whereas “cosmetic kits” would appear to be proper to Class 3 on the basis that their predominant contents are proper to the class, “inner tube repair outfits” seem to be classified under Class 12 because of their end function.
Therefore, in order to avoid uncertainty in the classification of kits and outfits, the following practice is applied in the UK. When classifying an application for a kit it is first necessary to know what the kit is for, or alternatively, what it is going to be used to make or construct. If the end purpose does not fall neatly into one category, the classification may be determined by the class in which the principal products contained in the kit or outfit fall. For example “diagnostic kits” that are for medical purposes could fall in either Classes 5 or 10 since both classes contain goods used for these purposes. The following examples demonstrate the above:
Cholesterol test kits Class 5 or 10 (medical goods fall in two classes and therefore contents could be proper to either class)
Filled first aid kits Class 5
Hands free kits for phones Class 9
Brake cylinder repair kits (for repairing a vehicle part that is in Class 12) Class 12
Furniture repair kit Class 20
Rug making kit Class 27
Snooker cue repair kits Class 28
Kits [sold complete] for the construction of scale models Class 28
Toy construction kits Class 28
Toy model kits Class 28
Beer making kits Class 32
Wine making kits Class 33
Manicure and pedicure sets Class 8
Leasing
See guide at Rental
Lottery tickets and scratch cards
Lottery services, i.e. the organising and conducting of a lottery, fall under Class 41. Lottery tickets (as printed matter) are proper to Class 16 whereas printed lottery scratch cards, which involve playing a game, are in Class 28.
Mail order
See guide at Retail Services.
Manuals
Sometimes applicants wish to reflect that the goods come with a manual, e.g.: Computers and user manuals sold as a unit Class 9
This is an acceptable specification if the manuals are, e.g. a CD or downloadable from the internet. However, if the manuals are in the form of printed matter, no benefit is gained by specifying them in a Class 9 statement of goods.
Media
The “International Classification of Goods and Services” includes this term in certain instances, e.g. “Media for bacteriological culture”, “magnetic data media”, and “optical data media”. Therefore the term “media” may be used if qualified as being of a particular type, or as being for specific purpose, e.g. “magnetic recording media” or “media for the recordal of computer programs”.
N B: The term “media” alone is not to be accepted and must be further qualified.
Metaverse
The metaverse is a form of digital reality, where people can access virtual worlds and interact with others. There is no reason, in principle, why a service capable of being delivered by virtual means, such as video-conferencing, cannot be delivered inside the metaverse. For example, a training service could be provided through, attended, and delivered inside the metaverse. As such, IPO will accept services provided through the metaverse in the same class as more traditional forms of delivery, with examples of acceptable terms being:
-
education and training services provided via the metaverse [class 41]
-
conducting interactive auctions via the metaverse [class 35]
It may not be possible to take the same approach for all “metaverse” services. This is because the manifestation of that service in the metaverse may not fall in the same class as the traditional form of delivery. For example, whilst it may be possible to order food and drink inside the metaverse for delivery or consumption in the physical world, a metaverse avatar “consuming” food and drink within the metaverse would not constitute a class 43 service. Where provision via the metaverse is specifically mentioned, but where it is not immediately apparent that the service sought can be provided inside the metaverse, clarification will be sought by the examiner.
Services that fall foul of the above paragraph may in fact be covered by a more general category of services, in that what is actually being provided is the access to a virtual world or the metaverse for the purpose of entertainment. As such, the following type of terminology may be appropriate:
- entertainment services, namely, provision of a virtual reality or metaverse based simulation gaming service
Mobile phone cases, fascias and holders
Mobile phone cases are commonly incorrectly classified under Class 18. In the general remarks in the International Classification it states:
“cases adapted to the product they are intended to contain are in principle classified in the same class as the product”
Therefore cases for mobile phones are classified under Class 9 along with mobile phones. Similarly mobile phone fascias and holders are also in Class 9.
Networks
This term is generally used in Class 9, particularly in the field of computing and is acceptable when qualified, as in the following examples:
Computer networks
Communications networks
Telecommunications networks
Computer networking installations
The term may be used for other descriptions and examiners should exercise caution before using the term in a specification.
NFTs
NFTs were born out of the cryptocurrency networks. They serve as unique and unalterable digital authenticity certificates of ownership for virtual or physical assets such as art, collectibles and gaming. The Cambridge Dictionary defines an NFT as:
a unique unit of data (the only one existing of its type) that links to a particular piece of digital art, music, video etc. and that can be bought and sold.
As a token of data, the NFT consists of an entry on a blockchain. However, it is inextricably linked to the asset (normally a digital asset) to which it relates. The NFT is used, primarily, to represent the ownership of that asset, albeit not necessarily the ownership of any underlying IP such as copyright. For example, a unique piece of digital artwork or an audio file may be “minted” as an NFT, enabling the ownership of that digital asset to be proven and managed via the relevant entry on the blockchain.
Given the above, NFTs will not be accepted as a classification term alone. Without an indication of the asset to which the NFT relates, the term is inherently vague. However, IPO will accept the following type of terminology in class 9:
-
digital art authenticated by non-fungible tokens [NFTs]
-
downloadable graphics authenticated by non-fungible tokens [NFTs]
-
downloadable software, namely, [list the type of goods], authenticated by non-fungible tokens [NFTs]
-
digital audio files authenticated by non-fungible tokens
-
downloadable digital files authenticated by non-fungible tokens [NFTs]
The above guidance is in line with the 12th Edition of the Nice Classification which includes in class 9 “Downloadable digital files authenticated by non-fungible tokens [NFTs]”.
Whilst NFTs relate primarily to digital assets, it is feasible that NFTs can be used to authenticate anything, including physical goods. In light of this, physical goods clearly defined as being authenticated by NFTs will also be accepted in the appropriate goods class, for example:
-
artwork, authenticated by non-fungible tokens [NFTs] [Class 16]
-
handbags, authenticated by non-fungible tokens [NFTs] [Class 18]
-
training shoes, authenticated by non-fungible tokens [NFTs] [Class 25]
NFTs can be retailed and/or provided via online marketplaces, in the same way as other goods and services. In line with that practice, IPO will accept the following terminology in class 35:
-
retail services connected with the sale of [e.g. virtual clothing, digital art, audio files] authenticated by non-fungible tokens
-
provision of online marketplaces for buyers and sellers of goods and services which are authenticated by non-fungible tokens
In relation to certain services for example, it may be possible to link membership of a club or entry to an event to an NFT. However the service would fall within Class 41 as an entertainment service.
Other uses of NFTs will be considered on a case-by-case basis.
On-line services and associated goods
See guide at Internet services, on-line services and associated goods.
Outfits
See guide at Kits, sets and outfits.
Parts and fittings
See guide at Accessories, Components, parts and fittings.
Peripherals
This is too vague a description to be accepted without further qualification. It may be accepted in Class 9 as “Computer peripherals”.
Personal and social services rendered by others to meet the needs of individuals
This is part of the class heading of class 45 and attracts an objection under Rule 8(2) because it is too vague and/or broad in scope.
It only covers those personal and social services which are not included in any of the other service classes so cannot include, e.g.:
Class 36 Personal insurance such as life assurance
Class 41 Entertainment and education including personal tuition.
Class 43 Food and drink catering
Class 44 Medical and beauty services
Playing cards
These goods were formally classified under class 16 but from 1st January 2002 are proper to Class 28.
Polishing machines
See guide at Cleaning machines, apparatus or installations
Precious metal goods
Caution needs to be applied when classifying goods made from precious metals. With effect from 1 January 2007, not all goods made from precious metals are proper to class 14.
Although the latter includes jewellery, precious stones, horological and chronometric instruments, the following goods, which are classified according to their function or purpose, fall into other classes:
Cutlery of precious metals Class 8
Pen nibs of gold Class 16
Teapots of precious metal Class 21
Candlesticks of precious metal Class 21
Containers of precious metal Class 21
Gold and silver embroidery Class 26
Cigarette and cigar boxes made of precious metals Class 34
Principally - in relation to goods classified by material
When goods, which are normally classified by material, consist of more than one material, it is for the applicant to determine the principal material of which the goods are made.
The words “all made wholly or principally of” (e.g. common metal) are usually used for such qualifications.
Now that goods and services are limited by the class designated on the application form there is no need to qualify items using this type of wording. For instance, “Anchors” can only be in class 6 if they are wholly or principally of common metal. However, there is no need to amend an application made for:
Class 6 Anchors
since the only cover provided will be those anchors wholly or principally of common metal. However, if applicants wish to clarify their specifications by using such limitations this should be allowed. In the judgement given in the VAC-U-FLEX case (reported in Fleet Street Reports No.5 1965 it was decided that any decision on the principal constituent material of any item cannot be decided on one factor alone. A mark registered for “flexible tubing wholly or principally of metal” had been used only for plastic tubing reinforced with metal wire. The metal comprised 56% of the total weight of the tubing. The mark was expunged for non-use, the Assistant Registrar saying that the area and volume of the plastic as well as its weight must be considered in answering the question of whether the tubing was “principally of metal”.
Protective clothing and padding
Clothing for normal wear is proper to class 25 and would include items often referred to as “protective” such as “rain suits/hats”, “overalls” and “leathers for wear by motorcyclists”.
Certain specialised clothing including footwear and headgear can be proper to class 9. These items serve to protect the wearer from injury due to impact in accidents, or where there is some known potential for injury such as contact with chemicals, radiation, fire, environmental or atmospheric hazards. Thus, protective headgear such as hardhats worn by workers are proper to class 9. Helmets such as those worn by security guards, horse riders, motorcyclists, American football and cricket etc. are very similar, being protection against accident or injury and are also proper to class 9.
Pads to protect the wearer from injury will in most instances be proper to class 9 although can be proper to other classes. Padding specifically for wear whilst participating in sports such as “cricket pads” or “shin guards”, or pads that are a part of clothing worn whilst participating in sports will be proper to class 28. “Knee pads” and “elbow pads” that can be worn by workers, and also in a range of other activities such as “skateboarding”, “climbing” or “cycling” will be proper to class 9 as they are not adapted for any particular purpose.
Supports worn on limb joints etc are often used in sporting activities. The same, or very similar items are also used for medical purposes. As these “supports” are not suitable (adapted) only for use in sporting activities they are considered to be proper to class 10.
Note that “jock straps” (men’s athletic supporters) are proper to class 28.
Rental services
Rental or hire services are classified, in principle, in the same class as the services provided, for example-
Rental of cars falls in Class 39,
Rental of telephones in Class 38,
Rental of vending machines in Class 35, and so on.
Note that financial leasing falls in Class 36 i.e. where the customer does not own the goods until the final payment (as this is essentially a financial service).
NB: WIPO will only accept the term “leasing” in Class 36.
Further examples of correct classification of rental services are:
Office machine rental Class 35
Rental of safes Class 36
Rental of drills Class 37
Rental of ironing machines Class 37
Rental of lifting apparatus Class 37
Rental of diving suits Class 39
Rental of garages Class 39
Rental of generators Class 40
Rental of boilers Class 40
Rental of audio equipment Class 41
Rental of computer software Class 42
Rental of furniture Class 43
Rental of linen Class 43
Rental of plants Class 44
Rental of clothing Class 45
Retail, wholesale and shopping centre services
For full guidance on this practice, see 3.12 in the classification practice manual
Acceptable terms
The bringing together, for the benefit of others, of a variety of [indicate goods or types of goods], enabling customers to conveniently view and purchase those goods;
The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase [indicate goods or types of goods];
Retail services connected with [indicate goods or types of goods];
Retail services connected with the sale of [indicate goods or types of goods]; Retail store services in the field of [indicate goods or types of goods];
Department store retail services connected with [indicate goods or types of goods]
Shop retail services connected with [indicate goods or types of goods];
Mail order retail services connected with [indicate goods or types of goods]; Electronic shopping retail services connected with [indicate goods or types of goods]; Retail clothing shop services;
Wholesale services connected with the sale of [indicate goods or types of goods]
The bringing together for the benefit of others, of a variety of retail outlets, entertainment, restaurant and [other clearly defined related services], enabling customers to conveniently view and purchase goods and make use of and purchase such services in a shopping centre or mall.
The bringing together for the benefit of others, via the internet, of a variety of retailers and [other clearly defined related services] through a virtual shopping mall, enabling customers to conveniently view and purchase goods and make use of and purchase such services by means of telecommunications.
Scratch cards
See guide at Lottery tickets and scratch cards
Services relating to……
Specifications such as “services relating to air transportation” are too vague. The “services” should be specified since is unclear which services are to be protected. In this case the specification should be edited to “air transportation”. Also note that although descriptions such as “information services relating to…….” are acceptable they are not as clear in specifications where the subject matter immediately precedes “information”. For example, in Class 42, “information services relating to engineering” could be interpreted as “technical information services relating to engineering” whereas “engineering information” is without ambiguity.
Sets
See guide at Kits, sets and outfits.
Smoothies
These are seen as non-alcoholic beverages and are proper to class 32.
Social networking services
Social networking services are acceptable in class 45, as it would be seen as a personal service and refers to the locating and introduction of friends, family etc. Care should be taken as it would only cover the services in this class. With most social networking websites offering other services these must be covered in the relevant classes e.g.
Chatroom services Class 38
Online forums Class 38
Entertainment services Class 41
Gaming services Class 41
Software as a service
With the development in computer services in the last few years the term Software as a service is a term used in trade that is associated with the provision of software from a hosted platform. With this in mind the term is acceptable in class 42
Solar panels
These can fall into two classes:
Solar panels for electricity generation Class 9
Solar panels for use in heating Class 11
Stationery
The term “stationery” should be regarded as covering goods traditionally sold by a stationer and not merely writing paper, envelopes and similar writing materials. This wider interpretation is supported by the definition given by major dictionaries and by the comments made by Mr Justice Pennycuick in the OFREX case, reported in [1963] RPC 169-171 where it was held that staples were covered by the term “stationery”.
Substitutes
The word “substitutes” should not be used in specifications without further qualification. For instance, “coffee substitutes”, “cream substitutes”, “ivory substitutes” are acceptable.
NB: The term “substitutes” by itself is unacceptable.
Supply of…….
Care should be taken in the use of this term when qualifying services. Although acceptable in some circumstances, for example, “supply of electricity” in Class 39, in situations where its use is unclear, it should be objected to under Rule 8. For instance, in Class 42, the term “supply of computer software” is too vague because whilst this class includes design, rental, updating and maintaining computer software, it does not include the sale of software. Supply of software may also be interpreted as the goods themselves which would be proper to Class 9.
Systems
This term is normally considered to be too vague as a description unless applied to goods which are clearly understood as being a system, for example allow:
Filing systems
Alarm systems (fire, burglar etc.) Exhaust systems
Computer systems Telecommunications systems
This list is not exhaustive. Alternative wording includes “equipment”, “installations”, “apparatus” or “instruments”.
Tableware
This is an area in which care must be exercised since some items are classified as hand tools or cutlery in Class 8 and as domestic utensils in Class 21.
For example:
Class 8 Knives, forks, spoons, ladles and tongs (including those made of precious metals)
Class 21 Tableware (except those goods in class 8) (including those made of precious metals)
Takeaways and takeaway services
A takeaway is a shop or catering establishment that prepares and sells food or meals for consumption off the premises but the term can also describe the foods or meals sold by such businesses. Therefore an application containing the term “takeaways” is not an acceptable description in a class 43 specification since it can refer both to the sale of foodstuffs or prepared meals and to the business of preparing foods or meals. The specification should be edited to “Takeaway food and/or drink services” or “Takeaway services”.
Note that it will not be possible to transfer the application to a goods class or extend the application to cover the sale of foodstuffs or prepared meals.
Some applications refer to “takeaway restaurants” in order to reflect that the restaurant service provided also has facilities to sell takeaway foods. This description is acceptable.
Tautology
Tautology or repetition of items within a specification was once firmly edited out of specifications. This is no longer the practice and Examiners should not normally amend a specification for this reason alone. Applicants should have the opportunity of using both general and specific terms to make clear what goods or services they wish the registration to cover. The only exceptions to this guidance are for very long specifications which clearly contain a great deal of tautology. Where the removal of tautology would result in such a specification being very much reduced in length, it should be edited. Editing long and repetitive specifications also will lead to savings in terms of entering data and reduce the number of potential errors.
Tea Cosies
These goods were formally classified under International class 26, but from 1 January 2012 are now proper to Class 21.
Telecommunication services
These services are proper to Class 38 but it should be noted that this class only covers the means of communication (e.g. land lines, satellite transmission facilities, rental of communications systems) and not information or advice provided by telecommunications such as, entertainment information (Class 41), financial information (Class 36), traffic news (Class 39) and so on. Class 38 does, however, include information or advice about telecommunications.
Tinder
These goods were formally classified under international class 13 but from 1 January 2012 are now proper to Class 4.
Vacuum cleaners
See guide at Cleaning machines, apparatus or installations
Valves
Valves fall in various classes. For example:
Class 6 if of common metal
Class 7 if parts of machines
Class 9 if thermionic
Class 10 if for feeding bottles or medical purposes
Class 11 if level controlling valves in tanks or if air valves being parts of steam heating installations
Class 12 if for vehicle tyres
Class 15 if parts of musical instruments
Class 17 if of rubber or vulcanised fibre
Class 18 if of leather
Class 19 water pipe valves not of metal or plastics
Class 20 if of plastics or materials in this class (including water pipes)
Class 21 if of glass or ceramic materials
Vending machines
These goods were formally classified under International class 9 but from 1 January 2012 are now proper to Class 7.
Virtual goods
Whilst traditionally provided in person, many services have now moved to being provided virtually, via the use of Internet based applications such as video-conferencing, instant messaging, and the like. If a service is capable of being delivered via virtual means, we will accept such services, examples of acceptable terminology being:
-
education and training services delivered by virtual means [class 41]
-
conducting interactive virtual auctions [class 35]
Vouchers, tokens and coupons
These are seen as a “promise to supply” in relation to goods and/or services and as such are akin to a token of value in class 36. For example:
- issuing of vouchers, tokens and coupons [Class 36]
Please note: vouchers, tokens and coupons are not seen as goods that can be retailed in class 35.
Workstations
Although “workstations” are defined in most dictionaries as being computer equipment it is clear that in the trade the term is used to describe goods such as furniture for housing computers. Hence the following classification:
Class 9 Workstations [apparatus and installations]
Class 20 Workstations [furniture]