Trade marks manual

The classification addendum

Section last updated: August 2018.

Introduction

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)

A

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”

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

B

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).

C

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.

D

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

E

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

F

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.

G

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

H

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.

I

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

K

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

L

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.

M

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.

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.

N

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.

O

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.

P

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 workmen 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 workmen, 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.

R

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.

S

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”.

T

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.

V

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.

W

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]