04.01.

2017

Classification

International Classification

Trade mark registrations for goods and services are classified in accordance with the
International Classification of Goods and Services under the Nice Agreement (section
40(1); rule 2(1) (definition of “Nice Agreement”), and rule 5).

Revision of International Classification

Previously, the International Classification was revised once every five years.

At the 21st session of the Committee of Experts of the Nice Union held from 22 to 26
November 2010, the Committee had decided, among others, that:

 any amendments to the International Classification involving a transfer of

goods or services from one class to another or the creation of any new class
would still be made within the five-year cycle,

 any new version of the International Classification reflecting the updates in

respect of additions, deletions and changes in the wording of indications in the
alphabetical list would be published annually, and

 for the purposes of publication of changes to the International Classification,

the edition of the publication would be designated by the abbreviation NCL,
which means “Nice Classification”, followed by the number of the edition and
the year of entry into force of the version, e.g. –

NCL(10-2013) would mean “Nice Classification, 10th edition, version

in force since January 1, 2013”.

The current edition and version of the International Classification is the 11th edition
(current year) version, which is used in Hong Kong. Please refer to the section “How

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to classify my goods and services” at the IPD’s website for the details about the current
edition and version of the International Classification.

Websites for classification

Other trade mark offices provide useful information on classifying goods and services.
Some useful websites are :

EUIPO : http://euipo.europa.eu/ec2/

IP Australia : http://xeno.ipaustralia.gov.au/tmgoods.htm

USPTO : http://tess2.uspto.gov/netahtml/tidm.html

General principles determining classification

The International Classification is made up of a list of classes with explanatory notes

and an alphabetical list of goods and services.

Where goods or services are not specifically mentioned in the alphabetical list and
cannot be classified with reference to the explanatory notes, you will need to apply the
general principles explained in the current edition and version of the International
Classification to determine the classification of the particular goods or services. The
general principles are set out in the current edition and version under the headings
General Remarks, Goods, Services and are summarised as follows :

 Finished products are classified according to their function or purpose, for

example “surgical knives” are classified in class 10 and “electric knives” are
classified in class 7.

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 Finished products that are multipurpose, composite objects may be classified in
all classes appropriate to each function or purpose of the goods, for example
“clock incorporating radios” are classified in classes 9 and 14.

 Finished products that cannot be classified according to function or purpose are

classified by analogy with comparable products, for example “bio-sands” are
classified in class 1 by analogy with “chemicals for use in aquariums (other
than pharmaceuticals)”.

 Finished products that cannot be classified according to function or purpose, or

by analogy with comparable products, are classified according to the material
they are made of, or the way they work. For example “furniture fittings, not of
metal” are classified in class 20 and “fittings of metal for furniture” are
classified in class 6.

 Raw materials, unworked or semi-worked, are classified according to the

material which they consist of, for example “semi-finished resins” are classified
in class 17 and “unwrought silver” is classified in class 14.

 Spare parts are classified in the same class as the product for which the part is
intended to fit, for example “saw blades” are “parts for hand tools” and are
classified in class 8.

 Where it is appropriate to classify goods according to the material of which

they are made, and they are made of various materials, they are classified
according to the material that predominates. For example “doors principally
made of metal” are classified in class 6 and “doors principally made of wood”
are classified in class 19.

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 Cases adapted to fit a particular product are classified in the same class as the
product, for example “laptop computer cases” are classified in class 9.

 Services are classified according to the types of activity specified in the

headings of the service classes (see classes 35 – 45 of the International
Classification) or by analogy with comparable services, for example
“reservation services for catering” are classified in class 43 by analogy with
“providing of food and drink”.

 Rental services are classified in the same class as the service provided by means
of the rented object, for example “rental of telecommunications apparatus” is
classified in class 38. Leasing services are analogous to rental services and
therefore should be classified in the same way. However, hire- or lease-
purchase financing is classified in Class 36 as a financial service.

 Services that provide advice, information or consultation are classified in the

same class as the services that correspond to the subject matter of the advice,
information or consultation, for example “business management consultancy” is
classified in class 35. Providing the advice, information or consultation by
electronic means does not affect the classification of the services.

 Services rendered in the framework of franchising are in principle classified in

the same class as the particular services provided by the franchisor (e.g.,
business advice relating to franchising (Class 35), financing services relating to
franchising (Class 36), legal services relating to franchising (Class 45)).

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Changes to the International Classification under the 11th
edition

The 11th edition of the International Classification which entered into force on 1
January 2017 introduced a number of amendments and other changes, as a result of the
Reports adopted by the Committee of Experts of the Nice Union at its 26th Session
(see http://www.wipo.int/meetings/en/details.jsp?meeting_id=39022).

The main amendments and other changes adopted by the Committee include:

 revisions concerning medicated soap, disinfectant soap, medicated shampoos,

etc. (see Annex 1)

 addition of new indications

New indications such as “smart rings” classified in class 9, “body fat monitors”
classified in class 10, “unlocking of mobile phones” classified in class 42 and
“dog walking services” classified in class 45 are added in the 11th edition of the
International Classification.

 change of existing indications

Certain existing indications have been changed as a result of the use of the 11th
edition of the International Classification, for example “dog washes” classified
in class 5 has been changed to “dog washes [insecticides] ” in the same class.

 deletion of indications

Indications such as “dog lotions” in class 5 and “audible warning systems for
bicycles” in class 12 which were included in the previous editions have now
been deleted from the International Classification.

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 transfer of existing indications

Existing indications which have been transferred from one class to another in
the 11th edition of the International Classification are listed in Annex 2.

 change and transfer of existing indications

Existing indications which have been changed and transferred from one class to
another in the 11th edition of the International Classification are listed in Annex
2.

 addition, deletion, change and transfer of indications

Some indications in certain classes have been deleted from the International
Classification whereas other indications have been added, changed and/or
transferred to the other classes. Hence, the latter indications now cover the
former indications and entail cross search (see examples in Annex 2).

 changes in the class headings and explanatory notes

The class headings and explanatory notes of certain classes have been changed
as a result of the use of the 11th edition of the International Classification. For
example, “soap” appearing in the class heading of class 3 of the 10th edition of
the International Classification has been replaced by “non-medicated soap” and
“This class does not include, in particular: - table cutlery (Cl.8)” has been
introduced in the explanatory note to class 21.

Certain amendments and changes made by the 11th edition involve transfer of class of
some goods and services and require reclassification (see Reclassification and Notice to

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reclassify specification below).

Reclassification

An application for registration is classified in accordance with the classification

prevailing at the time of application (see Australian Wine Importers (1889) 6 RPC 311;
Cal-U-Test (1967) FSR 39). However, the specification of any registered trade mark
may be re-classified under rule 58 in light of changes made to the International
Classification.
As the progress of reclassifying is gradual, we continue to take account of changes to
the International Classification in our searches for earlier marks. For example, in
examining an application to register a mark for retail services in class 35 we search not
only class 35 (and other relevant classes) but also class 42, which was formerly the
appropriate class for retail services.

Before 1955, registrations for goods (registration for services was not available in
Hong Kong until 2 March 1992) were classified under classes listed in Schedule 3 to
the old Trade Marks Rules (Cap. 43 subsidiary legislation) (“old Schedule 3”).

Since 1955, registrations have been classified under a list of classes which was
internationally recognised and which was later formalised in the International
Classification under the Nice Agreement of 1957. The classes were listed in
Schedule 4 to the old Trade Marks Rules (Cap. 43 subsidiary legislation) (“old
Schedule 4”).

Under the old law, the conversion of specifications under the old Schedule 3 to classes
under the old Schedule 4 was voluntary.

Under the new law, the conversion of old Schedules 3 and 4 specifications is

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compulsory. Specifications of registered trade marks that were classified under the old
Schedules 3 and 4 as well as under the other previous editions of the International
Classification are reclassified to classes under the current edition of the International
Classification after notice to the trade mark owner (section 58, Schedule 5 section 12;
rules 58(a) and 59) (see Notice to reclassify specification below).

We reclassify specifications of registered trade marks after sending a notice to the trade
mark owner (section 58; Schedule 5 section 12; rules 58(b) and 59) (see Notice to
reclassify specification below). Usually we send notices to reclassify shortly after a
registration is renewed.

Notice to reclassify specification

The process and the factors to be considered in issuing notices to reclassify

specifications, examining registered owners’ written objections and in hearing any
person’s opposition to a proposed reclassification are listed in the following paragraphs.

 Send notice of proposed reclassification to the registered owner (rule 59(1)).

The notice is dated and sent out immediately because time for the owner to
make written objections runs from the date of the notice. A proposed
reclassification cannot extend a registered owner’s rights. For example, a
registration for “games” in class 49 of the old Schedule 3 cannot be reclassified
to include “computer games software” which did not exist at the date of
registration.

 Has the registered owner made written objections, stating the grounds of his
objections, within three months after the date of the notice (rule 59(2)(a))? If
yes, consider the objections and, as appropriate, publish the proposals, or the
proposals as amended (rules 60(2), 60(3) and 60(4)).

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 If the registered owner has not made written objections within 3 months after
the date of the notice or any extension of the period, publish the proposals (rule
60(1)). Publish the proposals earlier if the registered owner has given written
notice that he will not make any objections (rule 60(1)).

 Has any notice of opposition to the proposed reclassification been filed (rule
61)? Was the notice of opposition filed within 3 months after the date of
publication of the proposed reclassification (rule 61(1))? The time limit
cannot be extended (rule 95(1)(o)).

 Is the notice of opposition on Form T6 and does it state the grounds of

opposition and, in particular, how the proposed reclassification would be
contrary to section 58(5)?
 If a notice of opposition is filed, we can require or admit evidence on the issue
(rule 61(4)).

 If no notice of opposition is filed within 3 months after the date of the

publication of the proposed reclassification, or if any opposition has been
determined against the opponent, enter in the register the amendments to the
classification and the date on which the amendments were made (rule 61(5)).
Reclassified specifications that fall into more than one class will become
multiclass registrations. (See chapter on Objections and opposition to change
of classification of goods or services.)

Application for registration

An application for the registration of a trade mark must include a statement of the
goods or services for which the mark is to be registered (section 38(2)(c)) and must
specify the class or classes to which it relates (rule 7(1)).

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An application for more than one class must set out the classes in consecutive
numerical order and list under each class the goods or services appropriate to that class
(rule 7(2), (3)).

Class heading

The class “headings” are set out in the current edition and version of the International
Classification. According to the General Remarks of the same document, the
indications of goods and services appearing in the class headings are general
indications relating to the fields to which, in principle, the goods or services belong.

Specifying goods and services

It is essential that an applicant’s specification should be clear, because the scope of

trade mark owners’ rights depends on the specification of goods or services. An
applicant should clearly define his goods or services by using terms as listed in the
International Classification, or as appearing in authoritative, general and specialist
dictionaries and established terms in the relevant trade.

The following table lists some terms we would object to as imprecise and suggests
alternatives (rules 7(2) and 11(1)(a)).

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Imprecise terms Examples of precise definition

advisory services advisory services relating to business management

(class 35)
advisory services relating to real estate valuations (36)
computer systems design advisory services (42)

all other related services (see Application for “all goods” or “all services”,
below)

all services in this class (see Application for “all goods” or “all services”,
below)

commercial services commercial financing services (class 36)

renting of commercial premises (36)

consultancy services consultancy services relating to telecommunications

(class 38)
interior design consultancy services (42)

dealership services motor dealer services (class 35)

retailing of clothing (35)
foreign currency dealing (36)

health products nutritional supplements (class 5)

information / on-line provision of information relating to (indicate field of

information services activity)
communication services for the transmission of
information (class 38)
information services relating to computer systems and
applications (42)

information technology / computer systems and applications consultancy

technical support services services (class 42)
technical support services relating to computer
software and applications (42)

Internet / on-line services Telecommunication services (class 38)

on-line ordering services (35)

logistic services transport, packaging and storage of goods (class 39)

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multi-media products / computers (class 9)
services printing, scanning and fax machines (9)
production of multi-media entertainment programmes
services (41)

personal services personal financial planning advisory services (class

36)
personal services rendered by others to meet the needs
of individuals (45)

rental / leasing services rental of advertising space (class 35)

rental of computers (42)

retailing and wholesaling retail and wholesale of (indicate particular goods or

services / distributorship the means of providing the service) (class 35)
services

related products / services applicant needs to indicate particular goods / services

of interest (See Application for “all goods” or “all
services” etc below.)

social services organisation of social introduction events (class 45)

health care services (44)
social services rendered by others to meet the needs of
individuals (45)

web services creating and maintaining websites (class 42)

hosting computer websites (42)

General principles in specifying goods and services

Terms in a specification are given their ordinary and natural meaning (Ofrex [1963]
RPC 169-171) subject to the principle that the words must be construed by reference to
their context (Beautimatic International Ltd v Mitchell International Pharmaceuticals
Ltd [2000] FSR 267, where “skin lightening cream” was held to be within the term of
“cosmetics”, and “dry skin lotion” within the terms “cosmetics” and “toilet
preparations” : neither “skin lightening cream” nor “dry skin lotion” were in the nature

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of medicines or pharmaceutical products).

Goods or services are limited by the class number specified in the application. This
means that an applicant’s goods or services must fall within the class or classes
specified in the application. For example, the goods of an applicant who applies for
“ bins” in class 6 do not extend to “ bins of wood or plastic” properly classified in class
20. It follows that an applicant cannot widen his specification after filing. See the
following examples.

 An applicant who applies for “clothing” in class 25 cannot amend his

application to include “protective clothing” in class 9.

 An applicant who has filed a multi-class application in respect of “food

products” in Class 29, “coffee” in Class 30 and “live animals” in Class 31, can
amend “food products” in Class 29 to “cooked fruits” in Class 29. However, he
cannot add “bread” in Class 30 and/or “foodstuffs for animals” in Class 31 even
if he is prepared to delete “food products” from Class 29 since the “food
products” originally applied for do not include food products which fall outside
Class 29 and allowing the applicant to amend the specification to “bread” in
Class 30 and/or “foodstuffs for animals” in Class 31 would widen his
specification in Class 30 and/or Class 31 respectively.

 An applicant who has filed a multi-class application in respect of the services

“consultancy services” in Class 3, “real estate management” in Class 36 and
“transport of goods” in Class 39 has to delete “consultancy services” and Class
3 from the application since ‘consultancy services” are unclear and do not fall
within Class 3. He will not be permitted to seek amendment by adding “real
estate management consultancy services” in Class 36 or “consultancy services
for transport of goods” in Class 39 since this would widen his specification in
Class 36 or Class 39.

Any question as to the class in which goods or services fall is determined by the
Registrar (section 40(2)).

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Internet products and services

Internet products and services are varied, and accordingly are classified in various
classes.

Class 9 is the appropriate class for products obtained by downloading from the Internet,
for example “computer software and publications in electronic form supplied on-line
from computer databases or web sites”.

Class 35 is the appropriate class for “advertising and business information services
provided on-line from a computer database or Internet”, “on-line shopping services”,
and “Internet shopping malls”.

Class 36 is the appropriate class for “real estate information services provided on-line
from a computer database or Internet”.

Class 37 is the appropriate class for “information services relating to building

construction provided on-line from a computer database or Internet”.

Class 38 is the appropriate class for the core activities of Internet service providers, for
example “providing telecommunications connections to a global computer network”,
“providing telecommunications access to a global computer network”, “providing
telecommunications access to Internet”, “telecommunication of information, computer
programs and any other data”, and “electronic mail services”.

Class 41 is the appropriate class for “information relating to entertainment or education

provided on-line from computer databases or Internet”, “electronic game services

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provided on Internet”, “on-line electronic publications provided by viewing computer
data bases or web sites”, and “publication of electronic books and journals on-line”.

Class 42 is the appropriate class for “drawing and commissioned writing, all for the
compilation of web pages on Internet”, “creating and maintaining web sites”, and
“providing search engines for the Internet”.

Class 43 is the appropriate class for “hotel accommodation reservation services

provided on-line from a computer database or Internet”.

Class 44 is the appropriate class for “medical advisory services provided on-line from a
computer database or Internet”.

Class 45 is the appropriate class for “personal introduction agency services provided
on-line from a computer database or Internet”, “intellectual property consultancy
services provided on-line from a computer database or Internet”, and “registration of
domain names [legal services]”.

Retail services

Marks can be registered for retail services, even though retail services are ancillary to
the trade in goods (section 3(3)). But the description “retail services” should be
properly defined and if not, we will send a notice to the applicant to remedy the
deficiency (rules 7(2) and 11(1)(a)). An applicant’s specification should state the
goods retailed, for example “retailing of clothing”, or the means of providing the
service, for example “retailing and wholesaling service provided via a global computer
network” (see Specifying particular goods and services above). Retail services are
classified in class 35.

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Writing or examining specifications

Factors to be considered in writing or examining specifications are listed in the

following paragraphs.

 Are the goods and/or services listed by class numbers in numerical order? (See
Application for registration above.)

 Is it clear what the specification is meant to cover? (See Application for

registration, Specifying particular goods and services above and Application
for “all goods” or “all services” etc below.)

 Does the specification use words that are registered trade marks? (See Avoiding
words that are registered trade marks below.)

 Is it clear which class the goods or services are in? (See Application omitting
class, Application stating the wrong class and Application listing goods or
services under wrong class below.)

 Is it necessary to transfer goods or services between classes in the application?

 Does the specification include goods or services which do not fall within the
class or classes specified in the application? Has a request been made to add
extra classes, or is there a need to add extra classes? (See Application including
goods or services not falling within class below.)

 Does the specification use words which should be avoided in practice or which

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 should only be used in a certain way? (See Specifying particular goods and
services above.)

 Is the specification repetitive? For example, “sports shoes, shoes for sport in
class 25”.

 Is the punctuation clear? (See Punctuation, qualification, exclusion below.)

 Has any exclusion been properly worded? (See Punctuation, qualification,

exclusion below.)

 Have any restriction of specification been clearly expressed? (See Restricting

specification below.)

 Has the specification been widened during editing? (See General principles in
specifying goods and services above and Application for “all goods” or “all
services” etc below.)

 If the application claims Convention priority, what details need to be checked?

(See Convention claims below.)

Application for “all goods” or “all services” etc

Occasionally, we may receive an application for “all goods” or “all services” in any
class, or an application so vague that we cannot determine any of the goods or
services it intends to cover. In these circumstances, we will send notice to the
applicant to remedy the deficiency on the ground that he has not included a statement

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of goods or services in his application (section 38(2)(c); rule 11(1)(b)).

Examples of specifications so vague that they do not amount to a statement of goods or

services would be “prizes in class 21”, “luxury goods in class 14”.

An applicant can remedy the deficiency by completing and filing Form T5A within
two months (paying a fee for any additional classes). A filing date cannot be
accorded until the applicant files a proper statement of goods or services (section
39(2)). This could have the effect of the lapse of his priority claim.

If an applicant fails to remedy the deficiency within two months after the date of the
notice, the application is deemed never to have been made (rule 11(2)(b)). The time
limit cannot be extended (rule 95(1)(a)). (See chapter on Deficiencies checking.)

More often, an application for registration appropriately specifies some goods or

services but includes additional phrases such as “all other goods in the class”, “all other
related services”, “and related services”, or “and supporting services”. In these
circumstances, we will also send notice to the applicant to remedy the deficiency (see
rule 7(2)). An applicant should delete the phrases by completing and filing Form
T5A accordingly. An applicant cannot replace the phrases with additional goods or
services because he cannot widen the range of goods or services in the specification.

Similar considerations apply to an application for registration that appropriately

specifies some goods or services but includes additional phrases so vague that we
cannot determine the goods or services they intend to cover.

Application for a whole class heading in many classes or for a

wide range of goods or services in many classes

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Registered trade marks (except defensive trade marks) must be used. If they are not
used, they are subject to revocation, which supports the view that an applicant’s
specification of goods or services should not be too broad. (See sections 38(3) and
52(2)(a); Mercury Communications (1995) FSR 850; Roadrunner (1996) FSR 818.)
See also Cine Classics (15 January 1999) an unreported decision of the UK Registry
that a specification for “teaching and training services, educational and entertainment
services, and cultural and sporting activities and services providing recreation for the
general public (entertainment)” would include services as diverse as from “teaching
English as a foreign language”, to “running an amusement park or arcade”, and to
“organizing an athletics competition”. Even the largest of companies would be
unlikely to supply this range of services.

We have power to ask an applicant to justify his intention to use the mark for his
specification (section 38(3); rules 7(4) and 11(1)(b) and see rule 89 that allows us to
require documents, information or evidence). In practice, the objection would not be
raised lightly, account being taken of the capacity of most applicants to trade in a wide
range of goods and/or services. It might be raised where the range of goods and/or
services claimed is so unrealistically broad in commercial terms that it is unlikely that
the applicant would trade in such a full range of goods and/or services.

To overcome the objection, an applicant has to show that he honestly intends to use or
in fact uses the mark in relation to the goods and/or services applied for. Each case will
be considered on its own merits in relation to the actual specifications.

It is open to the applicant to submit any documents, information or evidence which it

considers to be relevant for demonstrating that the broad specification(s) as claimed
is/are justified. Examples of what an applicant may submit with a view to overcoming
an objection under rule 7(4) may include:

 material indicating the applicant’s line of business is extensive in range

covering the goods and services applied for or similar goods and services, or
material showing the applicant’s intention to trade across the full range of the

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 goods and services applied for. Catalogues, brochures, prospectuses, annual
reports or marketing plans, or evidence of use of the mark by the applicant
outside Hong Kong, etc. may be relevant indication that the applicant has the
ability, capacity or intention to use the mark in respect of the same or similar
goods and services in Hong Kong;

 material showing the mark has been licensed or is intended to be licensed for
use in respect of the applied for goods and services or similar goods and
services, e.g. license agreements, distributorship agreements.

On the other hand, a statutory declaration which merely confirms an intention to use
the mark on all the goods or services specified is unlikely to assist, as it adds nothing to
the applicant’s statement of use or intention to use already required in the application
form.

An alternative way to overcome the objection is by restricting the specification of

goods and/or services to those in relation to which the mark has been used or is
intended to be used (see Restricting Specification below).

Even if no objection under rule 7(4) is raised by the Registrar at the examination stage,
a broad specification of goods and/or services may invite opposition, or revocation
proceedings.

Application including goods or services not falling within class

Where an applicant includes goods or services in his application for registration not
falling within the classes listed in the application for registration, we will send him
notice to remedy the deficiency within 2 months (see rules 7(1), 11(1) and (2)).

The applicant can remedy the deficiency by completing and filing Form T5A and the

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additional class fees within 2 months (rule 7(5) and (6)). The applicant should
complete the form by adding the additional classes and by listing the relevant goods or
services under the additional classes. An applicant cannot use the form to widen the
range of goods or services in his original specification. (As an alternative to adding the
additional classes, the applicant can delete the goods or services from his application.)

If the applicant fails to remedy the deficiency within two months after the date of the
notice, the part of the application relating to the goods or services the specification of
the class or classes for which is deficient is treated as abandoned (rules 7(1) and
11(2)(aa)). The time limit cannot be extended (rule 95(1)(a)). (See chapter on
Deficiencies checking.)

Application omitting class

Where an applicant includes a statement of goods or services in his application for

registration but does not specify the class or classes, we will send him a notice to
remedy the deficiency within two months (see rules 7(1), 11(1) and (2)).

The applicant can remedy the deficiency by completing and filing Form T5A together
with the relevant fee for any additional class within 2 months.

If the applicant fails to remedy the deficiency within two months after the date of the
notice, the part of the application relating to the goods or services the specification of
the class or classes for which is deficient is treated as abandoned (rules 7(1) and
11(2)(aa)). The time limit cannot be extended (rule 95(1)(a)). (See chapter on
Deficiencies checking.)

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Application stating the wrong class

Where an applicant includes a statement of goods or services in his application for

registration but he wrongly states the class, we will send him a notice to remedy the
deficiency within 2 months (see rules 7(1), 11(1) and (2)).

The applicant can remedy the deficiency by completing and filing Form T5A within 2
months. For example, an applicant who applies for “cosmetics” in class 5 (the correct
class is class 3) can delete it from the application, transfer it to class 3 (if the
application already covers class 3), or add class 3 for “cosmetics” (with payment of the
prescribed fee for addition of class). However, an applicant who applies for
“screwdrivers in class 8” (the class appropriate to hand tools) cannot correct his
application to “screwdrivers in class 7” (the class appropriate to electric tools).
If the applicant fails to remedy the deficiency within 2 months after the date of the
notice, the part of the application relating to the goods or services the specification of
the class or classes for which is deficient is treated as abandoned (rules 7(1) and
11(2)(aa)). The time limit cannot be extended (rule 95(1)(a)). (See chapter on
Deficiencies checking.)

Application listing goods or services under wrong class

Where an application relates to more than one class and specifies the relevant classes
but the applicant mistakenly lists particular goods or services under the wrong class, we
will send him a notice to remedy the deficiency within 2 months (see rules 7(1), 11(1)
and (2)).

The applicant can remedy the deficiency by completing and filing Form T5A within 2
months to transfer the goods or services to the list under the appropriate class. Transfer
is possible only where goods cannot fall within the particular class. For example
“computer games software” mistakenly listed under class 28 can be transferred to the
applicant’s list of goods under class 9. Some goods may fall into more than one class

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but that is not a reason for transfer. (See Altecnic Ltd’s Application [2002] RPC 639:
the mistake must be obvious to allow a change of class under section 39 of the UK
1994 Act, equivalent to section 46 of the Ordinance.)
If the applicant fails to remedy the deficiency within 2 months after the date of the
notice, the part of the application relating to the goods or services the specification of
the class or classes for which is deficient is treated as abandoned (rules 7(1) and
11(2)(aa)). The time limit cannot be extended (rule 95(1)(a)). (See chapter on
Deficiencies checking.)

Deleting a class or classes, or goods or services, from an

application

An applicant can delete a class or classes, or goods or services, from his application at
any time by completing and filing Form T5A.

Restricting specification

A mark that is clearly descriptive of a characteristic of the goods or services (for

example the nature, quality or geographical origin) and which is realistically likely to
deceive consumers if the goods or services of the specification do not conform to the
description, is objectionable under section 11(4)(b).

We should not object where there is no realistic likelihood of deception (see for
example Carlton & United Breweries Ltd v Royal Crown Draft Co Inc (2001) 53 IPR
599 where the word “draft” in the mark ROYAL CROWN DRAFT in respect of soft
drinks and syrups, concentrates and extracts for making soft drinks was not likely to
deceive purchasers into thinking the product was alcoholic). Realistically, a mark is
only likely to deceive if it amounts to a misrepresentation in relation to the goods or
services.

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The fact that a specification is broader than the description conveyed by the mark does
not necessarily make a mark deceptive, for example TETRATEA in class 30 would not
be deceptive in relation to a specification that includes a broader range of goods than
tea.
Similarly, a restriction is unlikely to be necessary in relation to marks incorporating
words describing materials or desirable qualities of a product or service where there is
adequate scope within the specification for legitimate use of the mark and where in
practical terms deception is unlikely. For example WOOLTECH for “yarns and
threads” need not be restricted “all made wholly or principally of wool”. For the same
reasons, THERAFLU for “pharmaceutical preparations” need not be restricted “for the
treatment of influenza”.

But there are circumstances in which a mark will be deceptive unless the specification
is restricted. A restriction may be necessary in relation to marks incorporating place
names or symbols used as an indication of geographical origin where the place has a
reputation for the goods or services, or for closely related goods or services. In such
circumstances, it may be necessary to :

 restrict the specification to the particular product, for example a mark

incorporating the name “CHAMPAGNE” in class 33 should be registered for
the restricted specification “champagne” only (similarly COGNAC).

 restrict the specification to products of a particular origin, for example marks

incorporating MÜNCHEN LAGER in class 32, SWISS CHRONOMETRIC
EQUIPMENT in class 14, CHOCOLATERIE DE BELGIQUE in class 30
should be restricted to goods “produced in Germany”, “Switzerland” and
“Belgium”, respectively.

An applicant can delete goods or services from his specification, restrict his
specification, or offer an appropriate limitation (see chapter on Geographical origins) to

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overcome an objection that the mark is likely to deceive. “Variation clauses” which
were occasionally used under the old law to obtain registration of a mark that would
otherwise have been considered deceptive under former practice, are now redundant
(see the old Trade Marks Rules (Cap. 43 subsidiary legislation) rule 7(2) which has no
counterpart under the new Rules).

Because of the restrictions on amending marks, an applicant cannot remove descriptive

elements from the mark itself to overcome an objection that the mark is likely to
deceive.

The question of whether a mark is likely to deceive is wider than the question of
restricting a specification. It is not always possible to overcome an objection of
deceptiveness by restricting the specification. For example, an objection to a mark
incorporating the words “VETERINARIANS’ RECOMMENDED” for animal
foodstuff in class 31 could not realistically be overcome by a restriction purporting to
limit the product to “foodstuff approved by veterinarians” (outside the safeguards
offered by regulations in support of registration as a certification trade mark).

Punctuation, qualification, exclusion

Commas or semi-colons are used to separate goods or services listed in the

specification. For example, the following specification can be punctuated by using
either commas or semi-colons: “meat, fish, poultry and game”, or “meat; fish; poultry
and game”, or “meat; fish; poultry, and game”.

Where goods or services are subject to a qualification, a semi-colon is used to show

which goods are qualified. In the example “meat, fish, poultry and game; fruits and
vegetables, all being preserved”, only “fruits and vegetables” are limited by the
qualification “preserved”. In the example “photographic; measuring and signaling
apparatus and instruments; all for maritime use”, the qualification “all for maritime

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use” applies to all the goods.

Where goods or services are subject to an exclusion, a semi-colon is used to separate

the list of goods or services from the exclusion, for example “insurance; property
valuation; but not including marine insurance services”.

Usually, the exclusion is placed at the end of a specification, for example “rental of
advertising space; arranging newspaper subscriptions; but not including any such
services for advertising by television or radio”. But an exclusion can also be placed
next to the goods or services affected, for example “rental of advertising space but not
including any such services for advertising by television or radio; arranging newspaper
subscriptions”.

Avoiding words that are registered trade marks

A specification should not use words that are registered trade marks, for example
“Hoover”, “Jacuzzi”, “Karaoke”, “Rollerblade”, “Walkman”, and “Yo-Yo”.

Convention claims

Where an applicant claims priority and his claim challenges an earlier filed conflicting
application, we will send him a notice to file his priority documents to ensure that his
specification is not wider than his Convention specification.

If the applicant’s specification is wider than his Convention specification, he can divide
his application so as to proceed separately with the goods or services covered by the
Convention application. (See chapter on Claim to priority.)

***

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 Annex 1

Revisions concerning medicated soap,

disinfectant soap, medicated shampoos, etc.

See the following examples:

Class 3

 Transfer of the following indications to Class 5:

 “medicated soap”
 “disinfectant soap”

 Changes in the class heading:

From To
soaps non-medicated soaps
hair lotions non-medicated hair lotions
dentifrices non-medicated dentifrices

 Addition of indications:

 eye-washes, not for medical purposes

 shampoos for animals [non-medicated grooming preparations]

 Change of “shampoos for pets” to “shampoos for pets [non-medicated

grooming preparations]”

Class 5

 Change of “eye-washes” to “medicated eye-washes”

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 Addition of indications:

 “medicated shampoos”
 “medicated dry shampoos”
 “medicated toiletry preparations”
 “medicated hair lotions”
 “medicated dentifrices”
 “antibacterial soap “
 “antibacterial handwashes”
 “medicated shampoos for pets”

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 Annex 2

Other revisions

 Transfer of existing indications

See the following examples:

Class number Class number

under under
Goods International International
Classification 10th Classification 11th
edition edition
xylol 4 1

xylene 4 1

benzene 4 1

benzol 4 1

anti-rheumatism bracelets 5 10

anti-rheumatism rings 5 10

bracelets for medical purposes 5 10

needle-threaders 8 26

sugar tongs 8 21

nutcrackers 8 21

socks, electrically heated 9 11

rosaries 16 14

chaplets 16 14

reins for guiding children 26 18

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 Class number Class number
under under
Goods International International
Classification 10th Classification 11th
edition edition
wax for skis 28 4

scrapers for skis 28 8

piccalilli 29 30

 Change and transfer of existing indications

See the following examples:

Goods Class number Changed to Class number

under under
International International
Classification Classification
10th edition 11th edition
ladles for serving
ladles for wine 8 21
wine
gut for making sausage casings,
18 29
sausages natural or artificial
sleeping bags for
20 sleeping bags 24
camping
pig bristles 21 pig bristles 22
milk of almonds almond milk-based
32 29
[beverage] beverages
peanut milk [non- peanut milk-based
32 29
alcoholic beverage] beverages

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 Addition, deletion, change and transfer of indications

See the following examples:

Revision of indications under Remarks Cross search

International Classification 11th
edition
Change of “vice Deletion of “vice “vice benches Cross search of “vice
benches, not of benches of metal” [furniture]” in benches [furniture]”
metal” in class 20 from class 6 class 20 cover in class 20 against
to “vice benches “vice benches of “vice benches of
[furniture]” metal”. metal” in class 6 (for
applications filed
before 1.1.2017)

Change of “meat Deletion of “meat “meat safes” in Cross search of

chests, not of safes of metal” class 20 cover “meat safes” in class
metal” in class 20 from class 6 “meat safes of 20 against “meat
to “meat safes” metal”. safes of metal” in
class 6 (for
applications filed
before 1.1.2017)

Change and Deletion of “tool “handles for hand- Cross search of

transfer of “tool handles, not of operated hand “handles for hand-
handles of metal” metal” from class tools” in class 8 operated hand tools”
in class 6 to 20 cover “tool in class 8 against
“handles for handles, not of “tool handles of
hand-operated metal”. metal” in class 6 and
hand tools” in “tool handles, not of
class 8 metal” in class 20 (for
applications filed
before 1.1.2017)

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Revision of indications under Remarks Cross search
International Classification 11th
edition
Change and Deletion of “knife “knife handles” in Cross search of
transfer of “knife handles, not of class 8 cover “knife handles” in
handles of metal” metal” from class “knife handles, not class 8 against “knife
in class 6 to “knife 20 of metal”. handles of metal” in
handles” in class 8 class 6 and “knife
handles, not of metal”
in class 20 (for
applications filed
before 1.1.2017)

Change and Deletion of “scythe “scythe handles” in Cross search of

transfer of “scythe handles, not of class 8 cover “scythe handles” in
handles of metal” metal” from class “scythe handles, class 8 against
in class 6 to 20 not of metal”. “scythe handles of
“scythe handles” metal” in class 6 and
in class 8 “scythe handles, not
of metal” in class 20
(for applications filed
before 1.1.2017)

Change and Deletion of “broom handles” Cross search of

transfer of “broom “broom handles, in class 21 cover “broom handles” in
handles of metal” not of metal” from “broom handles, class 21 against
in class 6 to class 20 not of metal”. “broom handles of
“broom handles” metal” in class 6 and
in class 21 “broom handles, not
of metal” in class 20
(for applications filed
before 1.1.2017)

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Revision of indications under Remarks Cross search
International Classification 11th
edition
Change and Addition of “flagpoles of Cross search of
transfer of “flagpoles of metal” in class 6 “flagpoles of metal”
“flagpoles” in class metal” in class 6 and “flagpoles, not in class 6 or
20 to “flagpoles, of metal” in class “flagpoles, not of
not of metal” in 19 are covered by metal” in class 19
class 19 “flagpoles”. against “flagpoles” in
class 20 (for
applications filed
before 1.1.2017)

Change of Addition of “fireplace mantles Cross search of

“mantlepieces” in “fireplace mantles of metal” in class 6 “fireplace mantles of
class 19 to of metal” in class are covered by metal” in class 6
“fireplace 6 “mantlepieces”. against
mantles, not of “mantlepieces” in
metal” class 19 (for
applications filed
before 1.1.2017)

Change of Addition of “armour-plating, Cross search of

“armour-plating” “armour-plating, not of metal” (or “armour-plating, not
(or armor-plating) not of metal” (or “armor-plating, not of metal” (or “armor-
in class 6 to “armor-plating, not of metal”) in class plating, not of metal”)
“armour-plating of metal”) in class 19 are covered by in class 19 against
of metal” (or 19 “armour-plating” “armour-plating” (or
“armor-plating of (or armor-plating). armor-plating) in
metal”) class 6 (for
applications filed
before 1.1.2017)

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Revision of indications under Remarks Cross search
International Classification 11th
edition
Change of “stakes Addition of “stakes of metal Cross search of
for plants or trees”
“stakes of metal for plants or trees” “stakes of metal for
in class 20 to for plants or in class 6 are plants or trees” in
“stakes, not of trees” in class 6 covered by “stakes class 6 against
metal, for plants for plants or trees”. “stakes for plants or
or trees” trees” in class 20 (for
applications filed
before 1.1.2017)

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