NEC Corporation

[2002] ATMO 32

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Application by NEC Corporation, applicant for registration of trade mark application 787798 (7, 9, 10, 11, 35, 36, 37, 38, 39, 41 and 42) - NEC - to amend its specification of goods in class 9 and request for determination of scope of claim made under a class heading.

Background

On 9 March 1999, NEC Corporation ('the applicant') filed application 787798 to register the trade mark, NEC, as depicted below.

The application was in respect of the following goods and services in classes 7, 9, 10, 11, 35, 36, 37, 38, 39, 41 and 42 as per the 7^th Edition of the International Classification of Goods and Services ('Nice').

Class	Specification
7	Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); postal automation systems; industrial robots
9	Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers
10	Surgical, medical, dental and veterinary apparatus and instruments
11	Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying and ventilating, including kitchen appliances in this class
35	Advertising services; information services for promoting the goods and services of others; consultant services and advisory services in the field of business; provision of information relating to business; business administration and business statistics; sales promotion; provision of the aforesaid information in CD-ROM format or via local and global computer information networks; rental of office machines and equipment; importing and exporting of goods of others; import and export agency services; business management and consultation services; including tracking the transportation, warehousing, inventory control, transhipment and distribution of goods; consultation and arranging services for the logistics of goods between shippers and carriers; consultation and business arrangement for custom clearance between shippers and carriers; retail and wholesale store services
36	Banking services, credit card services, financial services, account opening services, account settlement services, dealing services for stocks and bonds, financial transfer services and provision of any of the above services via local and global computer information networks; custom brokerage services; insurance; services rendered in connection with real estate affairs
37	Construction, repair, maintenance, fitting and installation of electric and electronic apparatus and instruments; repair of computer software programs and web sites; building construction
38	Communication services including telecommunication gateway services for the transmission, transfer and dissemination of electronic mail, video images, including digital information data via/on interactive television, audio, video and multimedia presentations; consultant and advisory services relating to communications networks, computer information networks, telecommunication apparatus, and communication apparatus
39	Services relating to transportation, packaging, distribution, storage and delivery of goods; inspection of goods for transportation; travel agency services
41	Services consisting of all forms of education; services having the basic aim of education, entertainment, amusement or recreation of others, providing services relating to education, entertainment, amusement, recreation, culture, art, music, sports; provision of information in the fields of culture, education, art, music, sports, entertainment and amusement; provision of the aforesaid information via local and global computer information networks
42	Computer services; providing access to and leasing access time to computer database connected with local and global computer information networks, providing access to local and global computer information networks for the transfer and dissemination of a wide range of information; provision of computer programs via local and global computer information networks; providing on-line books and magazines on a wide range of topics; providing access to an electronic bulletin board in a wide range of fields; providing access to an electronic bulletin board in a wide range of fields; providing on-line facilities for real time information with computer users concerning a wide range of topics in the nature of chat rooms; technical services and technical consulting services for creating, designing and maintaining web sites for others; technical services and technical consultation for computer programming and computer hardware; services relating to the technical supervision and inspection of electronic apparatus and instruments including electronic computers; rental of electric and electronic apparatus and instruments; provision of food and beverages; providing temporary accommodation

Filing details of the application were published on the Trade Marks Office ('TMO') electronic database on 16 March 1999.

By letter dated 31 March 1999 the applicant's attorney, Mr Brian Munday of Spruson & Ferguson, Sydney, requested amendment of the class 9 specification of goods to:

Class

Specification

9

Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment; the foregoing goods including electric and electronic apparatus and instruments, all for the receiving, transmitting, storing, relaying, inputting or outputting of data; digital central office switching systems, digital private exchanges (digital PBX), packet switching systems, fiber-optic transmission systems, digital transmission systems, multiplexors, submarine cable systems, CATV (Cable Television) systems, teleconferencing systems, mobile communication systems, microwave communication systems, satellite communication systems (satellite-mounted and ground support communications equipment), laser communications equipment, television and broadcasting equipment, video and studio equipment, aircraft and space electronic equipment, rocket guidance and control equipment, radio navigation and radar equipment, defence electronic systems, mobile and portable radio equipment, pagers, facsimile machines, key telephone systems, cordless telephone sets, mainframe computers, small business computers, personal computers, supercomputers, workstations, computer software, computer peripherals and terminals, word processors, computer output printers, hard disk drives (HDD), CD-ROM drives, monitors, data modems, routers, optical disk players, digital video discs and optical discs, pre-recorded audio, visual and video image digital video discs and optical discs, CAD/CAM and CAE systems, automated fingerprint identification systems, telemetry and remote control systems, communication network control systems, building automation systems, educational electronic equipment, computerized numerical control equipment, underwater ultrasonic application equipment, semiconductor manufacturing equipment and vacuum equipment, measuring and testing systems, memories, microcomputers, gate arrays, standard cells, integrated circuits (ICs), charge-coupled devices, transistors, gallium arsenide field-effect transistors, diodes, optical semiconductor devices, hybrid ICs, display tubes, fluorescent indicator panels, electroluminescent lighting panels, liquid crystal displays (LCD), printing wiring boards (PWBs), electronic tuners, laser application equipment, capacitors, relays, hermetic seals, electron tubes, gas lasers, variable resistors, keyboards, electrical connectors, television receivers, projectors, color plasma display panels, direct broadcasting satellite receivers, extended-definition television and radio receivers, video cassette recorders, compact disk players, surround amplifiers/decoders, video game units, kitchen appliances; parts and fittings for all the aforesaid goods

The amendment was considered by an examiner of trade marks, who advised that, as the class heading provided only a general guide to goods and services in a particular class, there may be items in the proposed specification that were not covered by the original claim.  The applicant was asked to demonstrate the relationship between the items in the proposed specification and the broader terms contained in the class heading.

In response, Mr Munday sought clarification of TMO's understanding of the scope of claims comprising a class heading, saying he understood a class heading to be a shorthand method of claiming all goods or services in a class.  A second examiner explained that TMO's practice is to consider a claim for all goods or services in a class to be significantly broader in scope than a claim for a class heading because the class heading is only a general guide to the goods and services.  Notwithstanding, the examiner indicated he would be prepared to amend the class 9 specification along the lines proposed by the attorney if the applicant agreed to some adjustments, including amending "computer software" to "optically recorded and/or readable computer software".  This was requested because "computer software" per se was not encompassed by the generic terms included in the applicant's original claim.

In reply, Mr Munday argued that as any type of computer software falls into class 9, "computer software" must be encompassed by the class heading terms included in the applicant's original claim.  On 19 July 1999 the attorney put forward the following revised specification, which incorporated some of the changes requested by the examiner:

Class

Specification

9

Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment; the foregoing goods including electric and electronic apparatus and instruments, all for the receiving, transmitting, storing, relaying, inputting or outputting of data, digital central office switching systems, digital private exchanges (digital PBX), packet switching systems, fiber-optic transmission systems, digital transmission systems, multiplexors, submarine cable systems, CATV (Cable Television) systems, teleconferencing systems, mobile communication systems, microwave communication systems, satellite communication systems (satellite-mounted and ground support communications equipment), laser communications equipment, television and broadcasting equipment, video and studio equipment, aircraft and space electronic equipment, rocket guidance and control equipment, radio navigation and radar equipment, defence electronic systems, mobile and portable radio equipment, pagers, facsimile machines, key telephone systems, cordless telephone sets, mainframe computers, small business computers, personal computers, supercomputers, workstations being computer hardware and/or peripherals, computer software, computer peripherals and terminals, word processors, computer output printers, hard disk drives (HDD), CD-ROM drives, monitors, data modems, routers, optical disk players, digital video discs and optical discs, pre-recorded audio, visual and video image digital video discs and optical discs, CAD/CAM and CAE systems, automated fingerprint identification systems, telemetry and remote control systems, communication network control systems, building automation systems, educational electronic equipment, computerized numerical control equipment, underwater ultrasonic application equipment, semiconductor manufacturing equipment and vacuum equipment, measuring and testing systems, memories, microcomputers, gate arrays, standard cells, integrated circuits (ICs), charge-coupled devices, transistors, gallium arsenide field-effect transistors, diodes, optical semiconductor devices, hybrid ICs, display tubes, fluorescent indicator panels, electroluminescent lighting panels, liquid crystal displays (LCD), printed wiring boards (PWBs), electronic tuners, laser application equipment, capacitors, relays, hermetic seals, electron tubes, gas lasers, variable resistors, keyboards, electrical connectors, television receivers, projectors, color plasma display panels, direct broadcasting satellite receivers, extended-definition television and radio receivers, video cassette recorders, compact disk players, surround amplifiers/decoders, video game units, parts and fittings for all the aforesaid goods

Consideration was given to this revised amendment at the time the application was examined on 1 September 1999.  The examiner stated the application could be accepted if the applicant agreed to various amendments to the goods and services in classes 35, 36, 38, 39, 41 and 42, and the outstanding amendments to class 9.  The examiner, however, was not prepared to allow in full the revised class 9 specification put forward by the attorney, reiterating that "computer software" per se was not encompassed by the scope of the applicant's original claim.  "Computer software" could only be included in the applicant's class 9 specification, he said, if it were qualified to "optically recorded and/or readable computer software". 

While agreeing to most of the amendments suggested by the examiner, Mr Munday again challenged the examiner's contention in relation to "computer software" in class 9.  The argument over the class 9 specification continued over the course of three further reports. 

On 23 May 2001, the applicant requested to be heard in relation to the scope of a claim comprising a class heading, and its request to amend the class 9 specification.  The matter came before me as Registrar's delegate in Sydney on 2 July 2001.  Mr Munday, with Ms Claire Fitzpatrick, of Spruson & Ferguson, Sydney, appeared on behalf of the applicant.

Submissions

At the hearing Mr Munday directed his submissions to the scope of a claim for a class heading, in particular whether the item "computer software" is encompassed by the applicant's original class 9 claim.  He requested that if I decided a class heading was limited in scope, that I also address the issue of what goods were excluded.

He argued that it was implicit in the Trade Marks Act and Regulations 1995 ('the Act and Regulations'), and it was the intent of Nice, that a class heading should be regarded as covering all of the goods or services in a class.  To support his view, he directed me to two decisions of the High Court of the United Kingdom, as well as two decisions made by delegates of the Registrar.

Raising issues of consistency, practicality and the public interest, Mr Munday suggested that the current official practice of TMO should be reviewed and a commercially realistic practice adopted.  Here, he referred me to a practice of the Trade Marks Office of the United Kingdom to substitute the wording of a class heading for a claim for "all goods".

In conclusion, he requested that I allow the applicant's requested amendment to class 9, and accept the application.

Discussion

As I understand it, the two matters for consideration are:

• the scope of a claim for a class heading;

• whether the applicant's request, dated 19 July 1999, to amend its class 9 specification of goods is allowable.

Scope of a claim for a class heading

Mr Munday's submissions on this issue were quite extensive.  They covered the legislation, including the effect of the Trade Marks Law Treaty ('TLT''); the intent of Nice; the available case law; TMO practice, and the public interest. 

The legislation

Mr Munday argued that although "class heading" is not defined in Part 2 of the Act and Regulations, it is implicit in the legislation, particularly regulations 3.1(1) and 4.4, that the class heading is synonymous with "all goods in a class" or "all services in a class".  Regulation 3.1(1), he contended, makes it plain that goods and services are to be divided into "the classes".  Regulation 4.4(6) provides that the goods and/or services must be specified in terms appearing in any listing of goods and services that is published by the Registrar; and made available for inspection by the public at the TMO and its sub-offices.

The only listing of any goods and services that is published by the Registrar, he contended, is Schedule 1.  That schedule, he continued, is a list of class numbers and class headings which implies that an application should be made in the form of a class heading.  He pointed out that to accord with the provisions of TLT, regulation 4.4(2) prohibits the use of expressions such as "all goods", but it was impractical, if not impossible, to list all of the goods or services in a class.  The only practical and sensible application of the legislation, he said, was to consider a class heading as covering all goods or services.  This, he submitted, was the intent of Nice.

The provisions of the Act and Regulations which deal with goods and services are sections 19, 27(1),(3), (4) and (5), 64 and 65(5); regulations 3.1, 4.4 and Schedule 1.  Those relevant to this issue are sections 19, 27(1), (3), (4) and (5), regulation 3.1, Schedule 1 and regulation 4.4.

Section 19 provides that a trade mark may be registered for goods or services, or both.

19  Certain trade marks may be registered

(1)       A trade mark may be registered in accordance with this Act in respect of:

(a)       goods; or

(b)       services; or

(c)       both goods and services.

(2)       The registration of a trade mark may be in respect of goods or services of more than one class

Note:   See subsection (3) for division into classes.

(3)       The regulations may provide for the classes into which goods and services are to be divided for the purposes of this Act.

Section 27 sets out the circumstances under which a person may apply for registration of a trade mark.

27     Application - how made

(1)       A person may apply for the registration of a trade mark in respect of goods and/or services if:

(a)  the person claims to be the owner of the trade mark; and

(b)  one of the following applies:

(i)the person is using or intends to use the trade mark in relation to the goods and/or services;

(ii)the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii)      the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to use the use by the body corporate of the trade mark in relation to the goods and/or services.

(3)       Without limiting the particulars that may be included in an application, the application must:  . . .

(b)       specify, in accordance with the regulations, the goods and/or       services in respect of which it is sought to register the trade mark.

(4)       Regulations made for the purposes of paragraph (3)(b) may apply, adopt or incorporate any matter contained in any listing of goods and/or services published by the Registrar from time to time and made available for inspection by the public at the Trade Marks Office and it sub-offices.

(5)       An application (other than an application under section 51 for the registration of 2 or more trade marks as a series) may be made in respect of goods and services of one or more of the classes provided for in regulations made under subsection 19(3).

Regulation 3.1 covers classes and class numbers.

Classification of goods and services

3.1      (1)       For the purposes of subsection 19(3) of the Act (which deals with the classification of goods and services):

(a)       goods are divided into the classes of goods described in column 2 of Part 1 of Schedule 1; and

(b)       services are divided into the classes of services described in column 2 of Part 2 of Schedule1.

(2)       Each class of goods or services described in Schedule 1 has:

(a)      a class number corresponding to the item number of that   class in column 1 of Part 1 or 2 of Schedule 1; and

(b)       a class heading corresponding to the description of that  class in column 2 of Part 1 or 2 of Schedule 1.

Schedule 1 sets out the classes of goods by the class number and class heading.

Regulation 4.4 provides the manner of specifying goods and/or services in an application:

Specification of goods and/or services

4.4     (1)       For the purposes of paragraph 27(3)(b) of the Act the following subregulations set out the manner of specifying, in an application for the registration of a trade mark, the goods and/or services in respect of which registration is sought.

(2)     The expression "all goods", "all services", "all other goods", or "all other services" must not be used in an application for registration of a trade mark to specify the goods and/or services in respect of which registration is sought.

(3)     The goods and/or services must be grouped according to the appropriate classes described in Schedule 1.

(4)     The applicant must nominate the class number that is appropriate to the goods or services in each group.

(5)     The groups must be listed in the order of their class numbers.

(6)     The goods and/or services must, as far as practicable, be specified in terms appearing in any listing of goods and services that is:

(a)       published by the Registrar; and

(b)       made available for inspection by the public at the Trade Marks Office and its sub-offices.

(7)     If any of the goods and/or services cannot be specified using terms referred to in subregulation (6), the applicant must provide sufficient information to enable the Registrar to decide the classification of the goods and/or services.

After considering the foregoing, I find I cannot agree with Mr Munday's contention that the Act and Regulations imply a class heading should be considered as covering all goods in a class.  Quite simply, I find nothing in the provisions to support such a view.

Regulation 3.1 merely provides for the division of goods and services into classes, according to Schedule 1.  In my opinion, it does not interpret the scope of a class heading or make any implications in that regard. 

Regulation 4.4 deals with the specification of goods and services.  Subregulation 4.4(2) prohibits the use of expressions such as "all goods"; subregulations 4.4(3), (4) and (5) provide that the goods must be grouped according to appropriate classes described in Schedule 1, and the appropriate class numbers must be nominated in order.  Subregulation 4.4(6) states that the goods and/or services must, as far as practicable, be specified in terms appearing in any listing of goods and services that is both published by the Registrar; and made available for inspection by the public at the TMO and its sub-offices.

Mr Munday's argument would appear to some extent to rest on the interpretation of the word "published".  The Macquarie Dictionary defines the present tense of the verb "publish" as:

publish:

verb (t)

1.To issue, or cause to be issued, in copies made by printing or other processes, for sale or distribution to the public, as a book, periodical, map, piece of music, engraving or the like.

2.to issue to the public the words of (an author)

3.to announce formally or officially, proclaim, promulgate

4.to make publicly or generally known

5.Law (in the law of defamation) to communication (the defamatory statement in some form) to some person or persons other than the person defamed.

It is evident from the above, that "published by the Registrar" includes "made available to the public by the Registrar".  Therefore, any listing of the goods of services which the Registrar makes available to the public fall under the provisions of regulation 4.4.  This includes lists made available via an online database or via the internet. 

Currently, the Registrar makes available at the IPAustralia State Offices, in both hard copy and on the TMO electronic database, the list of goods and services appearing in Nice and a list of Office Determinations, which is a list of goods services not included in Nice but on which the Registrar has determined the appropriate classification.  Schedule 1, which is simply a list of classes and class headings taken from Nice, is published as part of the Act and Regulations.  All lists are available for inspection or search via IP Australia's Internet website, ipaustralia.gov.au.

To conform to the provisions of regulation 4.4(6), therefore, an applicant may specify its goods and/or services by the broad generic terms which appear in a class heading, or by more specific descriptions included in Nice or the list of Office Determinations.

Mr Munday correctly asserts that the provisions of regulation 4.4(2) were included in the current legislation in order to comply with TLT.  That treaty establishes maximum formal requirements that may be imposed on trade mark applicants and registered owners by member countries.  Although Australia did not become a party to TLT until 1998, the provisions of the Act and Regulations were framed to meet TLT requirements.  Article 9(1) of TLT reads:

Article 9(1) Goods and/or Services

Each registration and any publication effected by an Office which concerns an application or registration and which indicates goods and/or services shall indicate the goods and/or services by their names, grouped according to the classes of the Nice Classification, and each group shall be preceded by the number of the class of that Classification to which that group of goods or services belongs and shall be presented in the order of the classes of the said Classification.

Thus, regulation 4.4(2) places a limitation on the scope of the goods or services allowed within a class, and regulation 4.4(6) places an onus on an applicant to indicate its goods or services by name.  The underlying intention of these provisions is that there is an onus on a trade mark applicant to specify its goods or services unambiguously.

Mr Munday argued that it was the intention behind Nice that a class heading was equivalent to "all goods or services in a class", but I have found nothing to support this contention.

The following is set out at page 1 of Nice (7^th Edition), Part 1, List of Goods and Services in Alphabetical Order:

Guidance for the User

1.        The class headings indicate in a general manner the fields to which

the goods and services in principle belong.

And at page 3:

General Remarks:

The indications of goods or services appearing the class headings are general indications relating to the fields to which, in principle, the goods or services belong.  The Alphabetical List should therefore be consulted in order to ascertain the exact classification of each individual product or service.

It is clear from the above that the class headings are general indications only.  It is worth noting that under the heading Guidance for the User, at page 2, paragraph 8, Nice highly recommends using the indications appearing in the Alphabetical List when qualifying goods or services:

8.      For the purposes of the registration of marks, it is highly recommended to use the indications appearing in the Alphabetical List when qualifying goods or services, avoiding using the vague expressions or the general terms, which are not sufficiently qualified.

In short, I find nothing in the Act and Regulations or Nice which establishes an intention that a class heading should be viewed as equivalent to "all goods or all services" in a class.  Indeed, two factors operate against such a conclusion - the explanations in Nice which make it apparent that a class heading is indicative only of the goods or services falling in a class, and the onus the Act and Regulations place on a applicant to clearly specify its goods or services.

The case law

Mr Munday referred me to several cases, including two of the High Court of the United Kingdom, which he said provided authority for his argument that the class heading was shorthand for all goods in a class. 

The first of those cases is Newton Chambers & Co Ltd v Neptune Waterproof Paper Co Ltd (1935) 52 RPC 399 (Ch D) ('Newton v Neptune').  In that case, Luxmore J held that a registration for the class heading in class 3 must have covered medical toilet paper since there was no other class to which the good could belong.  At 406 His Honour observed:

An unconditional and unlimited registration for a particular class of goods confers the right to that Trade Mark for all goods in the Class whenever they may be included . . .

I accept that Newton v Neptune, supra, may have provided authority at an earlier time.  But in the 70 years that have passed since the decision was made, many changes have occurred, including introduction of an international classification system and considerable revision of trade marks law.  The Nice Agreement was formalised in 1957, and the 1^st Edition of the International Classification of Goods was published in 1963.  Australia introduced a new trade marks Act in 1995, and became a party to TLT in 1998.

Nice makes it plain that the class headings are merely general indications relating to the field to which, in principle, the goods or services belong.  TLT prohibits the use of vague expressions such as "all goods" and establishes that an applicant must list its goods or services by name.  In line with the provisions of that Treaty, the current trade marks legislation prohibits the use of expressions such as "all goods in the class", and places the onus on an applicant to clearly specify its goods.  In view of these changes, Newton v Neptune, supra, can no longer be considered as authoritative.

The second case on which Mr Munday relied was the "Acetest" Trade Mark [1967] FSR 315 (Ch D). In that case, Lloyd-Jacob J considered whether "diagnostic substances used in testing samples from the body" fell under the generic description "pharmaceutical preparations" included in the class heading. He made no determination as to the scope of class headings in general, or whether such should be viewed as synonymous with "all goods in the class".

I note that both of the above cases have been considered by D R Shanahan in Australian Law of Trade Marks and Passing Off, Australian Trade Mark Law and Practice (2^nd Edition) The Law Book Company Limited, 1990.At page 52 he states:

However, the view taken in these cases does place some strain on the language of certain of the class headings, which appear to be illustrative rather than exhaustive descriptions of the goods or services in the particular class.  An example is class 26, which is headed "lace and embroidery; ribbons and braid; buttons, hooks and eyes; pins and needles; artificial flowers" but also includes goods such as wigs and zip fasteners.  Moreover, the headings are certainly not precise descriptions of all products falling with the class for, as the classification guide itself acknowledges, the broad wording of a heading may describe goods that actually fall outside the class in question.  This is so, for example, of class 25 which is compendiously headed "clothing, footwear, headgear", whereas "protective clothing" is placed in class 9.  Thus it may be unwise to rely on general wording in a class heading as necessarily covering a particular product.

Mr Munday pointed me also to two decisions of delegates of the Registrar, as evidence that decision makers routinely consider class headings as covering all goods in a class.  I do not agree with Mr Munday's interpretation of either case.

In Societe Francaise Des Viandes Et Salaisons Du Pacifique v Societe Des Produits Nestle SA 15 IPR 89, Deputy Registrar Hardie considered the manner in which an applicant's specification comprising all goods in class 29 could be amended in order to overcome an opposition based on a conflicting trade mark in class 29. In doing so, she used the class heading as a guide to determine the goods covered by class 29. It is not evident that she made any determination as to the scope of a claim for all goods, or gave any consideration to that issue.

Hearing Officer Forno adopted a similar approach in Fountain Life Products (Australia) Pty Ltd v Nutri-Metics International Holdings Pty Ltd [1997] ATMO 46 (28 August 1997) where he was required to determine if the opponent's goods comprising the class heading in class 3, overlapped with the applicant's class 5 specification. He used the class heading as an aid in determining the kinds of goods included in class 3 but made no determination that the scope of a claim for a class heading is synonymous with all goods or services in a class.

In my view, both of these decisions merely illustrate that the class heading may be, and is, used as guide to the goods or services falling within a particular class.

In summary, I do not find any of cases put forward to be persuasive, or authority for Mr Munday's argument.  Newton v Neptune, supra, is the only case Mr Munday referred to that actually considered the scope of a class heading.  As I have indicated earlier, I do not consider that case as authoritative in view of the changes to the trade marks registration system that have occurred since it was decided.  In my opinion, the scope of the applicant's claim for goods and services must be viewed in the context of the legislation, and system of classification currently applicable. 

Office practice and public interest

Mr Munday made submissions on what he considered to be issues of inconsistency and impracticality associated with the current practice of TMO.  He suggested that if terms or phrases in the class headings are seen as descriptive of only some of the goods in a class, doubt arises as to what goods are included.  This leads to difficulties in interpretation of the scope of claims.  He suggested that official practice ought to be reviewed as it was not in the practical interests of trade mark searchers, examiners, trade mark owners and attorneys.  In line with the approach favoured by Australian courts, he said, the Registrar should adopt a commonsense and commercially realistic practice in dealing with issues of examination and classification.  By way of support, he referred me to the observations of Lord Shaw in W & G Du Cros Ltd case [1913] A.C. 624 at 631:

Speaking for myself, I should describe the duty of the Registrar as this: that examining the particular facts, he has also to survey the possible confusion or difficulties which might arise in consequence of the grant of the trade mark, or the possible impairment of the rights of innocent traders to do that which, apart from the grant, would be their natural mode of conducting their business.

And the following comments of Younger J in Re Application by Standard Woven Fabrics Company (1918) 35 RPC 52 at 58:

Prima facie, this Register is created by this Act for the purposes of enabling trade marks to be put upon it;  and it would be very unfortunate if bona fide and honest applications for trade marks were to be refused on grounds which were fanciful and which, in a business sense, were unsubstantial.

I agree with Mr Munday that TMO's practice should be as far as possible practical and consistent.  It is simply not in the public interest for a public authority to indulge in ambiguity or inconsistency.  Users of the trade marks system are entitled to expect consistent, predictable and fair treatment. 

Official practice relating to the treatment of claims consisting of a class heading was set out at Part 14 of the TMO Draft Manual of Practice and Procedures ('the Manual') (December 1995 edition) at paragraph 4.6.4:

4.6.4  Any change that occurs to the classes covered by the application must be entered on the trade marks database as soon as possible.  Care must be taken to ensure that amendments are not made if they would widen the specification.  It should also be noted that the class headings are only a general indication of the goods or services within a class and should not be construed as meaning all the goods or services which will be classified in a particular class.  (An applicant claiming a class heading in their specification would normally have to justify such a broad claim.)  An application that contains a specification comprising the class heading is considered to only cover the descriptions of goods or services specified and would not, for example, cover parts and fittings.  This needs to be borne in mind if international priority claims need to be verified.

Part 14 of the Manual was updated in December 2001 to take account of changes brought about by the introduction of the Nice 8^th edition.  Although classes have been added to the classification system, there has been no change in the understood function of class headings.  The current Manual now explains at paragraph 6.5:

6.5 The scope of class headings

The section headed Guidance for the User in the Nice 8^th edition gives information on the function and scope of the class headings.  The opening sentence states "The class headings indicate in a general manner the fields to which the goods and services in principle belong".  This heavily qualified statement makes it clear that a claim for a class heading does not equate to a specific claim for all the particular goods or services placed in that class. An application which claims a class heading covers only the goods or services actually specified in the heading, or clearly encompassed by the heading.  Such a claim does not cover all the items in the class, and is not equivalent to a claim for all goods or all services.  This is particularly relevant if an amendment is requested which mentions goods or services not specifically referred to in the class heading.  Such an amendment should be considered carefully as it may in fact increase the scope of the application (paragraph 4.8.4 gives an example of this) and this therefore may not be acceptable under section 65 of the Act (see paragraph 4.2).  A trade mark owner's rights derive from the set of goods or services in respect of which its trade mark is registered.  To this end, it is in the public interest that such goods or services are clearly and unambiguously stated.  This is the intention of the provisions of regulation 4.4, and is, in my view, supported by TMO official practice.

A trade mark owner's rights derive from the set of goods or services in respect of which its trade mark is registered.  To this end, it is in the public interest that such goods or services are clearly and unambiguously stated.  This is the intention of the provisions of regulation 4.4, and is, in my view, supported by TMO official practice.

A practice whereby a claim for a class heading is considered to cover all of the goods or services in a class may well be in the interests of those very familiar with the trade marks system.  Trade mark attorneys, owners of multiple trade marks, and trade mark examiners fall into this category.  But such a practice would leave aside the interests of first-time or low volume users of the system, who are unlikely to be so familiar with the system as to be able to recognise a class heading, let alone be aware that it stood for all of the items in a class.  Such a practice, I consider, would lead to the very ambiguities and inconsistencies of interpretation which Mr Munday denounces, and would clearly not be in the public interest.

Mr Munday claims that official practice is not consistently applied.  He suggests that examiners and hearing officers regularly consider a class heading as synonymous with "all goods", particularly when considering issues under section 44.  However, he has provided no evidence of this and I am unable to comment further in this regard. 

He also argued that TMO's practice in relation to the scope of class headings is inconsistent with its current practice to accept a claim for a class heading without query.  To my mind, the issues are quite separate.  One issue relates to interpretation of the scope of a specification, whereas the other relates to the onus placed on a trade mark applicant to use, or have an intention to use, its trade mark.

The provisions of regulation 4.4(6) are such that an applicant may apply for a specification comprising a class heading.  Section 27(1)(b) requires an applicant to use or intend to use its trade mark in respect of all of the goods or services claimed.  Because of the broad range of goods or services normally covered by a class heading, it was the practice of TMO not to allow a claim for a class heading unless an applicant provided declaratory support that it intended to use its mark in respect of all of the goods or services claimed.  This was explained at paragraph 7 of Part 14 of the Manual (December 1995 edition).  TMO revised this practice in February 2001 and claims comprising a class heading are now allowed without the need for declaratory support - Official Notice concerning this appeared in the Australian Official Journal of Trade Marks dated 15 February 2001. The TMO's more lenient approach to compliance with section 27(1)(b) of the Act and Regulations does not impact on the interpretation of the scope of a claim, and I fail to see how any inconsistency between the two practices can be inferred.

Mr Munday further suggested that official practice might raise some problems in the examination and amendment of International applications.  My understanding is that under the Madrid Protocol an applicant must indicate the goods and services in respect of which protection of the mark is claimed.  Although the International Bureau may determine the particular class the goods and services of an application may fall into, the indication of classification does not bind the Contracting parties with regard to the determination of the scope of the protection of the mark.  I refer to Article 3(2) and Article 4(1)(b) of the Madrid Protocol.  Therefore, the scope of a claim for a class heading made in respect of an International application received in Australia would be a matter for determination by the TMO. 

To complete his argument, Mr Munday alerted me to a current practice of the UKTMO to substitute the class heading for a specification worded "all goods" or "all services".  Although a practice of the UKTMO is not binding on this office, for the sake of completeness I will address the issue.  While I have no reason to doubt Mr Munday's claim that a class heading is substituted for "all goods" or "all services", it would appear from the United Kingdom Practice Works Manual, Chapter 5 that the reverse practice is not applied.  A specification comprising a class heading is not taken as covering all goods in a class, but is regarded as being limited in scope to the generic items listed.  This is because Nice makes it quite clear that a class heading is indicative only, and is not an exhaustive list of goods or services in a class.

Conclusion

I find there is nothing in the Act and Regulations to support Mr Munday's contention that a claim for a class heading covers all goods or services in a class.  Regulation 4.4 places an onus on an applicant to clearly list its goods.  Nice makes it apparent that the heading to a class is intended to convey general indications only relating to the fields to which goods and services belong.  Thus, a class heading cannot be regarded as equivalent to "all goods or services in a class" but must be interpreted as being limited in scope to the goods or services which are covered by the generic descriptions included in the class headings.

I think it is worth noting that in 1965 the practice of claiming class headings under the 1955 legislation was commented on by the then Assistant Registrar of Trade Marks in Re Barnes Milling Ltd's Trade Mark (1965) 35 AOJP 844.  At 845 he observed:

Doubtless many applicants reiterate on their application those goods listed under the particular class specified in the Fourth Schedule to the Trade Marks Regulations.  This practice is referred to as a claim for a class heading.  I have no doubt that the term class heading is universally used and readily understood by trade mark lawyers, trade mark agents and by most of those for whom they act.  There is an ever-present danger of course that when applicants claim a class heading instead of specific goods, a tribunal might subsequently find that the specific goods a registered proprietor might think are covered by his registration are not, in fact, embraced by the goods comprehended in the class heading which the proprietor nominated on his application.

As a trade mark owner's trade mark rights derive from the goods and/or services in respect of which registration is sought, specifications of goods should be clear and unambiguous.  Interpretation of a class heading as something beyond the generic descriptions listed in that heading could lead to ambiguities, and this would not be in the public interest.

What goods are excluded from a claim for a class heading?

Mr Munday has noted that it is simply not fair for the TMO to limit the scope of a specification comprising the class heading without notifying what goods are not covered.  He has asked me to address this issue.

To provide a list of goods not covered by the scope of descriptions included in a particular class heading at any given time it would, I believe, require technical expertise and foresight of considerable magnitude.  Technology moves at a very rapid pace and new goods and services are being developed daily.  I do not have the required expertise to be able to provide a comprehensive list.  In addition, I do not consider it is within the scope of my delegation to make such a determination in the context of this decision.

I consider it is sufficient for me to conclude that a specification consisting of a class heading is limited in scope to items falling under the broad generic descriptions included.  Items falling outside those broad descriptions would thus not be included.

Amendment of class 9 specification

The provisions of the Act and Regulations dealing with amendment of a specification of goods are Section 63, 64 and 65 and Regulation 6.2.

Section 63 provides that the Registrar may amend an application.  Section 64 allows for correction of a clerical error or an obvious mistake before particulars of the application are published.  Regulation 6.2 provides the timeframe within which such amendments may be made.  Section 65 deals with amendment after publication.

The trade mark application was filed on 9 March 1999. Particulars of the application were published on TMO electronic database and filing approved on 16 March 1999.

The applicant firstly requested amendment of its class 9 specification on 31 March 1999.  As this was after the date of publication, that amendment could only be considered under section 65.  A further revised amendment was sought on 19 July 1999.  Again this was after the date of publication, and the amendment could only be considered under section 65.

So far as it is relevant to this decision, section 65 reads:

65       Amendment after particulars of application have been published

(1)       If the particulars of the application have been published under

section 30, the application may be amended as provided in

this section.

(3)       An amendment may be made to correct a mistake of fact or an

error in the classification of any goods or services specified in

the application.

(5)       An amendment may be made to any other particular specified

in the application unless the amendment would have the effect

of extending the rights that (apart from the amendment) the

applicant would have under the registration if it were granted.

In the context of this decision I will deal only with the revised amendment of 19 July 1999, which falls under section 65(5).  The question to be considered is whether the amendment extends the scope of the rights that (apart from the amendment) the applicant would have under the registration if granted.

The item in contention is "computer software". 

"Software" is defined in The Macquarie Dictionary as:

noun

1. The collection of programs loaded externally which cause a

computer to perform a desired operation or series of operations

(opposed to hardware).

The term is further defined in Foldoc Computing Dictionary [online] Available from wombat.doc.ic.ac.uk/foldoc [accessed 6 March 2002] as:

The instructions executed by a computer as opposed to the physical device

on which they run (hardware).

Considering the above definitions, I do not consider "computer software" per se is covered by the scope of any of the descriptions listed in the applicant's specification.  "Magnetic data carriers" and "recording discs" may be the media on which computer software is recorded, but they are not in themselves "computer software".  Amending the applicant's specification to include "computer software" would therefore amount to a widening of the applicant's specification and potential registration rights, and thus would not meet the requirements of section 65.

Following the hearing, I indicated to Mr Munday that I would be prepared to accept an amendment to the applicant's class 9 specification whereby the items "magnetic data carriers" and "recording discs" were replaced with "magnetic data carriers and recording discs, being recorded and unrecorded media, including such media prerecorded with computer software".  I indicated I would accept the application for an amended specification in class 9, as well as the specifications in class 7, 10, 11, 35, 36, 37, 38, 39, 40, 41 and 42 already agreed to.  The applicant did not agree to amend its class 9 goods as proposed.

Section 33 of the Act provides:

33       Application accepted or rejected

(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)       the application has not been made in accordance with

this Act, or

(b)       there are grounds for rejecting it.

There are no grounds for rejecting this application, and the application has been made in accordance with the Act.  I must therefore accept the application with the amendments already agreed to by the applicant.

Decision

1. I find a specification comprising a class heading is limited in scope to those goods or services, which are encompassed by the descriptions listed in the specification.

2. The applicant's request to amendment its class 9 specification of goods by inclusion of the words "computer software" would have the effect of extending the rights that (apart from the amendment) the applicant would have under the registration if granted, and this would not meet the requirements of section 65(5) of the Act.  I therefore refuse to allow the amendment.

3. Unless, within one month from the date of signature of these reasons, the applicant appeals either or both of the decisions at paragraphs 1 and 2 above, I will accept the application in respect of the following goods and services:

Class	Specification
7	Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); postal automation systems; industrial robots
9	Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment; the foregoing goods including electric and electronic apparatus and instruments, all for the receiving, transmitting, storing, relaying, inputting or outputting of data, digital central office switching systems, digital private exchanges (digital PBX), packet switching systems, fiber-optic transmission systems, digital transmission systems, multiplexors, submarine cable systems, CATV (Cable Television) systems, teleconferencing systems, mobile communication systems, microwave communication systems, satellite communication systems (satellite-mounted and ground support communications equipment), laser communications equipment, television and broadcasting equipment, video and studio equipment, aircraft and space electronic equipment, rocket guidance and control equipment, radio navigation and radar equipment, defence electronic systems, mobile and portable radio equipment, pagers, facsimile machines, key telephone systems, cordless telephone sets, mainframe computers, small business computers, personal computers, supercomputers, workstations being computer hardware and/or peripherals, computer peripherals and terminals, word processors, computer output printers, hard disk drives (HDD), CR-ROM drives, monitors, data modems, routers, optical disk players, digital video discs and optical discs, pre-recorded audio, visual and video image digital video discs and optical discs, CAD/CAM and CAE systems, automated fingerprint identification systems, telemetry and remote control systems, communication network control systems, building automation systems, educational electronic equipment, computerized numerical control equipment, underwater ultrasonic application equipment, semiconductor manufacturing equipment and vacuum equipment, measuring and testing systems, memories, microcomputers, gate arrays, standard cells, integrated circuits (ICs), charge-coupled devices, transistors, gallium arsenide field-effect transistors, diodes, optical semiconductor devices, hybrid ICs, display tubes, fluorescent indicator panels, liquid crystal displays (LCD), printed wiring boards (PWBs), electronic tuners, laser application equipment, capacitors, relays, electron tubes, gas lasers, variable resistors, keyboards, electrical connectors, television receivers, projectors, color plasma display panels, direct broadcasting satellite receivers, extended-definition television and radio receivers, video cassette recorders, compact disk players, surround amplifiers/decoders, video game units, parts and fittings for all the aforesaid goods
10	Surgical, medical, dental and veterinary apparatus and instruments
11	Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying and ventilating, including kitchen appliances in this class; electroluminescent lighting panels
35	Advertising services; promotional services in relation to the goods and services of others; consultant services in the field of business; provision of business information; business administration and business statistics; sales promotion; provision of information on business, business administration and business statistics, commercial and sales promotion in CD-ROM format or via local and global computer information networks; rental of office machines and equipment; importing and exporting of goods of others; import and export agency services; business management and consultation services, including tracing the transportation, warehousing, inventory control, transhipment and distribution of goods; store services being retailing and wholesaling; sale of computer programs via local and global computer information networks; sales of on-line books and magazines on a wide range of topics
36	Banking services, credit card services, financial services, account opening services, account settlement services, dealing services for stocks and bonds, financial transfer services and provision of any of the above services via local and global computer information networks; custom brokerage services; insurance; real estate services; consultation and business arrangement for custom clearance between shippers and carriers being customs brokerage services
37	Construction, repair, maintenance, fitting and installation of electric and electronic apparatus and instruments; repair of computer software programs and web sites; building construction
38	Communication services for the transmission, transfer and dissemination of electronic mail, video images, including digital information data via/on interactive television, audio, video and multimedia presentations; consultant and advisory services relating to communications networks, computer information networks, telecommunication apparatus, and communication apparatus
39	Services being the transportation, packaging, distribution, storage and delivery of goods; inspection of goods for transportation; travel agency services; consultation and arranging services of transportation, packing, distribution, storage, parcelling and parcel delivery of goods, all being services between shippers and carriers
41	Services being education, entertainment, amusement, recreation, culture, art, music, sports; provision of information in the fields of culture, education, art, music, sports, entertainment and amusement; provision of the aforesaid information via local and global computer information networks
42	Computer services; providing access to and leasing access time to computer database connected with local and global computer information networks; providing access to local and global computer information networks for the transfer and dissemination of a wide range of information; providing access to an electronic bulletin board in a wide range of fields; providing on-line facilities for real time information with computer users concerning a wide range of topics in the nature of chat rooms; technical services and technical consulting services for creating, designing and maintaining web sites for others; technical services and technical consultation for computer programming and computer hardware; services being for technical supervision and inspection of electronic apparatus and instruments including electronic computers; rental of electric and electronic apparatus and instruments; provision of food and beverages; providing temporary accommodation; telecommunication gateway services being internet access provider services

Frances Aarnio

Senior Examiner

11 April 2002