NEC Corporation

NEC Corporation applied to register the trade mark NEC. The application, filed in March 1999, covered a broad range of goods and services across multiple classes, including Class 9 for scientific and electrical apparatus, and various service classes. NEC sought to amend its specification of goods in Class 9, which led to a dispute with the Trade Marks Office (TMO) regarding the scope of claims made under a class heading and the specific wording of the proposed amendments. The matter was heard by a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were the scope of a claim for a class heading in a trade mark application, and whether the applicant's requested amendment to its Class 9 specification of goods was permissible. Specifically, the delegate had to determine if a class heading should be interpreted as encompassing all goods or services within that class, and whether the term "computer software" was implicitly covered by the original Class 9 claim, or if it required specific qualification as proposed by the TMO.

The delegate considered arguments that a class heading should be treated as a shorthand for claiming all goods or services within a class, citing international practice and the practical difficulties of listing every item. However, the delegate found no support for this interpretation within the relevant Australian legislation, the *Trade Marks Act and Regulations 1995*. The delegate concluded that Regulation 3.1 simply divided goods and services into classes and did not define the scope of a class heading. Furthermore, Regulation 4.4, which governs the specification of goods and services, prohibits the use of terms like "all goods" and requires specification in terms appearing in published listings, or with sufficient information for classification. The delegate found that the applicant's argument that "computer software" was implicitly covered by the original Class 9 claim was not supported by the legislative framework.

The delegate determined that the applicant's contention that a class heading implicitly covers all goods or services within a class was not supported by the *Trade Marks Act and Regulations 1995*. Consequently, the delegate found that the applicant had not demonstrated that "computer software" per se was encompassed by the original Class 9 claim. The delegate indicated that the amendment would only be allowed if qualified, for example, to "optically recorded and/or readable computer software", as per the TMO's practice. The delegate did not make final orders in the provided text but indicated the path forward for the amendment.