Changes to Trade Marks Office practice

Changes to Trade Marks Office practice

In summary

  • Approval for class headings except class 42
  • Broad claims acceptable for certain services – education, entertainment, retailing
  • Change of practice in relation to "information and retailing services"
  • Electronic scanning of documents by the Trade Marks Office

Broad claims and claims for class headings

When filing an application for a trade mark the onus is on the applicant to appropriately specify the goods or services in relation to which the trade mark is or will be used.

Since the introduction of the Trade Marks Act 1995, the Registrar of Trade Marks has taken the view that trade mark applicants were unlikely to be using or intending to use their trade marks on the full range of services covered by the descriptions "Education", "Entertainment", "Providing of Training" and "Retailing" or on the full range of services covered by the NICE Classification class headings for classes 37, 40, 41 and 42.

In the course of examination, these items were therefore routinely queried and applicants were asked to (1) specify their particular area of interest, (2) justify the wide claim by through examples use OR (3) provide a statutory declaration confirming their intention to use the trade mark on the full description.

The Registrar has recently reviewed his practice in relation to these sorts of claims and has decided to streamline the examination process by:

  • accepting the class headings for classes 37, 40 and 41 (it has been the practice not to query the class headings for classes 1-36, 38 and 39 for some time now).
  • accepting the class heading for class 42 EXCEPT for the words "services that cannot be placed in other classes".
  • accepting the terms "Education", "Entertainment", "Providing of Training" and "Retailing" without qualification.

Classification changes by the Trade Marks Office

1. Broad claims for information services

Trade Mark applications by search engine providers, internet access providers, and those hosting internet sites typically include claims for the supply of information on a wide range of topics.

It is the Office's policy to request that the subject matter of the information be specified so that the claim can be classified. This will continue to be Office policy.

Where however the applicant's primary service is the transmission of information or the publication of information or the hosting of a website on which information is available, an acceptable claim can be made in a single class in relation to wide ranging information services, if appropriate wording is used. The Office would accept the following claims for instance, without querying their scope:

  • CLASS 38: Transmission of information on a wide range of topics, including online transmission
  • CLASS 42: Electronic publication of information on a wide range of topics, including online publication
  • CLASS 42: Provision of access to databases containing information on a wide range of topics, including provision of online access

Statements of services along these lines will allow applicants to make broad claims in relation to information, without having these claims queried. Where there are no other matters to be dealt with, the use of such claims will lead to prompt acceptance of these applications.

2. Claims for "retailing of goods and services"

It is now the Office's policy to allow unqualified claims for retailing and/or wholesaling in class 35. This policy however only relates to claims made in relation to goods, the terms "retailing" and "wholesaling" being universally recognised trade terms in that context.

"Retailing" is not a broadly recognised term when used in relation to services. The Office will query claims for "retailing of services", asking for the services themselves to be specified, for the reference to retailing to be deleted, and for the application to be transferred to the class/es appropriate to the specific services being claimed. A claim for "retailing of services" will therefore prevent the prompt acceptance of an application, even if there are no other matters preventing its acceptance.

3. Claims for "services relating to…"

In general, applications claiming "services relating to [other services which are then specified]" do not meet Office requirements, as the services themselves which are being claimed have not been stated, only the services to which these unspecified services relate.

For this reason the phrase "services relating to" will always be queried, and its use will prevent the prompt acceptance of an application, even if there are no other matters preventing its acceptance.

Electronic scanning of documents

In mid-March, the Trade Marks Office introduced a system for the electronic scanning of documents called TRACS (Trade Mark Records, Applicant and Correspondence System). TRACS will be used for all new filings and for any correspondence relating to those filings.

Historically, with new filings, the application form has been sent to the applicant/attorney along with the notice of filing. This has enabled identification of the trade mark to which the notice relates. Soon after the implementation of TRACS, we will be introducing a new filing notice, that will have attached to is a "status report" produced from ATMOSS (the on-line searching system available on the Internet). This report will contain all the data captured on the mainframe and, in the case of trade marks comprising a device or fancy script, a thumbnail representation of the trade mark.

The issuing of the ATMOSS status report along with the filing notice will mean that we will no longer photocopy and forward the application form with the filing notice. In the event of concern about a particular filing date, a copy of the application form captured on TRACS can be obtained and printed.

It is anticipated that the new notice will be introduced in early April 2001.