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A trade mark registration is an intellectual property asset that you can use to protect a key identifier for your business, such as your business name or logo. However, it can only protect you regarding the goods or services you actually trade in. When you apply to register your trade mark, you need to specify these goods and services in your trade mark specification. Therefore, this article will go through five tips for your trade mark goods and services specification.

1. Do Not Make Your Specification Too Broad

Your trade mark registration scope depends on the breadth of your goods and services specification. The more goods or services you designate, the more comprehensive your potential protection. However, if your specification is too wide, the Intellectual Property Office of New Zealand (IPONZ) is less likely to approve your trade mark application.

When IPONZ considers trade mark applications, they do so with your trade specification as a frame of reference. So, they compare it against other trade marks for the same goods or services to determine whether the trade marks are identical or confusingly similar and cover the same or similar goods or services. If your trade mark specification is too wide, this limits IPONZ’s ability to register future trade marks similar to yours. 

As a result, they will consider whether it is commercially realistic for you to trade in the goods or services you specify for your trade mark. To improve your chances of approval, ensure that your specification only applies to the goods or services you have an honest intent to trade in.

2. Register Your Trade Mark for All Relevant Goods or Services

On the other hand, you do not want to make your specification too narrow. Doing so limits your scope of protection, and reduces your powers for pursuing those that may encroach on your rights. Therefore, you need to consider what goods or services you realistically will apply your trade mark to and choose those for your specification. Think about what your customers pay you for and what exactly you provide for them. 

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3. Look at Which Classes Your Competitors Use

As a part of your trade mark specification, you need to categorise the goods or services you provide under your trade mark into their respective classes. In particular, IPONZ uses the Nice Classification system for categorising the goods or services of trade marks into similar sections. So, you need to find out what classes your goods or services fall into, and detail those in your trade mark application. There are 45 classes in total, with classes 1 to 34 relating to goods and 35 to 45 relating to services.

If you are unsure about which classes to choose, you can look up similar traders on the trade marks register to determine what classes they have used in their specification. This can give you a good indication of the types of goods and services traders in your industry include within the scope of their trade mark applications.

Note that you cannot use a class heading to describe the goods or services you want your trade mark registration to apply to. Ensure that you are specific with the terms you use.

4. Keep Your Specification Clear

In your trade mark application, you have the option to describe what goods or services you want your trade mark registration to cover. Notably, you can do so in your own words. However, your description needs to be clear enough that someone can easily understand the scope of your trade mark protection. If your trade mark examiner is unclear about the meaning of a particular term or phrase, they may detail this in a compliance report.

To make the process easier, IPONZ provides a trade mark specification builder. This tool lets you search up keywords relating to your specification, and returns pre-approved terms. You can then use these to build up your description. 

If you only use these pre-approved terms, IPONZ will reduce your trade mark application fee from $100 down to $70 per class (excluding GST).

5. Seek Advice From a Specialist

Deciding what details to put in your trade mark goods and services specification can become complex and technical. Given that this determines the scope of your trade mark protection, you need to duly consider what goods or services you include in your description. A trade mark specialist can help you in this process. They would have applied for other trade marks before, and will have valuable insight into what goods and services your trade mark should cover. They will also ensure that your specification is clear enough for your examiner to understand and that you have classified your goods and services correctly.

Key Takeaways

You need to ensure your trade mark specification is not too broad, nor too narrow. You should only specify goods or services that you have an honest intent to trade in. Otherwise, you run the risk of IPONZ rejecting your trade mark application or your application being subject to opposition or attack by third parties.

If you need help with your trade mark specification, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0800 005 570 or visit our membership page.

Frequently Asked Questions

What is a trade mark?

A trade mark is a “badge of origin”, that links your goods and services to your business. Customers use it as a key identifier to recognise you by. Common examples include business names and logos.

What is a trade mark specification?

Your trade mark specification details the goods or services that your trade mark application covers. These are goods or services that you trade in, and they determine the scope of your registered trade mark rights.

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