Pertaining to the Classification of Goods and Services
|
- WIPO's Recommendation No. 21 (Circular No. 27/2007, dated 25 July 2007)
- Providing on-line forums (Circular No. 27/2007, dated 25 July 2007)
- Operating chat rooms (Circular No. 27/2007, dated 25 July 2007)
- Providing chat rooms (Circular No. 27/2007, dated 25 July 2007)
- Providing discussion services on-line (Circular No. 27/2007, dated 25 July 2007)
- Arranging and conducting of colloquiums (Circular No. 27/2007, dated 25 July 2007)
- Arranging and conducting of conferences (Circular No. 27/2007, dated 25 July 2007)
- Arranging and conducting of congresses (Circular No. 27/2007, dated 25 July 2007)
- Arranging and conducting of seminars (Circular No. 27/2007, dated 25 July 2007)
- Arranging and conducting of symposiums (Circular No. 27/2007, dated 25 July 2007)
- Arranging and conducting of conventions (Circular No. 27/2007, dated 25 July 2007)
- Arranging and conducting of exhibitions (Circular No. 27/2007, dated 25 July 2007)
- Providing access to databases (Circular No. 33/2007, dated 26 September 2007)
- Rental of access time to the internet / global computer networks (Circular No. 33/2007, dated 26 September 2007)
- Providing of user access to the internet / global computer networks (Circular No. 33/2007, dated 26 September 2007)
- Rental of access time to databases (Circular No. 33/2007, dated 26 September 2007)
(Circular No. 38/2007, dated 14 November 2007)
Registered trade marks which are ordinary dictionary words are allowed to be used in specifications of goods and services as a descriptor. This practice is consistent with our previous journal notice on the use of the term, “Internet”, which has become generic. However, words which are invented and have been registered as trade marks will not be acceptable in specifications of goods and services. Instead, applicants should use ordinary English words to describe their goods and services. For example, a specification of goods which reads "bluetooth-enabled devices for communications, namely telephones, handsets, headsets, speakers, microphones and earphones” should be amended to “devices for communications which are enabled by short range radio technology, namely telephones, handsets, headsets, speakers, microphones and earphones”.
(Circular No. 32/2006, dated 8 November 2006)
The ninth edition of the NICE Classification for the purposes of the registration of trade marks will come into effect on 1 January 2007. Copies can be ordered online at http://www.wipo.int/ebookshop?lang=eng
The majority of the changes involve Classes 14, 20, 21, 26, 34, 42 and 45 but minor changes and additions have also been made to other classes. For more information regarding the specific changes, please refer to the Nice Union Report CLIM/CE/20/ which is obtainable at the following link.
The eighth edition of the NICE Classification shall still apply to all applications filed before 1 January 2007. Applications filed on or after 1 January 2007 shall be filed in accordance with the ninth edition of the NICE Classification. For the avoidance of doubt, there will be no reclassification of goods and services for existing applications filed prior to 1 January 2007, after the 9th Edition of the NICE Classification comes into force.
(Circular No. 19/2004, dated 3 September 2004)
When lodging precedents to overcome the Registrar’s objection on the specification of goods / services, the Registrar requests that the relevant portions of the precedents to be underlined for greater visibility. This would assist the Registrar to identify and consider the relevant portions of the precedents in order to assess whether the objection should be waived.
(Circular No. 20/2004, dated 12 November 2004)
A clear description of the goods or services claimed in a trade mark application is important as it determines the scope of the application. As such, the indication of goods, for example “pouches and the like”, is not acceptable as the expression, “and the like”, is vague. In the example given, it is not clear as to what other goods the applicant is claiming apart from pouches.
To assist the Registrar in expediting the acceptance of trade mark applications for registration, agents are reminded to ensure that the specifications of goods or services set out in the application forms conform with the International Classification of Goods and Services as far as possible. Very often, the Registrar receives applications where the marks are acceptable for registration but the specifications are not in order. This slows down the registration process.
In the examination of the specification of goods or services for compliance with the International Classification of Goods and Services, the Registrar is prepared to rely on precedents relating to Singapore, United Kingdom, Australia and Hong Kong registrations. Applicants and agents are therefore free to file these precedents in support of their specifications of goods and services for the Registrar's consideration.
However, the Registrar would not rely on such precedents in the following situations:
- where the precedent relates to goods or services which have been accepted by the Registrar concerned in the wrong class;
- where the precedent relates to goods or services which are no longer classified in the class stated in the precedent in view of a change of classes by the Special Union for the International Classification of Goods and Services for the purposes of the Registration of Marks (Nice Union);
- where the precedent relates to goods or services which are no longer classified in the class stated in the precedent in view of a change or clarification of practice by the Registry concerned.
An expression between square brackets is intended to define more precisely the text or item preceding the brackets. Square brackets are used when the item is ambiguous for classification purposes. Round brackets are used to qualify the text or item preceding the brackets to ensure the correct classification. Round brackets are used when it is possible that the item can be classified in various classes depending on the intended goods or services sought to be covered.
In view of the widespread use of the term “Internet” in the generic sense, the Registrar will henceforth not raise any objections to the use of the term “Internet” in the specifications of goods and services of Singapore national applications or international registrations designating Singapore.
However, the use of the term “Internet” in specifications of goods and services is generally not encouraged as the word “Internet” is a registered trade mark in some countries and may be objected to by the designated offices of these countries in respect of international applications originating from Singapore filed under the Madrid Protocol. This may arise where the term “Internet” is listed in a Singapore national application or registration and the Singapore national application or registration forms the basis of an international application originating from Singapore under the Madrid Protocol. In the circumstances, it is advisable for applicants to use the term “global communications network” instead.
(Circular No. 2/2010, dated 5 March 2010)
For applications lodged on or after 12 March 2010, the Registrar, following the recommendations of the World Intellectual Property Organization, will accept the following items in the designated classes:
- Trophies of common metals (Class 6)
- Trophies of precious metals (Class 14)
- Brackets for setting up flat screen TV sets (Class 9)
Baby gates (Class 20)
- Decorative sand bottles (Class 21)
- Ankle garters (Class 26)
- Storage of human cells (Class 39)
- Rental of water dispensers (Class 43)
- Service of actual notice (Class 45)
Top
Computer Services
(Circular No. 3/2010, dated 25 June 2010)
For applications lodged on or after 2 July 2010, the Registrar will not accept a description consisting of "computer services" per se because the item, without further qualification, is vague. The insertion of a description that reads, for example, "all included in this class" at the end of a specification will not assist in avoiding an objection from the Registrar.
According to the International Classification of Goods and Services (ICGS), services that relate to the installation, maintenance or repair of computer hardware are classified in Class 37, while services in relation to computer rental and the installation, maintenance or repair of computer software are classified in Class 42. To avoid ambiguity and to ensure conformity with the ICGS, applicants are requested to specify the exact nature of the computer services that they are claiming. However, those who wish to include the description, "computer services", in their specification of services may refer to the following examples which are considered acceptable to the Registrar:
- "Computer services, namely installation of computer hardware" (Class 37)
- "Computer services, namely providing search engines for the internet" (Class 42)
-
"Computer services in the nature of hosting web sites for others" (Class 42)
Top
2009 Circulars
(Circular No. 11/2009, dated 25 September 2009)
For applications lodged on or after 2 October 2009, the Registrar will not accept a description containing “ancillary services”, ”related services” or their equivalent, regardless of whether they are preceded or followed by a specific term. This is because the exact nature of these descriptions remains unclear. The addition of qualifiers such as “included in this class” or “all in this class” in such descriptions does not help in making those descriptions any clearer. The following are some examples of the objectionable descriptions:-
- “advertising services; services ancillary or related to the
aforementioned included in this class”;
- “services ancillary or related to the provision of business
management services; all in this class”; and
- “all services relating or ancillary to computer services; all
included in Class 42”.
In such cases, the Registrar will request that the applicant specify the “ancillary services” and “related services” claimed so that the
specification is clear and unambiguous.
This practice direction is consistent with Circular No. 20/2004 that
relates to “Vague descriptions in specifications”.
(Circular No. 6/2009, dated 30 April 2009)
For applications lodged on or after 8 May 2009, the Registrar will not accept a description consisting of "association services" per se because the item, without further qualification, is vague and may fall within several classes. The World Intellectual Property Organization also regards this description as being vague and takes the view that a service should not in principle commence with the description "association services" even if it is followed by a qualifier. For example, the description, "association services, namely arranging business introductions", is not acceptable.
In light of the above, applicants should avoid using descriptions beginning with “association services”. A description like "association services, namely, promoting the general interests of those concerned with the importance of health and nutrition", should be reworded to "business promotion relating to the importance of health and nutrition, provided through an association" in order for it to be classified in Class 35.
(Circular No. 6/2009, dated 30 April 2009)
For applications lodged on or after 8 May 2009, the Registrar will not accept a description consisting of "concierge services" per se because the item, without further qualification, is vague and may fall within several classes. This is in line with the view of the World Intellectual Property Organization that the description is vague and can fall within several classes.
In light of the above, applicants should specify the exact nature of the concierge services that are being claimed. If they insist on using the description, "concierge services", that must be qualified by a precise description of the concierge service. The following are examples of acceptable descriptions.
- "Concierge services for the arranging of tours" in Class 39
- "Concierge services, namely, the delivery of luggage for guests" in Class 39
- "Concierge services, namely, arranging for theater tickets" in Class 41
- "Concierge services relating to restaurant reservations" in Class 43
- "Concierge services [baggage inspection for security purposes]" in Class 45.
On the other hand, descriptions such as "concierge services for others comprising of making requested personal arrangements and providing customer specific information to meet the needs of individuals", "hotel and resort concierge services", and "personal services rendered by others to meet the needs of individuals, namely, concierge services" are not acceptable since the exact nature of the services is unclear.
Circular issued on 30 April 2009 by the Registrar of Trade Marks.
(Circular No. 7/2009, dated 19 June 2009)
This is to clarify that a description consisting of “personal and/or social services rendered by others to meet the needs of individuals” in Class 45 has never been acceptable to the Registrar because it is vague and too broad in scope. For the purpose of clarity, applicants must specify the exact nature of the services that they wish to claim.
If, however, an applicant insists on using this description, it must be qualified by a precise description of the personal or social services claimed. An example of an acceptable description would be “personal services rendered by others to meet the needs of individuals, namely baby sitting”.
(Circular No. 7/2008, dated 5 March 2008)
(Circular No. 7/2008, dated 5 March 2008)
(Circular No. 7/2008, dated 5 March 2008)
The pre-2004 circulars on “cereal-based beverages/ beverages made from cereals” in Class 32 and “executor services” in Class 42 have been removed in light of recent directives from the World Intellectual Property Organization.
A specification of goods consisting of or containing “cereal-based beverages” or “beverages made from cereals” will be classified in Class 30 by analogy to “cereal preparations” that are classified under Class 30 of the NICE Classification.
A specification of services consisting of or containing “executor services” will be classified in Class 36 because such services generally relate to the administration of money, investments, real estate, assets, and other valuables. Such services are analogous to “fiduciary services” and “trusteeship services” both of which are classified under Class 36 of the NICE Classification.
The above changes affect all applications lodged on or after 12 March 2008.
(Circular No. 9/2008, dated 2 May 2008)
In addition to Circular No. 6/2006, the Registrar will accept the descriptions for applications lodged on or after 9 May 2008 (where it is not practical to list all the goods to which the retail services or wholesale services relate):
- "retail services"
- “wholesale services"
However, the Registrar will continue to reject descriptions such as “distributorship services”, “mail order services”, “departmental store services”, “supermarket services”, or “internet shopping”. These terms are considered vague as they include services more than retail and wholesale services. With the addition, the following descriptions provide guidance on what is considered to be acceptable to the Registrar in future:
- "The bringing together, for the benefit of others, of a variety of goods [list the goods] (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a retail outlet";
- “The bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a retail outlet”;
- “Retail services in relation to [list the goods]”;
- “Retail services”;
- “The bringing together, for the benefit of others, of a variety of goods [list the goods] (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a wholesale outlet”;
- “The bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a wholesale outlet”;
- “Wholesale services in relation to [list the goods]”;
- “Wholesale services”;
- “The bringing together, for the benefit of others, of a variety of goods [list the goods] (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a distributor outlet”;
- “The bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a distributor outlet”;
- “The bringing together, for the benefit of others, of a variety of goods [list the goods] (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a general merchandise catalogue by mail order or by means of telecommunications”;
- “The bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a general merchandise catalogue by mail order or by means of telecommunications”;
- “The bringing together, for the benefit of others, of a variety of goods [list the goods] (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a general merchandise web site in the global communications network”;
- “The bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a general merchandise web site in the global communications network”;
- “The bringing together, for the benefit of others, of a variety of goods [list the goods] (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a departmental store”;
- “The bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a departmental store”;
- “The bringing together, for the benefit of others, of a variety of goods [list the goods] (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a supermarket”; and
- “The bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a supermarket”.
(Circular No. 16/2008, dated 21 November 2008)
For applications lodged on or after 28 November 2008, the Registrar, following the recommendations of the World Intellectual Property Organization, will accept the following items in the designated classes:
- Milk ferments [bacteria preparations] used in making foodstuffs - Class 1
- Wind turbines - Class 7
- Pill distributor and organizer boxes for medical purposes - Class 10
- Electronic cigarettes for medical purposes - Class 10
- Meditation stones - Class 14
- Pill boxes [not for medical purposes] - Class 21
- Tablecloth holders - Class 21
- Electronic cigarettes, not for medical purposes - Class 34
- Publicity film production - Class 35
- Illustrators’ services - Class 42
- Diamond authentication and certification services - Class 42
- Electronic data storage - Class 42
- Advice concerning cooking recipes - Class 43
(Circular No. 16/2008, dated 21 November 2008)
(Circular No. 16/2008, dated 21 November 2008)
The pre-2004 circular on "Storage of data, information or documents" (Class 35 or 39) has been removed in light of recent directive from the World Intellectual Property Organization.
A specification of services consisting of "Electronic data storage" will be classified in Class 42 instead of 35 by analogy to "Duplication of computer programs" and "Data conversion of computer programs and data [not physical conversion]" which are classified under Class 42 of the NICE Classification. This is in conformity with the explanatory note "Class 42 includes mainly services provided by ... computer programmers, etc.".
On the other hand, if the data, information or documents are being stored physically, for example, in a warehouse, then it is proper to Class 39. The determining factor is where the data, information, or documents are being stored. Examples of items which are proper to Class 39 are:
- "Data storage"
- "Information storage"
- "Storage of electronically-stored data, information or documents".
The above changes affect all applications lodged on or after 28 November 2008.
Circular issued on 21 November 2008 by the Registrar of Trade Marks.
(Circular No. 27/2007, dated 25 July 2007)
For applications lodged on or after 1 August 2007, the Registrar, following the recommendations of the World Intellectual Property Organization, will accept the following items in the designated classes:
(1) Scoreboards for sports, other than mechanical or electric - Class 20
(2) Advice on tax preparation - Class 35
(3) Advice on fiscal assessments, advice on fiscal valuations - Class 36
(4) Carbon offsetting services [recycling] - Class 40
(5) Prenatal exercises - Class 41
(6) Weblog [blog] services [on-line publication of journals or diaries] - Class 41
(7) Creating and maintaining weblogs [blogs] for others - Class 42
(8) Hosting of weblogs [blogs] - Class 42
(9) Preparation of technical projects, technical research and consultancy services in the field of carbon offsetting - Class 42
(10) Carbon offsetting services [reforestation] - Class 44
(Circular No. 27/2007, dated 25 July 2007)
(Circular No. 27/2007, dated 25 July 2007)
(Circular No. 27/2007, dated 25 July 2007)
(Circular No. 27/2007, dated 25 July 2007)
For applications lodged on or after 1 August 2007, the Registrar will only accept the items "providing on-line forums", "operating chat rooms", "providing chat rooms", and "providing discussion services on-line" in Class 38, regardless of the topic of the discussion. These items are analogous to the items "electronic bulletin board services [telecommunication services]" and "providing internet chatrooms" listed in Class 38 of the NICE Classification (Ninth Edition). This is in line with the view of the World Intellectual Property Organization.
(Circular No. 27/2007, dated 25 July 2007)
(Circular No. 27/2007, dated 25 July 2007)
(Circular No. 27/2007, dated 25 July 2007)
(Circular No. 27/2007, dated 25 July 2007)
(Circular No. 27/2007, dated 25 July 2007)
(Circular No. 27/2007, dated 25 July 2007)
(Circular No. 27/2007, dated 25 July 2007)
The Registrar wishes to clarify that the above items with the exception of the last, viz.
"arranging and conducting of colloquiums";
"arranging and conducting of conferences";
"arranging and conducting of congresses";
"arranging and conducting of seminars";
"arranging and conducting of symposiums"; and
"arranging and conducting of conventions"
are classified in Class 41, regardless of the topic relating to these services. It is the purpose of the service and not the topic that determines their classification in Class 41. By virtue of their dictionary definitions, the terms, "colloquiums", "conferences", "congresses", "seminars", "symposiums" and "conventions" refer to activities linked with training or education, both of which are proper to Class 41. To illustrate, "arranging and conducting of conferences for commercial or advertising purposes" and "arranging and conducting of seminars for commercial or advertising purposes" are both classified under Class 41.
However, the item, "arranging and conducting of exhibitions", will be classified according to the subject matter since this service only refers to showing of products or services to the public, and is not primarily offered for the purposes of training or education. By analogy, "organization of exhibitions for commercial or advertising purposes" is listed in Class 35 of the NICE Classification (Ninth Edition), but "organization of exhibitions for cultural or educational purposes" is listed in Class 41 of the NICE Classification (Ninth Edition). This is in line with the view of the World Intellectual Property Organization.
(Circular No. 33/2007, dated 26 September 2007)
(Circular No. 33/2007, dated 26 September 2007)
(Circular No. 33/2007, dated 26 September 2007)
(Circular No. 33/2007, dated 26 September 2007)
For applications lodged on or after 3 October 2007, the Registrar will accept these and other analogous items in Class 38 only. These are essentially telecommunication services and are classified under Class 38 whether they are provided by an Internet Service Provider or a non-Internet Service Provider. Hence, our previous journal notice on the classification of these services based on the status of the applicant is no longer applicable.
Consistent with our previous journal notice on "leasing" (Circular No. 20/2004, dated 12 November 2004), applicants should also avoid using the term, "leasing", in any class except Class 36, as "leasing services", are acceptable only in Class 36. With regards to the above items in Class 38, an example of an acceptable description would be "rental of access time to databases" and not "leasing of access time to databases".
(Circular No. 3/2006, dated 3 February 2006)
For applications lodged on or after 10 February 2006, the Registrar will only accept the item, “crib bumpers”, in Class 20. This item is a type of cushion for lining the base and sides of the crib and serves a protective purpose for the baby. Since the item “cushions” is listed in Class 20 of the Nice Classification, by analogy, the item, “crib bumpers”, should be classified in Class 20 as well.
(Circular No. 6/2006, dated 24 February 2006)
The Registrar has revised her practice concerning retail services and other like services in Class 35. This revision in practice shall take effect for all applications lodged on or after 3 March 2006
In the past, applicants, in most instances, are required to list the goods to which the retail services relate. With the revised practice, where it is practical, it is still advisable to list the goods to which the retail services relate. However, the Registrar will no longer insist on such a requirement in all cases, as long as the description “the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods”, is used in conjunction with the means of bringing goods together. Thus, in cases where it is not practical to list all the goods to which the retail services relate, the Registrar will accept an indication of the means of bringing goods together and displaying such goods for the benefit of customers, for example, from a retail outlet, a wholesale outlet or a distributor outlet. Such an indication can be inserted at the end of the description “the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods”.
With the revised practice, “wholesale services” will also be treated in the same manner as “retail services”.
The following descriptions provide guidance on what is considered to be acceptable to the Registrar in future:
- “The bringing together, for the benefit of others, of a variety of goods [list the goods] (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a retail outlet”;
- “The bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a retail outlet”;
- “Retail services in relation to [list the goods]”;
- “The bringing together, for the benefit of others, of a variety of goods [list the goods] (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a wholesale outlet”;
- “The bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a wholesale outlet”;
- “Wholesale services in relation to [list the goods]”;
- “The bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a distributor outlet”;
- “The bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a general merchandise catalogue by mail order or by means of telecommunications”; and
- “The bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a general merchandise web site in the global communications network”.
The Registrar is prepared to accept similar descriptions of the above services provided that the services are clearly described and fall within the ambit of retail or wholesale services. Please note that vague descriptions such as “distributorship services” are not acceptable as the term “distributorship” may encompass more than just retail or wholesale services, for example, it may include transportation services.
(Circular No. 22/2006, dated 7 July 2006)
For applications lodged on or after 14 July 2006, the Registrar will only accept “interior decoration services” in Class 42 and not in Class 37, as such services are analogous to the item “design of interior décor” which is listed in Class 42 of the International Classification of Goods and Services (8th Edition).
(Circular No. 25/2006, dated 16 August 2006)
For applications lodged on or after 23 August 2006, the Registrar, following the recommendations of the World Intellectual Property Organization, will accept the following items in the designated classes :
- Incontinence garments – Class 5
- Telephone ring tones [downloadable] – Class 9
- Milk jam – Class 29
- Toasted natural wood chips added to wine to improve its flavour – Class 30
(Circular No. 25/2006, dated 16 August 2006)
For applications lodged on or after 23 August 2006, the Registrar, following the recommendations of the World Intellectual Property Organization, will accept the following items in the designated classes :
- Paper sheets, sensitized, for carrying photographic imaging materials – Class 1
- Slot machines [vending machines] – Class 9
- Paper sheets, not sensitized, for carrying photographic imaging materials – Class 16
- Slot machines [amusement] – Class 28
- Stand-alone video game machines – Class 28
(Circular No. 25/2006, dated 16 August 2006)
(Circular No. 25/2006, dated 16 August 2006)
For applications lodged on or after 23 August 2006, the Registrar will classify “technical consultancy services”, “technical support services” and other similar technical advisory and technical information services according to their subject matters. The General Remarks in the Nice Classification (8th Edition) states that services that provide advice, information or consultation are in principle classified in the same classes as the services that correspond to the subject matter of the advice, information or consultation. Further, in line with the view of the World Intellectual Property Organization, the Registrar will consider indications such as “technical consultancy services” and “technical support services”, per se as too broad and vague and objections will be taken. Such indications will have to be specified in respect of their subject matters for the purpose of classification.
(Circular No. 5/2005, dated 1 April 2005)
For applications lodged on or after 8 April 2005, the Registrar will only accept “computerised communication network security” and like services in Class 42 and not in Class 45, as such items are forms of computer services classified under Class 42.
Class 45 covers services for the protection and security of individuals and property in general, eg. “security services for buildings”, “personal body guarding” and “night guards”. If such services and information relating to such services are offered online or via a computer network, they will be classified under Class 45 as well.
However, Class 42 will cover security services if they pertain to security of computer networks or the internet, eg. “computerised communication network security”, or if such services are offered as a form of computer service, eg “data security services [firewalls]” or “professional consultancy relating to computer security”. It would not be correct to classify such computer security services in Class 45.
It is also useful to note that the International Classification of Goods and Services (8th Edition) classifies some security services in Class 39. Security services relating to transport, eg. “guarded transport of valuables” and “escorting of travellers”, are classified under Class 39 and not Class 45.
(Circular No. 5/2005, dated 1 April 2005)
For applications lodged on or after 8 April 2005, the Registrar, following the recommendations of the World Intellectual Property Organization, will accept the following items in the designated classes :
- Enzymes for human consumption – Class 29
- Soya milk [condiment] – Class 30
- Supervision of teamwork to improve its effectiveness – Class 35
- Consultancy in the field of computer security – Class 42
- Therapy services – Class 44
(Circular No. 6/2005, dated 22 April 2005)
For applications lodged on or after 29 April 2005, the Registrar will not accept a specification consisting of “prepared meals” per se as the said item, without further qualification, is vague and may fall within several classes. The item should specify the content of the prepared meals, for example,
“Prepared meals consisting of meat” in Class 29 or
“Prepared meals containing principally of rice” in Class 30.
(Circular No. 2/2004, dated 7 January 2004)
With effect from 7 January 2004, the Registrar will not accept a specification containing a claim for “retailing of services” or “the bringing together, for the benefit of others, of a variety of services (excluding the transport thereof), enabling customers to conveniently view and purchase those services”. Applicants will be asked to clarify on the type(s) of services they are providing and to apply for such services in the appropriate class(es).
(Circular No. 4/2004, dated 6 February 2004)
For applications lodged on or after 13 January 2004, the Registrar, following the recommendations of the World Intellectual Property Organization, will accept the items stated below in the designated classes:
- Pastilles and chewing gum for cosmetic purposes - Class 3
- Soap bubbles and foam generators for shows - Class 11
- Lenyards (Keycords) - Class 14
(Circular No. 6/2004, dated 5 March 2004)
For applications lodged on or after 12 March 2004, the Registrar will accept the specification “canned foodstuffs of plant origin” in Class 30 instead of Class 29. This is in line with the explanatory note of Class 30 which states “Class 30 includes mainly foodstuffs of plant origin prepared for consumption or conservation”.
(Circular No. 12/2004, dated 11 June 2004)
For applications lodged on or after 18 June 2004, a specification of services consisting of or containing “manufacturing of goods” is unacceptable as it does not conform to the International Classification of Goods and Services. If a person is manufacturing goods, registration should be sought for the goods only.
As appropriate, the specification may be phrased as “custom assembling of materials [for others]” or "custom manufacturing of goods [for others]”. For example, where the items in question are cell cultures, it may be more appropriate to describe the service as "custom manufacturing of cell cultures [for others]”. However, if the goods in question are clothing, "custom assembling of clothing [for others]” would be more appropriate.
(Circular No. 17/2004, dated 9 July 2004)
For applications lodged on or after 16 July 2004, the Registrar, following the recommendations of the World Intellectual Property Organization, will accept the items stated below in the designated classes:
- Packaging containers of regenerated cellulose - Class 16
- Refilling of empty toner cartridges - Class 37.
(Circular No. 19/2004, dated 3 September 2004)
For applications lodged on or after 10 September 2004, the Registrar will not accept a specification consisting of “provision of news” per se. This is in line with the World Intellectual Property Organization’s view that this description, without further qualification, is vague. The subject matter of the news provided and the purpose for which it is provided are important in determining the class to which it should fall under. Generally, these services are classified in the same classes as the services that correspond to the subject matter of the information. Examples of acceptable descriptions are:-
“Provision of business news [business management]” in Class 35;
“Provision of news [telecommunication services]” in Class 38; and
“Provision of news for entertainment purposes” in Class 41.
(Circular No. 20/2004, dated 12 November 2004)
With effect from 19 November 2004, the Registrar will accept “leasing services” only in Class 36 regardless of the nature of the goods to which it relates. This is in line with the World Intellectual Property Organization’s view that it is a form of financial service.
“Rental services”, on the other hand, will still be classified in the same class as the services provided. For example, “rental of telecommunication apparatus” will be classified in Class 38 while “rental of medical apparatus” will be classified in Class 44.
With effect from 31 October 2003, the Registrar will accept the specification “club [dining] services” in Class 43 instead of Class 41 of the International Classification of Goods and Services. The emphasis on the word “dining” puts the item more in line with the class heading and explanatory notes of Class 43.
In the 8th edition of the International Classification of Goods and Services, consultancy services will be classified according to their subject matter. For example, consultancy services relating to telecommunications will be classified in Class 38, transportation consultancy services in Class 39 and intellectual property consultancy services in Class 42. The Registry had been taking this position in its examination of applications.
WIPO has clarified that pending the coming into force of the 8th edition, the correct classification is in accordance with the 7th edition where such services are classified in Class 35 if they are business-related and Class 42 if they are non-business-related. Hence, the Registry is adopting this stand.
However, in order not to prejudice any party who has acted on the Registrar’s earlier position on such services, the Registry will not reject consultancy services which have been classified according to their subject matter.
With effect from 31 October 2003, the Registrar will not accept a specification consisting of “desserts” per se. This is in line with the World Intellectual Property Organization’s view that the said item, without further qualification, is vague.
Examples of acceptable descriptions are :
“Desserts [Jellies for food]” in Class 29 or
“Desserts [Ice cream]” in Class 30
A specification of services consisting of or containing “mail order services” is unacceptable as it does not conform to the International Classification of Goods and Services and should be reworded to "the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from a general merchandise catalogue by mail order” in accordance with the practice in the United Kingdom.
With effect from 30 July 2003, a specification which reads "provision of information for business or domestic purposes" in Class 38 will not be acceptable. The applicant is requested to further qualify the specification so that it will read as “provision of information in the field of telecommunications for business or domestic purposes”. This is in line with the General Remarks as provided in the Nice Classification that the subject matter of the information being provided determines the correct class for the services.
|
|