Australia: Class Heading Protection for Trade Marks not as Broad as You May Think

Does a trade mark application or registration covering a 'class heading' cover all goods or services that fall within that class? This is the issue that was considered by a delegate of the Registrar of Trade Marks recently.

NEC's application
An application was made by NEC Corporation (NEC) for the trade mark 'NEC' covering classes 7, 9, 10, 11, 35, 36, 37, 38, 39, 41 and 42. Some of the class specifications, and in particular class 9, claimed the entire class heading listed under the Nice classification system (the system established in Nice, France, in 1957 under which goods and services are classified for the purpose of registering trade marks. Each class is given a general class heading).

During the course of the prosecution of the trade mark application, NEC sought to amend its class 9 description of goods to include 'computer software' in class 9. The examiner objected to the requested amendment on the basis that 'computer software' was not included within the scope of the original class 9 claim. The examiner therefore stated that this amendment was not acceptable, but that 'optically recorded and/or readable computer software' would be acceptable.

In response, NEC submitted that as the original class 9 description was for the class heading, any amendment to the description so as to include goods falling within class 9 should be allowable. The examiner maintained his objection through the course of three examination reports, and NEC elected to be heard.

The arguments
At the hearing NEC argued that although there is no definition of class heading in the Act or the Regulations, it is implicit in particular Regulations that the class heading is synonymous with all goods or services in a class. They further submitted that as the expression 'all goods' is prohibited, together with the fact that it is impossible to list all of the goods or services in a class, that the only practical application of the legislation was to consider a class heading as covering all goods and services.

NEC suggested that doubt over the extent of protection given by a class heading would lead to uncertainty and difficulty in the interpretation of the scope of claims. It therefore argued that a common-sense and commercially realistic practice would be to treat a class heading as covering all goods or services within a class.

The delegate of the Registrar rejected the arguments put forth by the applicant. The delegate found that:

• nothing in the Act, the Regulations or the Nice classification system supported the contention that a claim for a class heading covers all goods or services in a class
• the class heading must be interpreted as being limited in scope to the goods or services covered by the generic descriptions included in the class headings
• interpretation of a class heading as something beyond the generic description listed could lead to uncertainty and would not be in the public interest.

In the end, NEC was given a month to accept an amended description suggested by the examiner.

The decision of the delegate is a wake-up call to trade mark owners and practitioners who file for the generic class heading description in an attempt to cover all goods or services within a class. Care must be taken to file applications to cover the core goods and/or services for which the client is using and intends to use the mark, and class heading claims need to be checked to ensure that those core goods and services are explicitly included.

The decision also provides an incentive for the reassessment of trade mark portfolios to ensure that adequate protection is in place.

This newsletter provides a summary only of the subject matter covered, without the assumption of a duty of care by Freehills. The summary is not intended to be nor should it be relied upon as a substitute for legal or other professional advice.