The purpose of these instructions is to give details on the classification team procedures and to ensure consistent and uniform working procedures are adopted. It sets out the best working practice for the various procedures and duties undertaken.
The three essential principles which need to be borne in mind when classifying and editing the specifications of an application are:
The following paragraphs detail the procedures which apply these principles. However, there may be applications with specifications that appear to conflict with the guidelines but which make it perfectly clear what goods or services in which class are covered. Specifications that meet these requirements are acceptable and should not be edited merely to bring them into line with the contents of this manual. This should be borne inmind at all times when considering any changes to a specification.
The examination and editing of specifications is carried out by the Examiner. Classification is an integral part of the examination function and it is the Examiners responsibility to ensure that the application is correctly classified. Each examiner has an individual responsibility to ensure that the application under examination is correct in all respects - including its classification. It is recognised that on some occasions expert help may be needed when classifying difficult items or activities. To this end in addition to the International Classification of Goods and Services list, the Classification Team provides a networked and constantly updated classification database which is available on the website. The Team also provides advice to staff on difficult cases.
The classification and editing of specifications involves a number of checks which are listed in outline below but are dealt with more fully in the section referred to after each item. The guidelines for punctuation and editing indicate the ideal. However it must be emphasised that if specifications are clear and the goods or services are properly classified they should not be changed.
First, consult the International Classification of Goods and Services. If the item is not listed then check the Registrys Classification Search database.
If no reference is found then consult the List of Classes together with the Explanatory Notes in the International Classification for those classes which are thought to be most appropriate. In the event that the item is still not capable of being classified, the following principles are used to determine its classification:
a. A finished product is in principle classified according to its function or purpose. If the function or purpose of a finished product is not mentioned in any class heading, the finished product is classified by analogy with other comparable finished products, indicated in the Alphabetical List of the WIPO International Classification.If none is found, other subsidiary criteria, such as that of the material of which the product is made or its mode of operation, are applied.
b. A finished product which is a multipurpose composite object (for example, clocks incorporating radios) may be classified in all classes that correspond to any of its functions or intended purposes. If those functions or purposes are not mentioned in any class heading, other criteria indicated under (a), above, are to be applied.
c. Raw materials, un-worked or semi-worked, are in principle classified according to the material of which they consist.
d. Goods intended to form part of another product are in principle classified in the same class as that product only in cases where the same type of goods cannot normally be used for another purpose. In all other cases, the criterion indicated under (a), above, applies.
e. When a product, whether finished or not, is classified according to the material of which it is made, and it is made of different materials, the product is in principle classified according to the material which predominates.
f. Cases adapted to the product they are intended to contain are in principle classified in the same class as the product. For example, cases for sunglasses Class 9; cases for medical tools Class 10; cases for rifles Class 13; jewellery cases Class 14 (not to be confused with trinket boxes Class 20).
Services are in principle classified according to the branches of activities specified in the headings of the service classes and in their Explanatory Notes or, if not specified, by analogy with other comparable services indicated in the Alphabetical List of the WIPO International Classification.
Rental services are in principle classified in the same classes as the services provided by means of the rented objects (for example, Rental of telephones, covered by Class 38). 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, for example, transportation consultancy (Class. 39), business management consultancy (Class. 35), financial consultancy (Class. 36), beauty consultancy (Class. 44). The rendering of the advice, information or consultancy by electronic means (for example, telephone, computer) does not affect the classification of these services.
An application may be made in more than one class. Where an application relates to more than one class the statement of goods and/or services shall specify for each item each separate class for which registration is sought. If there are items proper to more than one class they should be grouped together by reference to their specified class number. In all cases the items or groups of items specified by class number should be listed in consecutive numerical order. Where goods or services do not relate to the class number(s) specified on the application form, the applicant may add an extra class or classes to their application subject to payment of the appropriate additional class fee(s)
If an application is filed without a class number and the goods fall in more than one class, for example, detergents, which can fall in classes 1, 3 and 5, the examiner will advise the applicant of the deficiency in the examination report (under Rule 13) in order to give the applicant the opportunity to amend the application to comply with Rule 8(2) (a) and 8(3) :
(2) Every application shall specify
(a) the class in the Nice Classification to which it