On 30 March this year, the World Intellectual Property Organisation (‘WIPO’) quietly published a new 26-page examination guide relating to the correct classification of goods and services in international applications. The guide is intended to help trade mark applicants and their representatives avoid the most common errors that result in a dreaded ‘irregularity notice’ from WIPO during the examination process. These notices are used to reject any applications that do not meet WIPO’s requirements for an ‘acceptable’ specification of goods and services, and frequently arise as a result of WIPO examiners applying differing internal policies on classification to those of the applicant’s home intellectual property office.
Whilst most of us are aware of WIPO’s online database, the Madrid Goods & Services Manager, which can be used to verify if particular terms are acceptable, it seems that this resource is not enough. And as many of us have learnt the hard way, just because your trade mark specification has been given the thumbs-up by the UKIPO or EUIPO, it doesn’t mean WIPO will like it!
The guide, which is available in English, French and Spanish, aims to ‘offer a better understanding of the classification principles applied, and minimise the risk of errors’. In our view, any guide that demystifies some of WIPO’s internal examination practices can only be a good thing, for both trade mark practitioners and applicants alike. So let’s take a look inside…
The introduction and first section provide a bit of general light background reading for the uninitiated on the Madrid System and the Nice Classification, so we can gloss over these. Section 2 begins with a summary of the process and legal basis for the examination of specifications, and offers us an example of a real-life irregularity notice. Again, this is all content that hopefully most practitioners are already very familiar with. The real fun starts at page 10 where we begin to delve into the classification principles applied by WIPO examiners, covering their examination policy on class headings, indications that can be classified in more than one class, and the use of certain expressions, such as ‘namely’ or ‘in particular’. The final section, Section 3 (page 21) covers ‘formatting tips’ and sets out WIPO’s preferences on the correct use in specifications of punctuation, brackets, capital letters, plural forms, and the acceptability of abbreviations and acronyms.
All in all, it can’t hurt to be better informed, so a recommended read to all!
To view the English PDF copy of the guidelines, click here.