Including, for example, namely, as well as, in particular, specifically i.e.
While not desirable in specifications since it encourages tautology, such wording should usually not be changed. Such terms are not allowable in Class 35 (with the exception of “namely” see below) for specifications covering retail services as they do not create the legal certainty that is required. However, in other class the terms may be allowed. For example we would allow:
Biocides including insecticides and pesticides Paper articles of stationery in particular envelopes Dairy products namely cheese and butter
Note that specifications including “namely” should be interpreted as only covering the named Goods, that is, the specification is limited to those goods. Thus, in the above “dairy products namely cheese and butter” would only be interpreted as meaning “cheese and butter” and not “dairy products” at large. This is consistent with the
definitions provided in Collins English Dictionary which states “namely” to mean “that is to say” and the Cambridge International Dictionary of English which states “which is or are”.
Information services
See guide at Consultancy, advisory and information services
Internet services, on-line services and associated goods
The activities provided by on-line and Internet suppliers are varied and wide ranging and the classification can include all of the service classes. For example, the UK along with the US, EUIPO and WIPO classify information services according to their subject matter. Thus, business information falls in Class 35, insurance information in Class 36, travel information in Class 39 and so on. This classification applies regardless of whether the information is provided face-to-face, over the telephone, on-line from a database or from the Internet. The following guidance sets out what is accepted.
Note that the terms “multi-media services, Internet services and on-line services” are too vague and should be clarified.
Classification: Acceptable identifications of goods and services and explanatory notes:
Class 9:
Computer software downloaded from the internet
Computer software supplied from the internet
Electronic publications [downloadable] provided on-line from computer databases or the internet
Computer software and telecommunications apparatus (including modems) to enable connection to computer databases and the Internet
Computer software to enable searching of data
Digital music [downloadable] provided from the internet Telephone ring tones [downloadable] provided from the internet
Explanatory note:
This class includes the provision of computer software by whatever means (e.g. through retail sale, mail order or downloaded from the Internet to a computer); any apparatus which allows electronic or telecommunication connection to the Internet or computer databases. Also covered by Class 9 are publications in electronic format [downloadable]. Many publications which are sold in printed matter form are also available on the Internet (e.g. The Times).
They may be browsed or supplied to the user. If merely viewed then a service under Class 41 is provided but if downloaded from the Internet to a computer, Class 9 is appropriate (by analogy with CD-ROMs).
Class 35:
Advertising information and business information; all provided on-line from a computer database or the Internet; compilation of advertisements for use as web pages on the Internet
Compilation of directories for publishing on the Internet Provision of space on web sites for advertising goods and services Auctioneering provided on the Internet Business administration services for the processing of sales made on the Internet
The bringing together, for the benefit of others, of a variety of [indicate goods or types of goods], enabling customers to conveniently view and purchase those goods.
Electronic shopping retail services connected with [indicate goods or types of goods]
Explanatory note:
Although Class 35 includes the advertising and promotion of goods and services, when products are sold on the Internet or through other electronic means, unless a “bringing together service” is provided, the classification is determined by the nature of products which are purchased. The means by which they are sold are irrelevant. For instance, selling ones own branded clothing from a web site may involve the advertising of these products but in order to ensure that proper protection is given to the mark, an applicant will need to include Class 25 to cover the goods. Similarly, selling an airline ticket on the web could involve promotional activities under Class 35 but these services are peripheral to travel arranging under Class 39.
Applications in this class sometimes include claims to e-commerce, home shopping, TV shopping, on-line shopping, Internet shopping malls, e-tailing, digital commerce etc, but none of these vague terms are acceptable as service descriptions in their own right (but may be allowed when further qualified by a specific service, e.g. “advertising to promote e- commerce”). Such descriptions are essentially variants of retail services which are carried out by electronic means.
Class 36:
Financial and insurance information, provided on-line from a computer database or the Internet
Home banking Internet banking
Class 37:
Repair, maintenance and installation information, provided on-line from a computer database or the internet
Installation and repair of telecommunication apparatus Installation and repair of computer hardware
Explanatory note:
The service of “installation and maintenance of computer software” is proper to class 42.
Class 38:
Telecommunication of information (including web pages), computer programs and any other data;
Electronic mail services
Providing access to computer databases
Providing user access to the internet [service providers]
Providing telecommunications connections to the internet or databases
Providing access to digital music web sites on the internet Delivery of digital music by telecommunications
Rental (or leasing*) of access time to computer databases
- note that WIPO recommends that the term “leasing” should not be used on applications for International Registrations other than when used in relation to financial leasing services in Class 36.
Explanatory note:
Class 38 covers the telecommunication infrastructure for transmitting and receiving information but not the information itself (unless that information is about telecommunications). Additionally, the core activities of Internet Service Providers (ISPs) are included in this class. Note that if a specification is filed as “Internet services” it will be edited to:
Providing access to the internet; providing telecommunications connections to the internet or databases.
The practice in force until 30 June 1999 was to classify “providing access to the Internet” under Classes 38 and 42, the determining factor being whether the applicant is primarily a telecommunications business. Given that many Internet Service Providers (ISPs) may also provide telecommunications services directly to customers (or at least form part of a telecommunications link) the distinction that was originally drawn had become somewhat blurred and artificial. Therefore, the following identifications are included in the International Classification:
Class 38: Providing telecommunications connections to a global computer network
Class 38: Providing user access to a global computer network [service providers]
This in effect puts under class 38 all access services provided by ISPs, whether they are able to provide telecommunications directly or merely provide a link in the access chain. Although the term “Internet” is not used in the above (because it is not accepted in specifications by some national trade mark offices) its use in specifications in the UK will continue to be allowed.
Class 39:
Airline booking services provided on the Internet
Arranging travel and information therefore, all provided on-line from a computer database or the internet
Class 40:
Material treatment information, provided on-line from a computer database or the internet.
Photographic printing services provided on the Internet
Class 41:
Entertainment information and education information, all provided on-line from a computer database or the internet
Electronic games services provided by means of the internet Providing on-line electronic publications [not downloadable] Publication of electronic books and journals on-line Providing digital music [not downloadable] from the internet
Explanatory note:
This class includes providing publications on the Internet which may be browsed (by analogy with “Library services”).
Class 42:
Computer rental; design, drawing and commissioned writing, all for the compilation of web pages on the internet
Creating and maintaining web sites for others Hosting the web sites of others
Installation and maintenance of computer software Operating search engines
Providing search engines for the Internet
Class 43:
Holiday accommodation information provided on-line from a computer database or the internet
Class 44:
Medical information provided on-line from a computer database or the internet
Class 45:
Security information provided on-line from a computer database or the internet
Legal information provided on-line from a computer database or the internal compilation, creation and maintenance of a register of domain names
https://www.gov.uk/guidance/trade-marks-manual/the-classification-addendum
Content Reproduced verbatim from the Website of the United Kingdom Intellectual Property Office (UKIPO) as permitted under their Terms of Use.