Adding a Class to Trade Mark Application

The moment your application is filed with the Intellectual Property Office of New Zealand (IPONZ), you establish a “filing date.” This date is, in many respects, the single most valuable asset of your application, as it sets your priority against all competitors who file after you.

But what happens if a mistake is made? It is an all-too-common scenario. In the rush to file, or due to a misunderstanding of the complex international classification system, your application is filed with goods or services listed in the wrong class. You may have filed for “clothing” in Class 25 but also listed “handbags” in that same class, not realizing “handbags” belong in Class 18.

Does this mean your application is fatally flawed? Do you have to abandon it and re-file, losing your precious priority date to any competitor who filed in the interim?

In New Zealand, the answer is no, if you act correctly. A specific and powerful provision in the law, Regulation 43 of the Trade Marks Regulations 2003, provides a legal pathway to correct this exact error. It allows an applicant to add a class (or classes) to an existing application, rescuing the incorrectly classified goods and, most importantly, preserving your original filing date for those goods.

What is the “Adding a Class” Provision?

This provision is a corrective tool, not an expansion tool. It is designed exclusively for situations where an applicant has explicitly listed specific goods or services in their original trade mark application, but those items were incorrectly classified and are not covered by the class or classes originally nominated.

For example, if your application was filed only in Class 30 (for coffee and tea) but your specification also explicitly listed “orange juice” (which belongs in Class 32), you have made a classification error. “Orange juice” is not covered by Class 30. Instead of forcing you to delete “orange juice” or re-file a new application, Regulation 43 allows us to file a formal request to add Class 32 to your existing application to cover “orange juice”.

This is a technical process that our firm manages on your behalf. We prepare a written application that identifies the application number, the applicant and agent, the class to be added, and the specific goods or services that will be covered by that new class.

Preserving Your Original Filing Date

The strategic value of this procedure cannot be overstated. When the Commissioner allows the addition of a new class, the original filing date of the application applies to all the goods and services, including those in the newly added class.

This powerful remedy is governed by strict rules and deadlines. Our role is to ensure your application complies with every requirement.

• Before Acceptance

A request to add a class can be made at any point after filing, but it must be made before the application is accepted. Once an application is accepted and advertised for opposition, this window closes. This makes it critical to review your application and address any classification errors as soon as they are identified, typically in response to the first examination report.

• The Fee

The Commissioner requires that the application to add a class be accompanied by the prescribed fee. This fee is equivalent to the fee for filing a new application in one class.

• The “No Broadening” Rule

This is the most important legal guardrail. The addition of a class must not widen the scope of the original specification. You cannot use this procedure to add new goods or services that you did not think of at the time of filing. The goods or services for the new class must have been present in the original specification.

This rule is why the filing date can be preserved. Your original application put the public on notice of your claim to “handbags,” even if they were in the wrong class. Other applicants searching the register could see your claim. Allowing you to add “luggage”, i.e. a term you didn’t include, would be an unfair broadening of your rights and would disadvantage those other applicants.

• The “Deleted Goods” Trap

This is a critical pitfall that our firm helps clients avoid. The Commissioner must not allow an application to add a class if the goods or services for that class had been previously deleted from the application.

For example, if you filed for ‘clothing’ and ‘handbags’ in Class 25, and in response to an examination report you simply deleted ‘handbags’ to get the application accepted quickly, you cannot later try to add Class 18 for ‘handbags’. The act of deletion is final for those goods. Our strategic advice is to never delete incorrectly classified goods, the correct procedure is to use Regulation 43 to move them.

Navigating Complex Classification

The prohibition on “broadening” an application creates several complex scenarios where expert guidance is essential. How this rule is applied depends entirely on the specific wording of your original application.

If your specification includes a vague term that could be classified in the original class, you may not be allowed to add a new class. For example, if you applied in Class 30 for ‘non-alcoholic beverages’. Since some beverages like coffee and tea are in Class 30, the examiner will assume your claim was for only Class 30 beverages. You would not be allowed to add Class 32 for other types of beverages (like soft drinks) because this would be seen as broadening your original, ambiguous claim. However, if your application had specifically listed ‘non-alcoholic beverages and orange juice’, we could add Class 32, but only for ‘orange juice’, as that term is specific and does not belong in Class 30.

That said, if your original specification used limiting phrases like ‘detergents in this class’ or ‘detergents not included in other classes’. This wording is interpreted as a clear, intentional limitation to only the goods in the filed class (e.g., Class 3). We would be barred from adding other classes for detergents (like Class 1 or 5), as this would directly contradict the original specification.

Applicants sometimes file for “all services” in Class 35, believing this covers all possible services. This is incorrect. This claim is interpreted as “all services that are correctly classified in Class 35“. You cannot later specify services from that list that belong in Class 36 and request to add Class 36. The original application was, by its nature, limited to Class 35.

Our team reviews the precise wording of your original filing to determine if a Regulation 43 application is viable, ensuring we do not fall into one of these traps.

New Examination

Successfully filing to add a class is not the end of the process. This action triggers a new round of examination.

Once our application is filed and the fees are paid, an examiner will review it to ensure it complies with Regulation 43. If it does, the new class is added, and the incorrectly classified goods are transferred into it.

However, the examiner must then conduct new searches of the Register for conflicting marks in the newly added class and its associated classes. This is a critical step that can introduce new challenges. A mark that was not a conflict for your Class 25 “clothing” application may be a direct conflict for your newly added Class 18 “handbags” claim.

If this new search reveals a new conflicting mark, IPONZ will raise it as a citation and issue a new Compliance Report. Our firm will then receive this report, analyze the new objection, and prepare a legal response to overcome it.

If the addition of the class resolves all outstanding issues and no new conflicts are found, the application is accepted for registration.

A classification error can seem like a disaster that jeopardizes your brand and your priority date. With expert legal handling, it can be reduced to a procedural, correctable issue. Regulation 43 is a powerful but highly technical tool, and its successful use depends on precise timing, correct procedure, and a deep understanding of classification law.

If you have filed a trade mark application and are concerned about a classification error, it is vital you contact our team immediately. The window to correct this error is limited, and your priority date is on the line. Contact us for a free consultation today.