Readmore - Intellect Worldwide Sdn Bhd

Trade Marks Journal No. 040/2010
Page No. xvi
2005 Circulars
(Translation of Non-English words, Circular No. 4/2005, dated 30 March 2005. This
circular is replaced by Circular No. 17/2007, dated 7 May 2007)
Amendment of Typographical Errors in Class Numbers in Form TM 4 (Circular No.
21/2005, dated 21 October 2005)
An amendment of the class number in Form TM 4 may be amended by lodging Form TM 27
with fee for each amended class of goods / services, but only if
(i) a re-search in the new amended class revealed no prior conflicting marks;
(ii) all of the items in the specification did not fall under the class as filed but in one other
class; and
(iii) that mistake was obvious to a third party inspecting the Register.
Three examples have been provided for illustrative purposes.
Example 1:
An application was filed in Class 5 in respect of "clothing, hats and shoes". An amendment
of the class number from "5" to "25" would be allowed.
Example 2:
An application was filed in Class 5 in respect of "all goods in this class". An amendment of
the class number from "5" to "25" would not be allowed because it would not be obvious to
a third party inspecting the Register that the correct class intended to be claimed was Class
25 and not Class 5. It was possible that the applicant intended to claim all goods in Class 5.
Example 3:
An application was filed in Class 5 in respect of "clothing, hats and pesticides". An
amendment of the class number from "5" to "25" would not be allowed, even with the
deletion of the item, "pesticides" because it would not be obvious to a third party inspecting
the Register that the correct class intended to be claimed was Class 25 and not Class 5.
Since "pesticides" was correctly claimed in Class 5, it was possible that the applicant
intended to claim "pesticides" in Class 5 but had incorrectly classified "clothing and hats" in
Class 5 as well. It would be necessary for the applicant to file a fresh application in Class
25 in respect of "clothing and hats".