It is imperative to appreciate that while the UK registry follows the International Classification, section 34(2) of the Trade Marks Act 1994 provides the registrar with the power to decide any question pertaining ‘to the class within which any goods or services fall’. According to section 34(2) of the said Act, any question arising as to the class within which any goods or services fall shall be determined by the registrar, whose decision shall be final. Incidentally, the same principle applies to European Trade Mark applications before the EUIPO; the organisation has the prerogative to govern classification issues.
The International Classification is not all-embracing and therefore in the absence of an item being expressly articulated in the list of goods and services, the registrar must ascertain the pertinent class. In the GE Trade Mark case (1969 RPC 418) Graham J. stated: ‘This section, in my judgment, is dealing with administrative matters and enables the registrar to decide without appeal in which class any particular goods must be registered. It does not oust the jurisdiction of the court to decide, as in the present case, whether any goods as to which there is a dispute properly fall within the specification’. Nevertheless, one should note that the said power is not applicable to International Registrations that are designated to the UK. Pursuant to the Madrid Protocol, WIPO shoulders the responsibility regarding the classification of items that are included in the specifications on the International Register.