INSIGHTS: NICE CLASSIFICATION AGREEMENT FOR TRADEMARK REGISTRATION

INSIGHTS: NICE CLASSIFICATION AGREEMENT FOR TRADEMARK REGISTRATION

by manager

Registering a trademark under the right class(es) is a key component to your overall trademark protection strategy.

What is a Nice Classification?

The Nice Classification (NCL), is an international classification of goods and services applied for the registration of marks.On January 1, 2020, the 2020 version of the eleventh edition of the Nice Classification took effect.

The International Classification of Goods and Services was established by an Agreement concluded at the Nice Diplomatic Conference, on June 15, 1957, revised at Stockholm, in 1967, and at Geneva, in 1977, and was amended in 1979. The countries party to the agreement  (89 States as at January 2019) constitute a Special Union within the framework of the Paris Union for the Protection of Industrial Property. As an obligation, they apply the Nice Classification for the registration of trademarks, either as a main system or as a secondary system, by appearing in official documents and publications related to marked records the numbers of the Nice classes to relate the products and services for which the trademarks are registered.

The Classification is framed into a total 45 Classes (34 classes of products, and 11 in which services are finite). Within these classes are around 10,000 items of products and 1,000 of services, which makes it easier to decentralise the process when applying for a trademark in any of the States parties to the Agreement.

In addition, the fact that the Nice Classification exists in several languages saves applicants a considerable amount of work at the time they must submit a list of products and services in a language other than the country of origin of the trademark.

Purpose for the Nice Classification

When making an application the onus is on the applicant to discover whether the mark is brand new, or whether it has already been claimed by another party. The Nice Classification facilitates this due diligence by organizing information concerning trademarks into indexed classes – making it easier to conduct a thorough search. In other words, the classification of the goods and services enables the smooth acquisition of trademark rights.

Who uses Nice Classes?

The use of the Nice Classification is mandatory not only for the national registration of marks in countries party to the Nice Agreement, but also for the international registration of marks effected by the African Intellectual Property Organization (OAPI), the African Regional Intellectual Property Organization (ARIPO), the Benelux Office for Intellectual Property (BOIP), the European Union Intellectual Property Office (EUIPO) and the International Bureau of WIPO.

When Are Nice Classes Applied?

Where a party is desirous of a Trademark application, it is pertinent to determine the territory for the proposed trademarked goods or services is resident. This is preponderant because each territory may apply a different version of the Nice classification to your application description of your goods and services.

According to the International Trademark Association (INTA), Colombia, Portugal, South Korea and the United States are in a minority of jurisdictions that do not permit class headings as part of an acceptable identification of goods or services when applying for your trademarks.

Many other countries, including Denmark, Hong Kong, India, Norway, Sweden and the United Kingdom, generally do permit the use of class headings. And a few jurisdictions, such as Argentina, Cambodia and Laos, permit the use of class headings in the very broadest sense – to include a claim to all goods or services in the class.

Is Nigeria a Party to the Agreement?

Nigeria is currently not a Party to the arrangement. However, the Nigerian Classification of Goods  for trademark registration is tailored towards the order of the Nice Agreement model. The Nice Classification model is also applied in a number of  other countries not party to the Nice Agreement.

In Conclusion, the new 2020 version of the eleventh edition of the Nice Classification incorporates a series of changes from the previous version, being applied to all applications for international registration that have been received by the Offices of origin as of January 1, 2020 , and all applications for international registration that have been received by the WIPO International Office on January 1, 2020 or at a later date, when these applications have been received by the WIPO International Office after the planned two-month period in Article 3.4) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Trademarks.

At Manifield Solicitors LLP we find your willingness to resolve any questions or queries that may arise when registering your trademark, and we encourage you to contact us for further information.

 

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