The Nice Classification is constantly evolving. It is continuously reviewed and updated by the representatives of the participating countries in order to adjust it to the current trends and market reality. This results in a version that is revised on an annual basis, while more substantial amendments lead to a new edition (previously issued every five years).
Co-author: Willy Neys
A variety of circumstances, including the pandemic, led to the implementation of the new edition being postponed until 1 January 2023. It was also decided that the next edition will enter into force in three years’ time (instead of five), meaning that the next edition is now scheduled for 2026.
The list of products and services for a trademark determines the range of its protection, and thereby also the extent to which it might conflict with another trademark.
In principle, a trademark can be protected forever, and the list of products and services may not be extended after registration. Your trademark’s description must therefore correspond to the activity performed under the trademark and take into account any possible future developments in that activity.
In order to be able to arrive at an appropriate list of products and services it is important to be familiar with the Nice Classification and how it works. This means that the denomination of the goods and services must be sufficiently clear and precise. The range of a trademark’s protection is not determined namely by the class to which a product or service is allocated, but by the words used.
This new edition of the Nice Classification contains a number of amendments, which include new terms, changes to existing terms, transfer of classes and elimination of terms deemed redundant. The world has not stood still since the previous edition (medical and scientific progress, virtual products, etc.), which is why it is important that the classification mirrors those developments.
A digital world
First of all, virtual products are not allocated to the same class as their equivalent in the physical world. They are regarded as digital and/or downloadable content and fall under class 9. It is important to note in this context that terms that are too general, such as ‘virtual goods’, will not be accepted if they do not contain any indication as to the content to which those virtual goods relate. For example, the description ‘digital downloadable goods, namely avatars for use in video games’ is accepted in class 9. The terms ‘downloadable digital files authenticated by non-fungible tokens (NFTs)’ are also recorded under class 9. In this logic, the NFTs must also be specified in relation to the type of digital file they authenticate.
In the new digital world serious account needs to be taken of these amendments, as well as when drawing up the description of the trademark, when considering potential developments of the activities in such a virtual world, as when organising the monitoring of the trademark. For instance, if a company is active in the field of the manufacture and sale of clothing, it needs, when applying for its trademark, to not only focus on products and services in classes 25 and 35, but also on class 9 if it wishes to expand its activity to the virtual world. Furthermore, if a trademark is registered under classes 25 and 35, the trademark monitoring must be extended to class 9 in order to remain abreast of any possible applications for identical or similar trademarks which correspond to similar virtual products.
The digital world is also accompanied by the emergence of new services. Examples of this in the 12th edition of the classification are the inclusion of ‘electronic transfer of crypto assets’ in class 36, ‘providing online virtual guided tours’ in class 41 and ‘cryptomining’ in class 42.
Scientific and medical progress
BOIP points out that there are other additions to the classification that have arisen from recent events. As a result of the pandemic, we note terms such as ‘respiratory masks for medical purposes’ and ‘respirators for filtering air for medical purposes’ in class 10, or services such as ‘testing and analysis of goods being imported or exported for quarantine clearance purposes’ in class 42.
With regard to drugs, the principle set up in the 2020 version that drugs for medical use can be included under class 5 has been incorporated in the new edition of the Nice Classification.
Other amendments have been made with a view to improving how the classification is organised. BOIP notes, for example, that as ‘diving suits’ fall in class 9, ‘wet suits’ have been transferred from class 25 to class 9. Class 10 no longer excludes ‘hospital beds’ (previously in class 20), and ‘educational research’ has been removed from class 42 and included in class 41.
Other important changes
Lastly, some important amendments have been made to the heading and explanation of class 45. ‘Personal and social services rendered by others to meet the needs of individuals’ has been replaced by ‘dating services, online social networking services; funerary services; babysitting’. The following services have moreover been added to this class: ‘legal compliance auditing’, ‘pet sitting’, ‘dog walking services’ and ‘rental of clothing’.
All amendments therefore demand a certain vigilance on your part, especially if you use the description of a previous application. By using the harmonised database (HDB), selected products or services can be automatically allocated to the correct classes. Prior verification of the terms via TMclass is also strongly recommended.
It is also important to consider other factors, such as protected geographical indications (PGIs). PGIs may not be used as a generic term, and BOIP therefore recommends specifying the name of the product, followed by [GI], and then the product to which the PGI relates. For example, ‘Champagne’ [GI] wine. GIs protected in the EU can be searched for in the GIview database, and plant varieties can be searched for in the database of the CPVO.
Avoid delays in trademark registration
It is of course always possible to register trademarks for products or services that are not included in the list. The expressions ‘namely’ or ‘in particular’ are not used in the HDB. In this case, longer waiting times can also be expected because the examiners need to analyse the applications in greater depth. By using the HDB you can therefore set up your classification correctly and avoid delay in the registration of your trademark.