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The 10th edition of the Nice Classification for trade mark applications

Guiding Principle

The tenth edition of the International (Nice) Classification of Goods and Services for the purposes of the registration of trademarks will come into effect on 1 January 2012.

The Nice Classification is an international classification of goods and services for the purpose of registration of trademarks, which was adopted in 1957 by the Nice Agreement.

This Classification consists of

  1. A list of classes, together with, as the case may be, explanatory notes;
  2. An alphabetical list of goods and services, with an indication of the class into which each of the goods or services falls (Article 1(2) Nice Agreement).

There are significant changes to the classification on items across several classes, as well as class headings, explanatory notes and general remarks. We highlight some of the substantive changes as follows:

  1. Dietary supplements, whether used as supplement to normal diet or to achieve a health benefit, will now be uniformly classified in Class 5. This removes the requirement to specify “for medical purposes”. Furthermore, Class 5 now extends to pharmaceuticals and other preparations, including dietary supplements, for veterinary purposes;
  2. Baby Diapers, napkin-pants and diaper-pants, regardless of whether they are disposable or made of textile, will be classified uniformly in Class 5 instead of Class 16;
  3. Various items that were previously considered apparatuses under Class 9 will now be considered machines and machine parts under Class 7. For instance, welding and soldering apparatus, vending machines, electric door openers and closers, self-regulating fuel pumps, electrical packaging apparatus will now be classified under Class 7;
  4. Floats for bathing and swimming, water wings, swimming belts, and swimming jackets, all being playthings, will now be classified under Class 28 and not Class 9;
  5. The distinction between deodorants for personal and non-personal use has been removed. Deodorants are now to be classified in Class 3 if they are “for human beings or for animals” or in Class 5 if they are “other than for humans or for animals”;
  6. Downloadable ring tones for mobile phones, downloadable music files, cell phone straps, portable media players, USB flash drives, and GPS apparatus have been added to Class 9;
  7. Leasing and franchising services will now be classified in the same way as rental services, i.e. they will be classified in the same classes as the services provided by the Lessor or the Franchisor. However, hire or lease-purchase financing will be classified in Class 36 as a financial service;
  8. Entertainment and gaming devices are now classified uniformly in class 28. The previous, and rather artificial, distinction between consumer devices that are equipped with an external display screen or monitor (in Class 9) and those with built-in screen (in class 28) has been removed;
  9. Evaluation services in relation to standing timber and wool, previously settled under Class 35 services, will now be classified under Class 36 if they are financial evaluation services and under Class 42 if they are qualitative evaluation services.

While classification changes are procedural for the most part, they do have a substantive impact on the trademark examination process in some countries, such as Japan, where a finding of similarity between goods can be based simply on the goods being located in the same class even when the goods are in fact different. With the Classification now being revised every year, these countries may need to reconsider their approach to determining similarity of goods to create stability and predictability of outcome in the examination process.

The Nice classification is continuously revised by WIPO and a new edition is published every five years. The revision is usually carried out by a Committee of Experts set under the Nice Agreement. All states party to the Agreement are members of the Committee of Experts.

It is not clear how soon countries from Middle East will be adopting the 10th Edition.

January, 2012 Tareq Jeroudeah
  Meyer-Reumann & Partners, Dubai Office
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