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How do you define a trademark and what the Nice Classification system has to do with it?
Trademarks allow you to claim exclusive use of a certain name, emblem, or slogan but only in connection with a particular line of goods or services.
How to Choose the Right Goods and Services
Through trademark registration, it is very important to protect a brand's uniqueness and identity. But the protection only goes as far as the goods and services that have been registered.
Customers can easily tell the difference between brands in different industries because they are clear. So, the smart choice of goods and services during registration is one of the most important ways to strengthen a brand's trademark protection.
NICE System for Classification and its relevance to trademark
The 1957 Nice Agreement created the NICE Classification, which has 45 groups of products and services that IP offices around the world use to figure out how much IP is worth.
The first 34 categories are for physical things, and the last 11 are for services that can't be seen or touched. Each class has thousands of subcategories of products and services, and the trademark application must list all of them. Choosing what services and goods to trademark is one of the hardest parts of getting a trademark.
What Nice Classes are?
Classes 1 through 34 are for goods, and Classes 35 through 45 are for services. Each class has a class heading that tells you what kind of goods or services it covers in a general way. For example, the heading for Class 25 is "Clothing, shoes, and headwear," and the heading for Class 15 is "Musical instruments."
Each class has a set of terms that describe the goods or services that the EU trademark application is meant to protect. When filling out an EU trademark application, applicants are strongly encouraged to use the terms from the Nice Classification. If they don't, the registration process could take longer because the terms would have to be translated. Using these generic terms will also make it easier to search the databases of EU trademarks, which will lead to more openness in the end.
In case of EU trademark is used a TMclass which an interactive search tool that can be used to look up things in the Nice Classification. It is available in all of the official EU languages, as well as in Chinese, Japanese, Korean, Russian, and Turkish.
It's important to remember that the original list of goods and services on an EU trademark application can only be cut down, not added to. In other words, you can't add any goods, services, or classes to the application as it was originally filed.
Why does it matter how the trademarks are put into Nice Classes?
You should think carefully about the Nice classes for which you want to register your trademark, because you can't move it to a different class after you've filed the trademark application. The trademark classes are used to figure out what a trademark can protect. The more protection there is, the more likely it is that older trademark rights will be violated. So, doing research on identity and similarity can help you avoid a brand collision.
When choosing the trademark classes, it's important to remember that the applicant must use them. He has to use his trademark on the registered goods and services and in the way he registered them. If he doesn't use the trademark for 5 years straight, he might lose his rights to it.
How many different Nice Classes can a trademark have?
When you register the Nice classes, it's important to make sure that the brand is protected for all the ways it can be used.
If there aren't enough protected areas (Nice classes), some areas won't be safe. If too many areas are protected but not used, there may be a process to delete them because they are not being used.
Up to one Nice class can be used to register a trademark with the EUIPO for a basic fee. You can choose to take more classes, but each extra class will cost you an extra fee.
Can goods and services be put into different groups?
Sometimes it is hard to choose the right trademark classes for a brand because the goods or services don't clearly fit into a class.
How many of classes does my Trademark really need?
Explore the scope of a trademark to find out what kinds of goods and services it covers. This will help you figure out how useful it can be. Most logo owners are happy with a small presence in two or three classes. However, ambitious businesses with large networks often paint a bigger picture by registering their logos in ten or more different classes.
The Downsides of Adding More Product and Service Categories to Trademark Applications
Adding more product and service categories to the application does increase the brand's protection, but it also has a number of downsides. To start, adding a new category of goods or services to the application costs extra (in EU for example here). Second, if a trademark covers a wider range of goods and services, there is a greater chance that someone will object. That is, the chances that an identical or similar trademark has already been registered go up as the number of classes listed in the application goes up.
Narrowly Defining Your Goods and Services
So, if you want to register a trademark, the most important thing to do is to figure out what the brand's primary and secondary markets are. If the goods and services you want to protect are narrowly defined, your application is more likely to be accepted (for example, "SaaS platform for accounting" rather than "software"). You should also make sure that the classes of goods and services you list in your application are specific enough to cover everything you want to protect. Finally, be prepared to pay more if you want protection for multiple classes. It's often worth it in the long run, both financially and legally.
Nice Classes one by one. Are willing to learn more about trademarks?
At the moment, the alphabetical list is the most detailed level of classification. It has about 10,000 examples of goods and 1,000 examples of services. We are not going to look at all of these right now. We are going to go over the 45 classes with you to give you a general idea of what they are.
Class 1
Chemicals for use in industry, science, and photography, as well as in agriculture, horticulture, and forestry; unprocessed artificial resins; unprocessed plastics; fire extinguishing and fire prevention compositions; tempering and soldering preparations; substances for tanning animal skins and hides; adhesives for use in industry; putties and other paste fillers; compost manures, fertilizers; biological preparations for use in industry and science. Chemicals are generally in this classification.
Class 2
Paints, varnishes, lacquers, preservatives against rust and against deterioration of wood; colorants, dyes; inks for printing, marking, and engraving; raw natural resins; metals in foil and powder form for use in painting, decorating, printing and art.
Class 3
Non-medicated cosmetics and toiletry preparations, non-medicated dentifrices; perfumery (I hope I'm saying it right), perfumery, essential oils; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring, and abrasive preparations.
Class 4
Industrial oils and greases, wax; lubricants; dust absorbing, wetting, and binding compositions; fuels and illuminants; candles and wicks for lighting.
Class 5
Pharmaceuticals (that's a big class), medical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for human beings and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants preparations for destroying vermin; fungicides, herbicides.
Class 6
Common metals and their alloys, ores; Metal materials for building and construction; transportable buildings of metal; non-electric cables and wires of common metal; Small items of metal hardware; metal containers for storage or transport; safes.
Class 7
Machines, machine tools, power-operated tools; motors and engines, except for land vehicles (land vehicles will go somewhere else); machine coupling and transmission components (except for land vehicles again); agricultural implements, other than hand-operated hand tools; incubators for eggs; automatic vending machines.
Class 8
Hand tools and implements, hand-operated; cutlery; side arms, except firearms; razors.
Class 9
Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity; apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; recorded and downloadable media, computer software, blank digital or analogue recording and storage media; mechanisms for coin-operated apparatus; cash registers, calculating devices; computers and computer peripheral devices; diving suits, divers' masks, ear plugs for divers, nose clips for divers and swimmers, gloves for divers, breathing apparatus for underwater swimming; fire-extinguishing apparatus. Computer software, all software which you sell as a product would be filed under Class 9. Keep in mind that software sold as a service is filed under a different classification.
Class 10
Surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopaedic articles; suture materials; therapeutic and assistive devices adapted for persons with disabilities; massage apparatus; apparatus, devices and articles for nursing infants; sexual activity apparatus, devices and articles.
Class 11
Vehicles; apparatus for locomotion by land, air or water.
Class 12
Class 12 includes mainly vehicles and apparatus for the transport of people or goods by land, air or water.
Class 13
Firearms; ammunition and projectiles; explosives; fireworks.
Class 14
Precious metals and their alloys; jewellery, precious and semi-precious stones; horological and chronometric instruments.
Class 15
Musical instruments; music stands and stands for musical instruments; conductors' batons.
Class 16
Paper and cardboard; printed matter; bookbinding material; photographs; stationery and office requisites, except furniture, adhesives for stationery or household purposes; drawing materials and materials for artists; paintbrushes; instructional and teaching materials; plastic sheets, films and bags for wrapping and packaging; printers type, printing blocks.
Class 17
On processed and semi-processed rubber, gutta-percha, gum, asbestos, mica, and substitutes for all these materials; Plastics and resins in extruded form for use in manufacture; packing, stopping, and insulating materials; flexible pipes, tubes, and hoses, not of metal; right so because pipes, tubes, and hoses of metal belong to a different class.
Class 18
Leather and imitations of leather; Animal skins and hides; Luggage and carrying bags; umbrellas and parasols; walking sticks; whips; harness and saddlery; collars, leashes, and clothing for animals. Notice here that they're grouping them not just for what things are but also what they're made out of.
Class 19
Materials, not of metal, for building and construction; rigid pipes, not of metal, for building; asphalt, pitch, tar and bitumen; transportable buildings, not of metal; monuments, not of metal.
Class 20
Furniture, mirrors, picture frames; containers, not of metal, for storage or transport; unworked or semi-worked bone, horn, whalebone or mother-of-pearl; shells; meerschaum; yellow amber.
Class 21
Household or kitchen utensils and containers; cookware and tableware, except forks, knives, and spoons; combs and sponges; brushes, except paintbrushes; brush-making materials; articles for cleaning purposes; unworked or semi work glass; except building glass glassware, porcelain, and earthenware.
Class 22
(We're almost halfway there) Ropes and string; nets; tents and tarpaulins; awnings of textile or synthetic materials;; sails; sacks for the transport and storage of materials in bulk; padding; cushioning and stuffing materials, except paper, cardboard, rubber or plastics; raw fibrous textile materials and substitutes thereof.
Class 23
This is probably the shortest class there is, made up of just yarns and threads for textile use.
Class 24
Textiles and substitutes for textiles; household linen; curtains of textile or plastic.
Class 25
is massive but the header is very short: clothing, footwear, headwear.
Class 26
Lace, braid and embroidery, and haberdashery ribbons and bows; buttons, hooks and eyes, pins and needles; artificial flowers; hair decorations; false hair.
Class 27
Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings, not of textile.
The funny thing here is that linoleum used to be a trademark by itself. It was the name of a brand and then it became generic and now it even made it into the classification as a generic word. That's fascinating.
Class 28
Games, toys, and playthings; video game apparatus; gymnastic and sporting articles; decorations for Christmas trees. So again, when they thought, “okay where do we put decorations for Christmas trees?” and they decided to put them in the same class as toys.
Class 29
Meat, fish, poultry, and game; meat extracts; preserved, frozen, and dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk, cheese, butter, yogurt, and other milk products; oils and fats for food.
Class 30
Coffee, tea, cocoa and substitutes therefor; rice, pasta and noodles; tapioca and sago; flour and preparations made from cereals; bread, pastries and confectionery; chocolate; ice cream, sorbets and other edible ices; sugar, honey, treacle; yeast, baking-powder; salt, seasonings, spices, preserved herbs; vinegar, sauces and other condiments; ice (frozen water).
Class 31
Raw and unprocessed agricultural, aquacultural, horticultural, and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables, fresh herbs natural plants and flower bulbs, seedlings, and seeds for planting; live animals; foodstuffs and beverages for animals; malt.
Class 32
Beers; non-alcoholic beverages; mineral and aerated waters; fruit beverages and fruit juices; syrups and other preparations for making non-alcoholic beverages.
Class 33
Alcoholic beverages, except beers; alcoholic preparations for making beverages. So in theory, if you have a beer and some other harder liquor or even wine, you would have to file that trademark in two classes 32 and 33.
Class 34
Tobacco and tobacco substitutes; cigarettes and cigars; electronic cigarettes; and oral vaporizers for smokers; smokers’ articles; matches.
And now the classes for services. That's classes 35 to 45.
Class 35
Advertising; business management; Business Administration and office functions. Actually, the first video that I'm going to publish for a specific class is going to cover class 35 because as you'll see, the header can be very short but the scope of what the class covers could be massive.
Class 36
Financial, monetary and banking services; insurance services; real estate services.
Class 37
Building construction; repair; installation services.
Class 38
Telecommunications.
Class 39
Transport packaging and storage of goods travel arrangements. Now remember there were several classes that dealt with vehicles and things that actually move, so those were for products. Those worth for the actual vehicles, class 39 are the service of transportation of moving people and goods from point A to point B.
Class 40
Treatment of materials.
Class 41
Education; providing of training; entertainment; sporting and cultural activities.
Class 42
Scientific and technological services and research and design relating thereto; industrial analysis, industrial research and industrial design services; quality control and authentication services; design and development of computer hardware and software.
Class 43
Services for providing food and drink; temporary accommodation.
Class 44
Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture, and forestry services, rental of respiratory masks for artificial respiration, medical examination for quarantine clearance purposes.
Class 45
Legal services; security services for the physical protection of tangible property and individuals; dating services, online social networking services; funerary services; babysitting.
Can Nice Classification be changed?
Yes. The Nice Agreement set up a Committee of Experts to make changes to the Nice Classification. Every five years, a new "edition" comes out, but since 2013, a new "version" of each "edition" comes out every year.
The main difference is that a new edition can make more significant changes (called "amendments"), which can include moving goods or services between classes or even making a new class. A new version, on the other hand, cannot make these kinds of changes.
When did Nice Classification last change?
WIPO desided that the 12th edition of the Nice Classification came out in October 2022.
If you've already filed for an international trademark registration before this change goes into effect, you don't have to make any changes right away as long as your goods and services are listed according to IP Translator and have a clear enough description. If it isn't, you can (and probably should) make changes.
The new edition of the Nice Classifications may help with this, and you should look at the new list and/or talk to a trademark attorney if you have questions or concerns about a specific class.
There are some interesting changes to both goods and services in the new edition.
On January 1, 2023, the 12th edition came into effect.
It will be used for all new trademark applications filed in a contracting party or with WIPO on or after January 1, 2023. (It won't be able to be used in the past. The parties to the contract or WIPO won't reclassify or change the goods and/or services in trademark applications or registrations filed before January 1, 2023.)