Nice Classification
What is the Nice Classification?
The Nice Classification is an international agreement from 1957 for the classification of goods and services into classes (Nice classes). The Nice Classification is used to define the scope of protection for trademarks. For this purpose, when registering trademarks, it must be specified for which Nice classes the trademark is being registered.
The administration and annual updating of the Nice Classification are the responsibility of the World Intellectual Property Organisation (WIPO). The latest version of the Nice Classification comes into force on January 1st of each year.
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The Nice Classification is divided into only 45 classes. Nevertheless, the Nice Classification covers all economic activities. There are 34 goods classes and 11 services classes. Goods are categorized by product and material groups, and services by industry sectors.
Numerous Nice classes therefore contain a diverse mix of various goods or services. Which goods or services are included in the classes is determined by the class headings and the explanatory notes. Even the class headings represent only a very broad classification.
Example Class 33
Nice Class 33, for example, reads as follows:
CLASS 33
- alcoholic beverages, excluding beers
- alcoholic preparations for making beverages
CLASS 33 – EXPLANATORY NOTES
Class 33 essentially includes alcoholic beverages, essences, and extracts.
This class includes, in particular:
- Wines, liqueur wines;
- alcoholic ciders, perries;
- Spirits, liqueurs;
- alcoholic essences, alcoholic fruit extracts, bitters.
This class does not include, in particular:
- medicinal beverages (Cl. 5);
- de-alcoholized beverages (Cl. 32);
- Beers (Cl. 32);
- non-alcoholic beverages for mixing alcoholic beverages, e.g., non-alcoholic soft drinks, soda water (Cl. 32).
Assignment of the Trademark to Nice Classes
The basic rule states that a registered trademark offers protection to the extent of the applied-for Nice classes or the specifically selected goods and services.
The desired Nice classes or specific goods and services must be selected during registration. There is no obligation to adhere to the very broad headings of the Nice classes. A higher degree of detail is permissible.
Thus, a trademark for a whisky could be registered in any of the following ways:
- Class 33 – alcoholic beverages, excluding beers
- Class 33 – Spirits
- Class 33 – Whisky
- Class 33 – alcoholic beverages, excluding beers; spirits; whisky
TMClass Taxonomy
Over time, this possibility led to trademark registers becoming confusing and registered trademarks being difficult to compare. “Whisky bottles”, “Bottle for whisky”, “Sealable glass containers for storing whisky” – all the same?
To create order, the TMClass taxonomy was developed by EUIPO and national EU offices in cooperation with WIPO. Although the structure of TMClass is based on the Nice Classification, it is not an official component of the Nice Classification system. TMClass already contains over 60,000 harmonized terms that are accepted by all participating trademark offices.
TMClass has no legal effect on the examination of trademarks or the comparison of goods and services. However, the use of terms not listed in TMClass can lead to significantly longer processing times for trademark registration.
Select Your Preferred Appointment Now:Free initial consultationSelection of Nice Classes
Several aspects must be considered when selecting Nice classes.
Delimitation of Classes
Anyone who produces clothing selects at least Nice Class 25 (clothing, footwear, headgear) for trademark registration. However, anyone who sells clothing instead requires Nice Class 35 (advertising; business management; business administration; office functions), which also includes wholesale and retail services. However, anyone who purchases white-label clothing and merely affixes their brand for sale will again fall under Nice Class 25.
Subdivision within the Classes
In most cases, it is not sufficient to simply specify a Nice class. For example, Nice Class 9 contains 6,696 standardized detailed selection options, including software, diving equipment, and fire extinguishers.
Anyone who uses overly precise terms unnecessarily restricts their trademark and future fields of activity. Anyone who uses overly broad terms unnecessarily increases the risk of collision with other trademarks.
Related Nice Classes
It must not be overlooked that the Nice Classification ultimately only serves an organizational function.
A holistic view must always be taken to assess the likelihood of confusion. How similar are the protected trademarks, how similar are the protected goods and services?
For example, Nice Class 9 “Software” and Nice Class 42 “Software Development” are very similar. Consequently, between the trademark Tixi in Class 9 and the trademark Tixy in Class 42, there would be a likelihood of confusion due to the almost identical spelling and sound in combination with the almost identical field of activity.
These “related” Nice classes must be considered both during similarity searches and when registering the trademark. In case of doubt, the related classes should also be researched and registered.
Number of Classes
The number of classes chosen depends on the underlying trademark strategy.
On the one hand, a later extension of the trademark’s scope of protection by adding further goods and services is no longer possible. For this, a completely new trademark would have to be registered. Therefore, postponing the registration of individual classes that will certainly be needed in the future is never advisable.
On the other hand, an overly broad scope of protection (in extreme cases, by registering all Nice classes) is also not sensible. This would lead to higher costs, increase the risk of infringement of prior rights, and make the trademark more susceptible to cancellation actions.
Defensive Trademark
Nevertheless, registering a defensive trademark, i.e., registering a trademark in Nice classes that may be needed in the future, can make sense to secure future market opportunities.
A middle ground is advisable. Current and realistic future business areas should be protected. In this case, a strategy for establishing sufficient and demonstrable acts of use for classes not yet utilized is also required.
The validity-preserving measures are necessary because a cancellation action can be brought against a trademark or against the unused parts of a trademark if the trademark is not used in a registered Nice class for more than five years.
Select Your Preferred Appointment Now:Free initial consultationOngoing Trademark Development
As soon as a company intends to enter new business areas, the trademark must be reviewed to ensure that the registered classes are still sufficient.
If this is not the case, the new classes must be researched before using the trademark in the new business areas to rule out infringement of prior third-party rights. Subsequently, the existing trademark must be registered again in the new classes. An extension of existing trademarks to include additional classes is not possible.
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