Nice Agreement - Changes in the International Classification of Goods and Services for the Purposes of the Registration of Marks

Newsletters and Bulletins / May 2002 / Nice Agreement

The United States, the United Kingdom, the European Community member states and 52 other nations adhere to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement). Under this system, goods and services identified in trademark applications must be organized into numbered classes which group similar or related goods and services.

The World Intellectual Property Organization (WIPO), which administers this classification system, recently introduced the Eighth Edition of the Nice Classification of Goods and Services which significantly restructures former International Class 42 and adds three new service classes. The Eighth Edition entered into force on January 1, 2002.

Introduction of Classes 43, 44 and 45

Class 42 previously encompassed such diverse and unrelated services as computer programming, restaurants and surgery. The changes are intended to limit the scope of Class 42 and reclassify numerous former Class 42 services into existing classes and new Classes 43, 44 and 45. The revised organization of Classes 42-45 is as follows:

Class 42: scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.

Class 42 includes mainly services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities. Such services are provided by members of professions such as chemists, physicists, engineers, computer specialists, lawyers, etc. While medical research remains within Class 42, medical treatment services are reclassified into Class 44.

Class 43: services for providing food and drink; temporary accommodation.

Class 43 includes mainly services provided by persons or establishments whose aim is to prepare food and drink for consumption and services providing bed and board in hotels, boarding houses or other establishments providing temporary accommodations.

Class 44: medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

Class 44 includes mainly medical care, hygienic and beauty care given by persons or establishments to human beings and animals. It also includes services relating to the fields of agriculture, horticulture and forestry.

Class 45: personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.

Class 45 includes, in particular, investigation and surveillance services relating to the safety of persons and entities; services provided to individuals in relation to social events, such as social escort services, matrimonial agencies and funeral services. However, this class does not include, for example, professional services that provide direct aid in the operations or functions of a commercial undertaking (Class 35); services relating to financial or monetary affairs and services dealing with insurance (Class 36); or services consisting of all forms of education of persons (Class 41).

The revision also transfers a number of former Class 42 services into existing service classes, including the following:

Class 35: rental of vending machines; psychological testing for the selection of personnel.

Class 40: lithographic printing; printing; knitting machine rental; offset printing; photocomposing services; silkscreen printing; sorting of waste and recyclable material [transforming].

Class 41: photographic reporting; photography; vocational guidance [education or training advice]; news reporters’ services; translation; sign language interpretation; videotaping; microfilming.

Elimination of "catch-all" service class

The Eighth Edition of the Nice Classification also deletes "services that cannot be placed in other classes" from the official heading of Class 42. According to the U.S. Patent & Trademark Office (USPTO), this "miscellaneous service" language forced the acceptance of imprecise identifications and classifications of services deemed too complicated or difficult to classify.

Implementation of the Changes in the United States

The USPTO applies the new requirements to applications filed on or after January 1, 2002. Applications filed before January 1, 2002 may follow the classification requirements existing at the time of filing. However, Examiners may offer applicants the option of amending an application to comply with the new classification requirements. Of course, if such an amendment increases the number of classes covered by an application, the applicant must submit additional filing fees to cover any added classes.

The USPTO, will not reclassify existing registrations according to the Eighth Edition of the Nice Classification. Registrations will remain classified according to the Nice Classification edition that was in force at the time of registration. Accordingly, availability searches for proposed trademarks covering services affected by the revision should encompass both the current international class and Class 42.

The USPTO will no longer accept imprecise service identifications. Instead, services must be described with sufficient clarity and precision to allow for appropriate classification in one of the eleven service classes. In particular, applicants can no longer identify information or consulting services "in a wide variety of fields" or "bundle" information services in multiple classes according to the dominant subject matter. For example, an identification of "information in the field of automobiles" will require amendment to specify the particular type of information, e.g., information regarding the commercial aspect of purchasing an automobile (Class 35), information on the care and maintenance of automobiles (Class 37), or information on automobile financing (Class 36). If the services encompass more than one class, the applicant will be required to limit the scope of the identification or add additional classes to its application.

Implementation of the Changes Outside the United States

Each of the 69 member states of the Nice Agreement, as well as a significant number of countries that are not members but still follow the Nice Classification, must implement the Eighth Edition as they see fit.

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