The Nice Classification - what is it all about?
In almost every jurisdiction of the world, trademark authorities will check the number of classes of the Nice Classification covered by the list of goods and services of a trademark application.
But why? Because of the Nice Agreement.
The Nice Agreement (concluded June 15, 1957 at the Nice Diplomatic Conference) establishes a classification of goods and services for the purpose of registering trademarks, the Nice Classification. The 2016 - version of the 10th edition came into force on January 1, 2016. It comprises 34 classes of goods and 11 classes of services.
84 States are currently party to the Nice Agreement, but the trademark offices of about 65 additional States, as well as the International Bureau of WIPO, the African Intellectual Property Organization (OAPI), the African Regional Intellectual Property Organization (ARIPO), the Benelux Organisation for Intellectual Property (BOIP) and the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) of the European Union (EU), also use the Classification.
Main purpose of the Nice Classification is to organize trademark application procedures and to enable the trademark authorities to calculate the fees they require for the application and registration of a trademark in the respective jurisdiction. As a matter of fact, in most countries of the world the costs of trademark application and registration will directly depend on the number of classes of the Nice Classification covered by the applied-for mark.
Thus, when preparing a trademark application, applicant will also have to consider the classes of the Nice Classification covered by the goods or services, for which the trademark shall grant protection - and the trademark authorities will do the same during the registration process.
Of course, we will assist and advise the applicant in this regard.
In addition, applicant himself may also gather some information in the internet: the online tool TMCLASS provides an easy way to learn more about the goods and services of the Nice Classification and the classes, to which they belong.
However, it is important to remember that the classes of the Nice Classification do not in any way influence the decision, whether goods and services comprised by one trademark are similar to that of another trademark. As you may already know, the owner of a trademark has the exclusive right to use said mark for the goods or services covered by the mark and may therefore bar any third party from using the same or a similar mark for the same or similar goods or services. Thus, the question whether or not goods and services are similar is of utmost importance when there is a conflict between trademarks. But the Nice Classification does not indicate nor exclude similarity: as its purpose lies in simplifying the calculation of fees and the handling of trademark applications only, there is no use to be made from the Nice Classification in trademark conflicts. The decision whether goods or services are similar will only be made on the basis of a comparison of the goods and services in question, their nature, their purpose, method of use, distribution channels etc. Thus, goods belonging to the same Nice Class may be dissimilar, whereas goods belonging to different classes may be regarded as similar or even identical.