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.
|Class||List of terms|
|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|
|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|
|3||Non-medicated cosmetics and toiletry preparations; Non-medicated dentifrices; Perfumery, essential oils; Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations|
|4||Industrial oils and greases, wax; Lubricants; Dust absorbing, wetting and binding compositions; Fuels and illuminants; Candles and wicks for lighting|
|5||Pharmaceuticals, 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|
|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|
|7||Machines, machine tools, power-operated tools; Motors and engines, except for land vehicles; Machine coupling and transmission components, except for land vehicles; Agricultural implements, other than hand-operated hand tools; Incubators for eggs; Automatic vending machines|
|8||Hand tools and implements, hand-operated; Cutlery; Side arms, except firearms; Razors|
|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|
|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|
|11||Apparatus and installations for lighting, heating, cooling, steam generating, cooking, drying, ventilating, water supply and sanitary purposes|
|12||Vehicles; Apparatus for locomotion by land, air or water|
|13||Firearms; Ammunition and projectiles; Explosives; Fireworks|
|14||Precious metals and their alloys; Jewellery, precious and semi-precious stones; Horological and chronometric instruments|
|15||Musical instruments; Music stands and stands for musical instruments; Conductors' batons|
|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|
|17||Unprocessed 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|
|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|
|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|
|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|
|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-worked glass, except building glass; Glassware, porcelain and earthenware|
|22||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 of paper, cardboard, rubber or plastics; Raw fibrous textile materials and substitutes therefor|
|23||Yarns and threads, for textile use|
|24||Textiles and substitutes for textiles; Household linen; Curtains of textile or plastic|
|25||Clothing, footwear, headwear|
|26||Lace, braid and embroidery, and haberdashery ribbons and bows; Buttons, hooks and eyes, pins and needles; Artificial flowers; Hair decorations; False hair|
|27||Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; Wall hangings, not of textile|
|28||Games, toys and playthings; Video game apparatus; Gymnastic and sporting articles; Decorations for Christmas trees|
|29||Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs; Milk, cheese, butter, yogurt and other milk products; Oils and fats for food|
|30||Coffee, tea, cocoa and artificial coffee; 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]|
|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 flowers; Bulbs, seedlings and seeds for planting; Live animals; Foodstuffs and beverages for animals; Malt|
|32||Beers; Non-alcoholic beverages; Mineral and aerated waters; Fruit beverages and fruit juices; Syrups and other non-alcoholic preparations for making beverages|
|33||Alcoholic beverages, except beers; Alcoholic preparations for making beverages|
|34||Tobacco and tobacco substitutes; Cigarettes and cigars; Electronic cigarettes and oral vaporizers for smokers; Smokers' articles; Matches|
|35||Advertising; Business management; Business administration; Office functions|
|36||Insurance; Financial affairs; Monetary affairs; Real estate affairs|
|37||Construction services; Installation and repair services; Mining extraction, oil and gas drilling|
|39||Transport; Packaging and storage of goods; Travel arrangement|
|40||Treatment of materials; Recycling of waste and trash; Air purification and treatement of water; Printing services; Food and drink preservation|
|41||Education; Providing of training; Entertainment; Sporting and cultural activities|
|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|
|43||Services for providing food and drink; Temporary accommodation|
|44||Medical services; Veterinary services; Hygienic and beauty care for human beings or animals; Agriculture, aquaculture, horticulture and forestry services|
|45||Legal services; Security services for the physical protection of tangible property and individuals; Personal and social services rendered by others to meet the needs of individuals|