All goods and services covered by registered trade marks in the
UK and numerous other countries are divided into 45 classes under
the NICE Classification system. The latest version (the 10th
edition) of the NICE Classification system came into force on 1
January 2012. This is a short note to set out how this may affect
your existing applications and registrations and any new
applications in the UK. There are approximately fifty changes to
the Classifications and most of these are very minor.
The principal changes apply in the fields of dietary and
nutritional supplements and food additives, amusement and gaming
apparatus, vending machines and other electrical goods, machines
and apparatus, baby diapers (nappies), and swimming equipment. The
10th Edition also reflects changes in technology (for example
specifically adding downloadable ring tones and music files, GPS
apparatus, USB flash drives and downloadable image files into Class
9) and consumer habits (for example adding premixed alcoholic
beverages such as "alcopops" into Class 33). Whilst
substantive amendments to the Classification (such as the transfer
of goods or services from one class to another or the creation of
new classes) will continue to be adopted every 5 years, additions
to and deletions and changes in the wording of goods and services
in the NICE Classification will be adopted annually, which should
make new products and technology easier to classify.
Existing Applications and Registrations: There
is no need for a trade mark owner to reclassify any existing
applications (i.e. those having a filing date prior to 1 January
2012) and trade marks already registered will not be reclassified.
The breadth of coverage for any existing applications and
registrations therefore will not be affected.
New Applications: The new classification system
will be applicable for all applications which have a filing date of
1 January 2012 or later. For any new applications filed it is
therefore important to check that the classes applied for cover the
goods or services intended. The UK Intellectual Property Office
("UKIPO") has published a helpful summary of the changes
made to the NICE Classification system which can be accessed on
their website at http://www.ipo.gov.uk/practice-changes.pdf.
Reclassification of existing Registrations: The
law allows the UK Registrar of Trade Marks to amend existing
registrations so as to accord to the new classification under
section 65 of the Trade Marks Act 1994. If the UKIPO wishes to
reclassify any goods or services, Rule 54 of the Trade Mark Rules
provides that the Registrar must give the trade mark proprietor
notice of any proposed amendments and the proprietor will have a
two month window in which to object. Except in limited
circumstances, such amendments will not be permitted if they extend
the rights conferred by the registration. Reclassification is not
mandatory and there is no fee to pay for reclassification, and no
forms need to be completed.
Watching and Searching: It is also important to
be aware of the changes in classification when considering the
classes of goods and services to be covered by any trade mark
watching services, or proposed trade mark clearance searches.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
Specific Questions relating to this article should be addressed directly to the author.
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