All new trade mark applications in Australia to be affected 7 min read
The World Intellectual Property Organization (WIPO) has announced that the 12th edition of the Nice Classification – the international system for classifying goods and services for registering trade marks – will come into force in the new year, on 1 January 2023.
This new edition will affect all new trade mark applications filed in countries such as Australia and New Zealand on or after 1 January 2023.
We outline the main changes and how they may affect you.
Key takeaways
- The 12th edition of the Nice Classification makes substantial changes to class 45.
- It now recognises as standard various goods and services that are becoming more common: eg due to COVID-19, wars and conflicts, and the rise of non-fungible tokens, online communities, global environmental concerns, and the Korean cultural wave ('hallyu').
- Classes 23 and 34 are not affected by this new edition.
Who in your organisation needs to know about this?
Trade mark owners, trade mark attorneys, in-house counsel.
The Nice Classification
What is the Nice Classification?
The Nice Classification was established by the Nice Agreement as a system for classifying goods and services for the purpose of registering trade marks.
It divides goods and services into 45 'classes' (1 to 34 are for goods, and 35 to 45 are for services).
Each class has a heading, explanatory note, and standard goods or services that must be recognised in the class.
Which countries apply it?
All countries party to the Nice Agreement and WIPO must apply the Nice Classification.
The Nice Agreement currently has 92 contracting parties, including Australia and New Zealand.
Some countries not party to the Nice Agreement also apply the Nice Classification.
When is it changed?
The Committee of Experts established by the Nice Agreement revises the Nice Classification. A new 'edition' is published every five years, but since 2013, a new 'version' of each edition has been published every year.
The difference is that a new edition can adopt more substantial changes (called 'amendments'), that can involve transferring goods or services between classes, or even creating a new class, which a new version cannot adopt.
What are the main changes in the 12th edition?
In October 2022, WIPO announced the publication of the 12th edition of the Nice Classification.
The changes in it appear to reflect the current state of affairs resulting from COVID-19, wars and conflicts, and the rise of non-fungible tokens, online communities, global environmental concerns, and the Korean cultural wave ('hallyu').
The most substantial changes made to the heading and explanatory note are to class 45. The heading of class 45 previously read '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'. This new edition replaces 'personal and social services rendered by others to meet the needs of individuals' with 'dating services, online social networking services, funerary services, babysitting' and has added services to this class such as:
- legal research in the field of environmental protection;
- animal adoption services;
- providing non-medical in-home care services for individuals; and
- content moderation for internet chatrooms
Changes have also been made to the explanatory notes of classes 6, 10, 20 and 42. Class 10 no longer excludes 'hospital beds'. Class 42 now excludes 'research in the field of education'.
Notable changes made to the standard goods or services are below. In particular, in relation to class 9, it is interesting to note the addition of downloadable digital files authenticated by NFTs, as well the extension from cryptocurrencies to crypto assets (which would include NFTs).
|
Class(es) |
Change(s) |
|---|---|
|
9 |
Added:
Replaced 'downloadable computer software for managing cryptocurrency transactions using blockchain technology' and 'cryptocurrency mining / cryptomining' with:
|
|
9 (and 25) |
Transferred (and amended) from class 25:
|
|
10 |
Added:
|
|
12 |
Added:
|
|
25 |
Added:
*This is Korean traditional wear. Replaced 'esparto shoes or sandals' with:
|
|
30 |
Added:
*These are Korean foods. |
|
33 |
Added:
*These are Korean alcoholic beverages. |
|
41 |
Added:
|
|
42 |
Added:
|
|
44 |
Added:
|
Other, minor, changes include the addition of the American 'z' and British 's' spelling variations, and various modernisations of language by replacing references to 'web sites' with 'websites' (classes 35, 37 and 38), 'real estate affairs' with 'real estate services' (class 36), and 'tariffs' with 'fares' (class 39).
No changes have been made to classes 23 and 34.
The full list of changes to the 12th edition can be viewed under the 'Modifications' tab.
When does it apply?
The 12th edition will enter into force on 1 January 2023.
It will apply to all new trade mark applications filed in a contracting party or with WIPO on or after 1 January 2023. (It will not apply retrospectively. The contracting parties or WIPO will not reclassify or amend the goods and/or services in trade mark registrations or applications filed before 1 January 2023.)
IP Australia has not yet made an official announcement confirming this new edition. The Intellectual Property Office of New Zealand (IPONZ) has officially announced that this new edition will enter into force in New Zealand on 1 January 2023, and that it is updating its guidelines and system to reflect these changes.
Why is it important?
The Nice Classification is an administrative tool used for standardising goods and services, searching conflicting trade marks and scaling official fees.
The classes do not affect the scope of protection of a trade mark in an opposition or infringement context. (The scope of protection of a trade mark is derived from the actual description of its goods and/or services.)
However, the classes do affect the examination of a trade mark in what prior trade marks are cited against it. For example, in Australia and New Zealand, IP Australia and IPONZ will search for and cite conflicting trade marks in a set of classes deemed associated with the class(es) applied for. These searching parameters are even more stringent in China, where the China National Intellectual Property Administration will search for and cite conflicting trade marks in the same 'subclass' (a class within a class) as the subclass applied for.
While an administrative tool, the classes play an important role during examination of what prior trade marks block a trade mark application, and what future trade mark applications are blocked by an existing trade mark.
For these reasons, it is important to keep up to date with changes made to the Nice Classification.
Possible implications of the new 12th edition are:
- Trade mark applicants could now choose from an expanded selection of standard goods or services that must be recognised by the contracting parties and WIPO, which could help to reduce formalities objections and costs.
- Trade marks could now block or be blocked by other trade marks where this was not the case under earlier editions. (Eg under the 12th edition in Australia, a prior trade mark for 'snorkels' (class 9) could now be cited against a trade mark application filed after 1 January 2023 for 'wetsuits' (class 9, previously class 25), as a result of the transferring of 'wetsuits' from class 25 to class 9.)
Actions you can take now
- Review your portfolio to make sure that it will continue to block new potentially problematic trade mark applications filed after 1 January 2023.
- If you are planning to file a new trade mark application after 1 January 2023 , be prepared to make changes to the goods and/or services to reduce the risk of being met with formalities objections.