How nice is your “Nice Classification”?

Have you properly applied the Nice Classification when registering your trade mark? To understand what the Nice Classification is and does we need to take a step back and remember, a trade mark is a word, slogan or logo that identifies your products or services and separates them from goods and services of other traders. There are registered and non-registered trade marks.

Registered and non-registered trade marks

Registered trade marks are signs that have been registered with the national Trade Mark Office. The Australian Trade Mark Office for instance is “IP Australia”.

Non-registered trade marks are signs that have obtained a certain reputation within the relevant public through mere use. Registered and non-registered trade marks provide the same level of protection nation-wide. However, it is substantially more difficult to enforce non-registered trade marks, when it comes to infringement proceedings. Ultimately it comes down to whether a judge would find that enough reputation has been obtained, from using the trade mark. To reduce this uncertainty, it is always recommended to register your trade mark in every country of operation of your business.

An application can be submitted even five years before you actually commence business, using your mark. After the so called “grace period of non-use” your trade mark must be in “genuine use”.

Nice Classification

In order to understand why use of trade marks has to be “genuine”, one must understand that trade mark rights apply only in relation to certain goods and/or services. Thus, when registering a trade mark with the Trade Mark Office, one has to register the trade mark for distribution of particular goods and/or services. A consistent classification system is necessary to avoid misinterpretations. This is why the member states of the Nice Classification system have agreed on harmonization of the classification system, in order to provide a consistent solution on an international level.

So why is the classification of your trade mark “Nice” you may think? Well, as you may have suspected, it has nothing to do with being nice, but with the fact that the Nice Classification System is based on an international agreement, the Nice Agreement which was consummated on 15 June 1957 in Nice, France. Its full name is “Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks” or short “Nice Classification”.

The Nice Classification was a great success in harmonising the national systems of goods and services to one international system. As of January 2014 there are currently 84 signatory nations to the Nice agreement. Further 65 non-member countries use the system. There are 34 Classes for goods and additional 11 Classes for services (Classes 35 – 45). If you would like to find out more about the different Nice Classes visit the IP Australia’s classification search data base.

Genuine Use

As pointed out before trade marks need to be in use in order to be valid. A registered trade mark becomes vulnerable to cancellation proceedings based on non-use after the 5-years “grace period”. The reason for this is, that the provision of a factual monopoly to a (brand) name is only accepted, if the brand name is actually in use. Why should the society give one individual the monopoly for a certain brand name in relation to distribution of a good and/or service, if this individual does not make any use of it? Unlike a patent or copyright, a trade mark lives on reputation, not on research or development. Patents and copyrights are the outcome of hard work, research, development, trial and error. A trade mark on the other hand is “just a name”; and it should be used, because a name without an object it defines, is futile.

Now by combining what we have learned so far, the term “genuine use” becomes much clearer. Genuine use means use of a trade mark for distribution of the goods and/or services the trade mark has been registered for. So if someone were to register a trade mark in Class 15 for the item “Drum sticks”, then this applicant must use the trade mark for distribution of these goods within 5 years after lodgement of the trade mark application.

Think Ahead

Registering a trade mark in the right Nice Class and for the right “items” (specific goods and/or services) can be tricky. There are more general terms e.g. “Musical instruments”, Class 15 and very specific items such as “Punched cards containing music for use with pianoforte”, Class 15. The right mix of general terms and specific items secures both validity and a broad scope of protection of the trade mark.

When registering a trade mark, it is important to think ahead. At the time you register your trade mark you may not imagine in what direction your business may go in a fear years’ time.

Only a short while ago Apple has introduced “series 2” of its famous Apple Watch. With so-called “wearables” the borders between technology and fashion products start to blur. This is a great example for unexpected “cross-market” development. Who would have advised Apple to register its brand for “Clothing and Apparel” in addition to “Computers” when the company was founded? Apparently, it took Apple until September 2014 to lodge the word mark “Apple” in Class 25 for “Clothing, footwear, headgear” – just a few months before the official release of the Apple Watch in April 2015.

Working with a specialised professional intellectual property firm can help you choosing the right goods and services in the right Nice Classes for your business – think ahead.

Contact our experienced Business Advisors and IP Consultants if you would like us to help you develop a tailored brand and trade mark strategy.