On 1 January 2012, the contracting parties to the Nice Agreement
(defined in the note below), including Romania, adopted the tenth
edition of the Nice Classification (the
"Tenth Edition").
The Tenth Edition has made changes to the classification of goods
and services, including: addition of new items to classes;
deletions; transfers of goods and services from one class to
another; and alterations of descriptions of goods and services. The
most substantial changes have been made to the classification of
dietary and nutritional supplements and food additives (primarily
in classes 5, 29, 30, 31), video gaming apparatus (in classes 9 and
28), electrically powered goods (primarily in classes 7, 8, 9 and
21) and babies' nappies/diapers (in classes 5, 16 and 25).
Some useful summaries of the changes brought in by the Tenth Edition can be found on the website of the Intellectual Property Offices of the United Kingdom (http://www.ipo.gov.uk/practice-changes.pdf) and of Singapore (http://www.law-now.comhttp://www.law-now.com/specificchangesto10thedniceclassifications).
Another important change affects the frequency of
updates to the Nice Classification. Currently, updates occur every
five years. From 1 January 2013, the Nice Classification will be
updated annually. These annual updates will only include minor
changes, such as additions, deletions and updates to items within a
class. Substantive changes, such as class transfers, the creation
of new classes and deletions of classes, will continue to be
implemented every five years.
On the issue of reclassification, the International Bureau of WIPO
is applying the Tenth Edition to all international applications
that were received by the office of origin on or after 1 January
2012. This should mean that pending international applications or
already registered international trade marks with a filing date
prior to 1 January 2012 are not to be reclassified. Furthermore, in
conformity with its previous practice, the International Bureau of
WIPO is not to reclassify, in accordance with the Tenth Edition,
the list of goods and services of an international registration
that is the subject, after 31 December 2011, of a renewal,
subsequent designation or any other change affecting the list
(please see in this regard the Information Notice available on
WIPO's website at: http://www.wipo.int/edocs/madrdocs/en/2011/madrid_2011_46.pdf).
Similarly, OHIM has been applying the Tenth Edition since 1 January
2012. This means that pending CTM applications or already
registered CTMs with a filing date prior to 1 January 2012 are not
to be reclassified, even if requested by the applicant or
proprietor, nor will reclassification be allowed at the time of
renewal of the CTM registration (please see in this regard
Communication No 1/11 of the President of the Office of 31 October
2011, which can be found on OHIM's website at http://bit.ly/v5RYvO). We expect that the
Romanian Intellectual Office for Patents and Trademarks is
following WIPO's and OHIM's practice abovementioned
regarding the issue of reclassification.
The Tenth Edition is available at: http://www.law-now.comhttp://www.law-now.com/textncl10part1
Note:
The Nice Classification is an international classification of goods
and services applied for the registration of trade marks and
service marks, and which is administered by the World Intellectual
Property Organization ("WIPO"). The Nice
Classification was established by the Nice Agreement Concerning the
International Classification of Goods and Services for the Purposes
of the Registration of Marks, concluded at the Diplomatic
Conference held in Nice in 1957 (the "Nice
Agreement"). There are a total of 83
contracting parties to the Nice Agreement and a total of 66
countries and four organizations, including the European Union
Office for Harmonization in the Internal Market - Trade Marks and
Designs ("OHIM") that use it.
This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq
Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.
The original publication date for this article was 20/01/2012.