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

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.