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.
