The Illusionary Uniformity of the Nice Classification

Published September 28th, 2017

Some people anticipate a growth in multi-national trademark registrations for Canadians when the Madrid Protocol is implemented. Others find this doubtful given the track record of Canadian trademark owners to date; however, undoubtedly, the Madrid Protocol will be selected by some as the vehicle to use when filing trademark applications outside Canada.

One thing applicants should be aware of is that not all countries in the world use the Nice Classification system (NCL) and that even amongst adherents, there are idiosyncrasies. Even if a country follows the NCL, the Nice Agreement allows the application of the NCL to be non-uniform throughout the countries that have adopted it.  Therefore for example:

a) Saudi Arabia bans a few items (example, alcoholic beverages in Class 33; pork in Class 29).

b) The United States Patent and Trademark Office feels that the NCL alphabetical list does not always sufficiently describe the goods and services and consequently has developed a “Trademark ID Manual” of pre-approved terms, loosely based on the NCL alphabetical list. Such are acceptable and used for trademark applications in that jurisdiction.  The U.S. is not alone in doing this.

c) China uses the NCL, however it divided each of the 45 classes into one or more sub-classes. For example, NCL class 25 (“clothing”, “footwear”, “headgear”) is carved into 13 different sub-classes.

Furthermore, even if another country uses the 11th version of the NCL as Canada now offers for voluntary use, Examiners around the world may interpret an applicant’s goods and/or services differently than the Canadian Examiner does and therefore, slot the goods into a different class than used in Canada.  Fearful of not being protected as a consequence, applicants may choose to instruct the foreign office to add an additional class to be sure of adequate coverage.  Whether that will result in over classification depends upon the particular case.  In any event, there could be additional class fee consequences to the disadvantage of the applicant.

…So continues the global class struggle…

 

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