Nice Agreement

The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, signed on 15 June 1957 and revised at Stockholm in 1967 and then at Geneva in 1977, establishes the Nice Classification used by virtually all trade mark offices worldwide. Administered by WIPO, it divides goods and services into forty-five classes, thirty-four for goods and eleven for services, and provides an alphabetical list of terms. The Nice Classification is mandatory for filings with the INPI, with the EUIPO and under the Madrid System.

Content and revision of the Classification

Each class is described by a class heading, supplemented by explanatory notes and by the alphabetical list of the goods and services falling within it. The Classification is revised by a committee of experts made up of the contracting States, with a new edition published at intervals of several years and annual versions incorporating additions and transfers between classes. The applicable edition is the one in force on the filing date, earlier registrations not being reclassified retroactively. National offices remain free to give the Classification principal or subsidiary status, but must show the class numbers in their publications.

Legal significance of classification

Classification serves a purely administrative purpose: it facilitates prior art searches and the calculation of fees, which are payable per class, but it does not determine the similarity of goods and services, which is assessed by reference to their nature, purpose, method of use and distribution channels, not their membership of the same class. Two goods in the same class may be dissimilar, and two goods in different classes may be similar. The Court of Justice of the European Union has held that goods and services must be identified with sufficient clarity and precision to enable the authorities and competitors to determine the extent of protection, and that the use of a class heading covers only the goods falling within its literal meaning. Regulation (EU) 2017/1001 and Directive (EU) 2015/2436 have enshrined this requirement.

The practical stakes of the specification

The drafting of the specification shapes the future of the right. A specification that is too narrow deprives the proprietor of protection for the goods it will market tomorrow, while one that is too broad exposes the trade mark to revocation for lack of genuine use in respect of goods not exploited, five years after registration, and fuels oppositions. The principle of speciality calls for coverage of the goods and services actually contemplated and their foreseeable extensions, using terms from the alphabetical list to avoid formal objections from the offices. When conducting a prior art search, neighbouring classes should be explored, not just the class of filing.

Key points

The Nice Agreement provides the common nomenclature of forty-five classes in which every trade mark must be filed, but classification prejudges neither the similarity of goods nor the extent of protection, which depends on the specification. The specification should be drafted clearly and precisely, in proportion to actual use and its developments, and prior art searches should extend beyond the class concerned.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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