Nice Classification

The Nice Classification is the international classification of goods and services for the purposes of the registration of marks, established by the Nice Agreement of 1957 and administered by WIPO. It divides all goods and services into forty-five classes, thirty-four classes of goods and eleven classes of services, each with a class heading and an alphabetical list. INPI, the EUIPO and almost every office in the world apply it to trade mark filings.

Function of the classification

The classification serves an administrative purpose. It organises the register, determines the amount of the fees, which are calculated per class, and facilitates prior rights searches by grouping comparable goods and services. It has, in itself, no legal bearing on the scope of protection. Two goods placed in the same class may be dissimilar for trade mark purposes, and two goods falling within different classes may be similar, so that the principle of speciality and the assessment of the similarity of goods and services turn on their nature, their purpose and their distribution channels, not on their class.

Drafting the specification

The applicant must identify the goods and services with sufficient clarity and precision to enable the authorities and economic operators to determine, on that basis alone, the extent of the protection sought. The Court of Justice of the European Union holds that the general indications in the class headings may be used only if those indications are themselves clear and precise, and that an application covers only the goods and services literally referred to in the specification, and not the whole class. This solution, taken up by Regulation (EU) 2017/1001 and Directive (EU) 2015/2436, requires a specification that describes the actual business and its foreseeable extensions, without resorting to vague wording that would be rejected or construed narrowly.

Practical stakes

The specification fixes the perimeter of the right for the entire life of the trade mark, since it cannot be broadened after filing and can only be restricted. Too narrow a specification leaves the owner able to act only on the basis of similarity, and too broad a specification exposes it to partial revocation for non-use, after five years, for the goods and services not exploited. The classification is revised regularly, and the applicable edition is the one in force on the filing date, which may lead to differences of classification between older and more recent marks for the same product, with no effect on the comparison of goods. When making a trade mark filing, the choice of classes and the drafting of the specification therefore deserve as much attention as the choice of sign.

Key points

The Nice Classification arranges goods and services into forty-five classes and serves to organise filings and the register, without in itself determining the scope of the trade mark. The specification must be clear, precise and consistent with the actual business and its reasonable developments. Draft the specification with care, avoid imprecise class headings, and bear in mind that only the goods and services actually exploited will withstand a revocation action.

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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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