NICE Classification of Trademarks; 12th Edition – a New Regime for Digital Assets

NICE Classification of Trademarks; 12th Edition

The World Intellectual Property Organization (“WIPO”) announced the release of the 12^th edition of the Nice Classification in October 2022. The Nice Classification (NCL), established by the Nice Agreement (1957), is an international system for classifying goods and services for trademark registration and is also adopted for use in Nigeria.

According to WIPO, the implementation of the Nice Classification is mandatory not only for the national registration of marks in countries party to the Nice Agreement, but also for the international registration of marks effected by the African Intellectual Property Organization (OAPI), the African Regional Intellectual Property Organization (ARIPO), the Benelux Office for Intellectual Property (BOIP), the European Union Intellectual Property Office (EUIPO) and the International Bureau of WIPO. The Nice Classification is also applied in a number of countries not party to the Nice Agreement.

The revisions in the 12th edition are a reflection of the current realities, taking into consideration factors like COVID-19, Ukraine-Russian war, the emergence of non-fungible tokens (“NFT”), online communities, environmental concerns around the world, and the Korean cultural wave (‘hallyu‘).

When does it Apply?

The 12^th edition took effect on the 1st of January 2023 and is applicable to any new trademark applications submitted to WIPO or in a contracting country on or after January 1, 2023.

Kindly note that the goods and/or services in trademark registrations or applications submitted before January 1, 2023, shall not be reclassified or otherwise changed by the contracting parties or WIPO.

The major changes under the new edition include the change to the heading and explanatory note to class 45. The heading of class 45 previously read ‘Legal services; security services for the physical protection of tangible property and individuals; personal and social services rendered by others to meet the needs of individuals‘. The new edition however replaces ‘personal and social services rendered by others to meet the needs of individuals’ with ‘dating services, online social networking services, funerary services, babysitting‘ and has added services to this class such as: legal research in the field of environmental protection; animal adoption services; providing non-medical in-home care services for individuals; and content moderation for internet chatrooms.

Whilst changes have also been made to the explanatory notes of classes 6, 10, 20 and 42 the other changes recorded under the new edition are set out below:

Class 9

Added:

• humanoid robots having communication and learning functions for assisting and entertaining people
• missile warning systems
• self-checkout terminals
• cases for smartphones incorporating a keyboard
• humanoid robots with artificial intelligence for preparing beverages
• user-programmable humanoid robots, not configured
• downloadable digital files authenticated by non-fungible tokens [NFTs]
• gimbals for digital cameras
• gimbals for smartphones
• sunglasses for pets

Replaced ‘downloadable computer software for managing cryptocurrency transactions using blockchain technology’ and ‘cryptocurrency mining/crypto mining’ with:

• downloadable computer software for managing crypto asset transactions using blockchain technology
• mining of crypto assets/crypto mining

Class 9 (and 25)

Transferred (and amended) from class 25:

• Wet suits

Class 12

Added:

• motorized skateboards
• autonomous land vehicles
• battleships

Class 41

Added:

• providing online images, not downloadable
• providing online virtual guided tours
• providing facilities for playing Live Action Role Playing [LARP] games

Class 42

Added:

• providing scientific information, advice and consultancy relating to net zero emissions
• testing and analysis of goods being imported or exported for quarantine clearance purposes

Class 43

Added:

• rental of respiratory masks for artificial respiration
• medical examination for quarantine clearance purposes

Potential Effects of the Nice Classification (12^th Edition)

In order to reduce formalities, objections, and expenses, trademark applicants may now select from a wider range of typical goods or services that must be acknowledged by the contracting parties and WIPO. The recognition of current digital/fintech assets under the new edition allows the owners to register them as trademarks and be differentiated from the range of similar digital assets in the marketplace. Furthermore, the extended range of goods/services under the new classification confers on registered proprietors of these, the exclusive right of use and legal redress can be used to check any infringements.

Accordingly, the Nice classification, remains an administrative technique used for standardizing goods and services, aid in assessing conflicting trademarks determines the trademark’s level of protection by the precise description of its goods and/or services.