Global trends reflected in the new edition of the Nice Classification System: what does it mean for those registering trade marks?

The 12th edition of the World Intellectual Property Organization’s (WIPO) Nice Classification system (“Nice”) came into force on January 1, 2023. Nice is an international system for classifying goods and services for registering trade marks. With new editions only published once every five years, this is the first new edition of Nice since 2017. Consequently, WIPO has endeavoured to absorb the significant global changes which have occurred in the last five years into this latest edition.

What is the Nice  system?

More than 90 countries use the Nice system, which aims to provide certainty to businesses and individuals seeking to register trade marks in multiple jurisdictions. It is based on the original 1935 Classification from the WIPO’s predecessor, the United International Bureaux for the Protection of Intellectual Property, and been expanded and updated as the Nice Agreement since 1961.

There is now a total of 45 classes with 34 covering goods and the remainder covering services. For example, Class 45 includes ‘legal services’, such as those we provide at Hamlins.

The 12th edition comprises additions, class movements and deletions, as considered below. These changes provide a useful illustration of global trends in recent years.

Summary of key changes:

• Introduction of Non-fungible tokens (NFTs).
  • Class 9: Addition of downloadable digital files authenticated by NFTs
  • Broadening of ‘cryptocurrencies’ to ‘crypto assets’, which includes NFTs
• Medical and scientific advances
  • Class 10: Addition of respiratory and breathing apparatus types
  • Classes 42 and 44: changes to respiratory device and quarantine services
  • The addition of new services in connection with net zero emissions
• The ‘Korean wave’ (한류/Hallyu)
  • Classes 25, 30 and 33: reflecting the growing international popularity of Korean popular culture, new items of clothing, food and drink have been added
• Wetsuits
  • These have been moved from ‘clothing’ (class 25) to scientific apparatus etc. (class 9 - which already includes diving suits)
  • This is particularly important because existing class 9 trade marks can now potentially be used to oppose a new application to register a trade mark in relation to wetsuits (although, on the other hand, class 25 trade marks now cannot).

These changes reflect influences of the Covid-19 pandemic, digital crypto assets and Korean popular culture. There have also been terminology changes to modernise certain terms. For example, ‘real estate affairs’ in class 36 has been changed to ‘real estate services’ and references to ‘web sites’ are now to ‘websites’.

Key takeaways

Nice classes need to be carefully selected to ensure any  registered trade mark provides appropriate protection. Registering a UK trade mark, for example, costs an additional £50 per class of goods/services registered, it is, therefore, important to determine which classes are required immediately and which you may wish to protect for future business growth.

We recommend taking this opportunity to review your existing trade mark portfolio. At Hamlins, we can analyse your existing trade marks to determine how they are affected by the 12th edition of Nice. Existing trade marks cannot be extended to gain this additional protection as the new categories added in thus latest edition require a new application to include them in registered trade mark specifications.

We can provide advice and support when identifying essential and beneficial Nice classes to include in trade mark applications and tailor the specifications of any application to suit individual needs. Furthermore, Hamlins can progress, advise on and oversee UK, EU and international trade mark applications to adopt a global perspective for your brand protection strategy.

If you would like a conversation to find out how we might be able to help you, please contact Matthew Pryke.