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Stefan Schröter
The Nice Classification divides goods and services into 45 classes in order to simplify trademark registrations. The Nice Classification has been revised many times in the past, and most recently on 1 January 2012 (overview of revision of NCL 10).
The recent changes to the Nice Classification mainly affect pending trademark registrations. For trademarks that are registered after 1 January 2012, the goods and services covered by the application must be classified in accordance with NCL 10. Trademark registrations that were filed before 1 January 2012 using the 9th edition of the Nice Classification (NCL 9) but only processed by the competent trademark office in 2012 are treated differently by the different trademark offices. While the Institute of Intellectual Property (IPI) and the German Patent and Trade Mark Office (DPMA) review and register trademarks on the basis of NCL 10, the Office of Harmonisation for the Internal Market (OHIM) reviews the trademark registration against the previous NCL 9, even after 31 December 2011. At the IPI and DPMA, the practice of reviewing trademarks against NCL 10 if they were submitted for registration before 1 January 2012 in accordance with NCL 9 could mean that the list of products for which protection is requested will need to be changed. Such changes to the trademark application can delay the registration of the trademark and, particularly at the IPI, mean that applications that were pending on 1 January 2012 do not benefit from accelerated trademark examination, even though they qualified for this procedure under NCL 9. However, such necessary reclassifications do not have a detrimental effect on the class fees or the trademark’s application date at either the IPI or the DPMA.
The different offices also treat trademark renewals differently. While the IPI and OHIM do not make any changes to the list of products when the trademark is renewed after the ten-year period of protection, the DPMA adapts the list of products for which the trademark is protected in the register to the latest edition of the Nice Classification when the trademark is renewed. As this could mean that protection for additional product classes is required if a product was moved to another class, the renewal fee could also increase if an additional class must be included under the latest Nice Classification.
The process of adjusting the trademark registration and renewal to NCL 10 is purely administrative, and usually the only negative effects are delays and fee increases. As it is unimportant in this regard in which class a product falls, the different approaches of the different trademark offices could at most lead to a slightly untidy portfolio. The same is not true for monitoring and research, i.e. defence and clearance. While the changes made to the trademark product lists by the DPMA during the renewal process to adapt them to the latest edition of the Nice Classification mean that there is a small risk of missing a conflicting trademark in the trademark register, the approach of the IPI and OHIM, who do not adapt the trademark register to the changes to the Nice Classification, means that trademarks that were not registered under the latest edition of the Nice Classification do not comply with the latest classification and can therefore easily be missed when the trademark register is consulted (for example, an iron: class 9 for NCL 9 but class 8 for NCL 10). One can therefore rely even less on the class number in future than in the past, but must always focus on the specific product, in particular because even professional providers of trademark research services only take account of reclassifications if the competent trademark office published a change to the trademark register (as even the DPMA does not publish the changes made to bring the registration in line with the latest edition of the Nice Classification on renewal of a trademark in the Trademark Journal, such changes are also not taken into account by professional trademark researchers).
When monitoring and researching trademarks, the greatest care must therefore be taken to ensure that every change to the Nice Classification is taken into account. It goes without saying that the changes introduced by NCL 10 only represent the tip of the iceberg, as the other new revisions also led to changes. This problem will only become more acute, as annual editions of the Nice Classification will see the light from 1 January 2013, all of which will contain new entries or deletions of previous entries.
