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How to conduct Trademark Searches using Nice Classification

Trademark search process:

Nice classification is an international classification for trademarks’ registration for various goods and services. This system of trademark classification was established under the Nice Agreement, 1957. A new edition of Nice classification is rolled out every year since 2013. Nice Classification is used by many national and international offices as it facilitates a single global platform for coordinating all the trademark applications, greatly simplifying preservation of intellectual property worldwide.

Classifying your trademark under the right category is one of the initial steps in the trademark registration process. In order to create a strong international trademark to avoid any sort of business loss arising out of trademark violation in future, it is indispensable for the MNCs and the startups planning to go global to classify and register their trademark as per the provisions of Nice classification.

Under Nice classification, there are 45 Classes out of which 1 to 34 are for goods and 35 to 45 are for services. There is a comprehensive and detailed Class list available on the WIPO’s website along with explanatory examples and Alphabetical list to facilitate businesses.

If one can’t find the relevant Class for his trademark as per the product using the list of Classes, explanatory examples and Alphabetical list, then General Remarks are to be referred further in order to figure out the exact Class.

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How to conduct Trademark Searches using Nice Classification

  1. 1. Trademark Search and Nice Classification: Best Practices - Rahul Dev
  2. 2. A unique: - Name - Phrase - Logo - Symbol - Any attribute that identifies a producer/product as distinct from others The legal term for the word brand is “trademark”. All the countries have an authority for registering and protecting brands. Eg: India has Controller General of Patents, Designs and Trademarks, US has United States Patent and Trademark Office. WHAT IS A BRAND?
  3. 3. Step 1 of the Trademark Registration Process - It always begins with trademark search for brand name, logo and tagline. It’s in this step where Nice Classification(NCL) is done. - For making a strong trademark registration case on a global level, a comprehensive analysis of all the aspects of trademark is to be done, from colours in the logo to words in the tagline. - Example: For taglines, all the possible keywords are searched in different combinations in all the relevant Classes of goods or services under Nice Classification (NCL). - Trademark search also reveals multiple trademarks applications that have been filed for a particular keyword. Eg: In the pandemic period, there was a race to trademark the trending keywords like COVID, Corona, and the like.
  4. 4. Nice Classification - NCL is the international classification of goods and services for registering trademarks. Currently, NCL has 84 signatories. Further, 65 non-member countries, four organizations and the International Bureau of WIPO utilise Nice Classification. - Subject to a business’ activities, the most relevant Class or Classes. - Eg: Online retail services may fall within the scope of Class 35, whereas physical goods that are sold online may fall under different Class of physical goods i.e. between Class 1 to Class 34.
  5. 5. - Total Classes: 45 - Goods’ Classes: 1 to 34 - Services’ Classes: 35 to 45 - A detailed and comprehensive list classifying each type of goods and services in their respective Classes can be accessed on World Intellectual Property Organisation’s (WIPO) portal. - If one couldn’t classify his product using the aforementioned list and Explanatory Notes and Alphabetical notes therein, then NCL has some General Rules in place for further facilitation. Various Classes of Goods and Services under NCL
  6. 6. Brief Explanation on NCL Classes of Goods Class 1 Industry chemicals (science & agri) Class 2 Paints, Colorants and Preparations Class 3 Non-medicated toiletry preparation Class 4 Industrial oils, greases, illuminants Class 5 Pharmaceuticals:medical purposes Class 6 Common metals and their alloys Class 7 Machines, tools, motors & engines Class 8 Hand-operated tools Class 9 Apparatus for scientific research Class 10 Surgical & medical instruments Class 11 Environmental control apparatus Class 12 Transportation vehicles & apparatus Class 13 Firearms & pyrotechnic products Class 14 Precious metals their goods Class 15 Musical instruments, accessories Class 16 Paper, cardboard, its goods Class 17 Electrical, thermal materials Class 18 Leather and its goods
  7. 7. [Continued] Class 19 Materials for construction Class 20 Furniture and parts therefor Class 21 Small, hand-operated utensils and apparatus Class 22 Canvas, materials for textile Class 23 Natural/synthetic yarns & threads Class 24 Fabrics & its covers (domestic) Class 25 Clothing, footwear & headwear Class 26 Dressmakers' articles Class 27 Products intended as coverings for walls/floor Class 28 Toys, apparatus for games Class 29 Foodstuffs of animal, vegetable Class 30 Foodstuff except fruits/ vegetables; Auxiliaries for flavour enhancement. Class 31 Land & sea products(untamed) Class 32 Non-alcoholic beverages, as well as beer Class 33 Alcoholic beverages, essences & extracts Class 34 Tobacco and articles used for smoking
  8. 8. Brief Explanation on NCL Classes of Services Class 40 Treatment of Materials; Recycling Class 41 Education; Training; Entertainment; Sporting & Cultural Activities Class 42 Scientific and Technological; Research & Design Relating Class 43 Providing Food & Drink; Temporary Accommodation. Class 44 Medical & Veterinary; Hygienic & Beauty, Agri services. Class 45 Legal; Physical Protection of Tangible Property & Individuals. Class 35 Advertising; Business Mgmt, Organization & administration; Office Functions Class 36 Financial, Monetary & Banking; Insurance and Real Estate services Class 37 Installation & Repair; Mining & Extraction, Oil & Gas Drilling Class 38 Telecommunications services Class 39 Transport; Packaging & Storage of goods; Travel Arrangements.
  9. 9. General Rules for NCL Classification for Goods - Finished Product classification → Function or Purpose. Classification using Alphabetical List is made by analogy with other comparable finished products. If can’t be found in Class & Alphabetical list then subsidiary criteria like product’s material or modus operandi, are applied. - Multipurpose finished products (e.g., clocks incorporating radios) may be classified in all Classes that correspond to any of its functions or intended uages. If not found in Class/Alphabetical list, apply the same aforementioned criteria. - Raw materials, unworked, semi-worked are classified as per their constituting material.
  10. 10. [Continued] - Goods intended to be a part of another product are classified in the same class as of that product only when the similar goods can’t normally be used for another purpose. In rest of the cases, the aforementioned criterion, applies. - When a finished or unfinished product, classified as per its constituting material, and it is made of various materials, it should be classified in accordance with the predominating material. - Cases adapted to the product they are intended to contain are in principle classified in the same class as the product.
  11. 11. - Services’ Classification ⇒ Branches of Activities (as per specified Classes & their Explanatory Notes. Alike goods, services are also classified using Alphabetical List by analogy. - Rental services →Same Classes as the service provided by the rented objects (e.g., Rental of telephones, covered under Cl. 38). ● Leasing Services ↔analogous ↔ Rental Services (same class). ● Hire or lease-purchase financing → Cl. 36 (as financial service). - Advisory, consultancy or information service → In the same Classes as the services corresponding to the subject matter of such advice, consultation or information. Eg: Business mgmt. consultancy under Cl. 35), Financial consultancy under Cl. 36). No effect of mode of rendering of the advice, information or consultancy via electronic means. - Services for franchising → In the same Class as the services provided by the franchisor (e.g., business advice relating to franchising under Cl. 35), financing services relating to franchising ( Cl. 36). General Rules for NCL Classification for Services
  12. 12. THANK YOU