An attorney’s insight into the Nice 11 system, or as we like to call it, a two-dimensional system in a three-dimensional world!

As an attorney, you’re probably familiar with some of the contemporary challenges of the Nice classification system. Having been designed for a non-digital era, the Nice classification system now raises questions for all of us, such as finding a home for an emerging product or service within a binary, in-or-out classification system. What happens when a good should be in more than one class? What if none of the classes accurately reflect where the good in question should fall?

In this blog, I’ll explain how the Nice classification system came about, how it evolved over time and give you a rundown of some significant changes coming in 2020.

Ghosts of the past – the WIPO way

Nice is a really old system, which people forget. If you look at its history, this provides some explanation about what we’ve got now and why it can be a difficult system to use.

First created by a working group (BIRPI, now under WIPO guidance) at a conference in London in 1934, 1957 is now considered the official year of inception of the system. This is when the first countries got together and said they would actually use the proposed 42 classes of goods and services for classification of trademarks. The multilateral treaty they consummated is called the ‘The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks’.

 Did you know that the first two editions of Nice were published in French only? The English translation was published separately almost 10 years later in 1965.

The humble red book beginning

When I first started in the profession in the early 1990s I was given a copy of the Nice classification guide on my first day. It contained every item, classified by number and class.  I was expected to know the red book cover to cover as a trademark attorney doing registration work. It was my day to day guide.

Ghosts of the present – the Nice system expands

As the world of commerce became more complex, the Nice system gradually had to change. Until 2001, class 42 existed as a ‘catch-all’ service class. Any product or service that didn’t have a home, went into class 42. In 2001 when the eighth edition of Nice was released, there was a significant change –  the introduction of three new classes. .

Class 42 was retained for technical development work, class 43 added for catering and restaurants, class 44 for health care, and class 45 for what was referred to as personal services. This was the first real significant change to Nice classes since the original draft was contemplated in the 1930s.

Since 2013, due to the accelerated level of change going on in the world, there have been annual amendments to Nice. So much so, that we have new editions coming out every five years and a new version annually. Every 1stof January, we prepare ourselves for the changes!

Ghosts of the future –changes coming in 2020

There are a couple of big changes happening on the 1stof January 2020 – here are the ones you should keep an eye out for:

Changes to Class Headings – an unusual change in 2020

The 2020 annual update brings some significant changes to some of the services class headings:

  •  Class 37 “Construction services; installation and repair services; mining extraction; oil and gas drilling”  

The word ‘maintenance’ is disappearing from the class heading to be replaced with ‘repair’. Although class 37 was conceived of as a repair class, mining, extraction, oil and black gas drilling (which were looking for a home) ended up here. Their inclusion has now been made official. 

  • Class 40 “Treatment of materials; recycling of waste and trash; air purification and treatment of water; printing services; food and drink preservation.”

This class heading hadn’t changed at all since the inception of Nice. Class 40 started out as ‘treatment of materials’ but ended up covering all manner of services. It will now include recycling of waste and trash, air purification and treatment of water, printing services, food and drink preservation just to make things really clear!

  • Class 42 Scientific and technological services and research and design relating thereto; industrial analysis; industrial research and industrial design services; quality control and authentication services; design and development of computer hardware and software.–

This was already a difficult one and it’s not getting any easier. Class 42 will now include industrial design, quality testing, authentication.

  •  Class 44Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, aquaculture, horticulture, and forestry services.”

Originally the agriculture class, class 44 now welcomes aquaculture too.

Take time to get your head around this set of changes as one thing you can count on is that there will be more coming next year.

This excerpt was taken from our recent webinar ‘From SaaS to Cannabis. Nice Classification tips from attorneys who’ve been there’. Alan also offers some tips around navigating the system and drafting the perfect specification. Watch the recording here.