Goods and services, for purposes of trade mark registration, are classified into different classes. The Nice Classification was established in terms of the Nice Agreement and is the international classification of goods and services applied for the registration of marks.
A new edition to the Nice Agreement is published, by the World Intellectual Property Organisation (WIPO), every five years and goods and services are amended or added annually. Where goods/services are amended, this may require re-classification and result in items being shifted to other classes.
The South African Trade Mark Register (as well as the majority of most Trade Mark Registers worldwide) is divided into 45 different classes (34 Goods classes and 11 Service classes.)
A few of the most commonly filed classes are Class 3 (includes cosmetics); Class 5 (includes pharmaceutical and veterinary preparations); Class 9 (includes computer software and “mobile apps”), 16 (includes printed materials), 25 (includes footwear and clothing); 32 (includes beers); 33 (alcoholic beverages, except beers); 36 (includes financial services); 41 (includes entertainment services) and 43 (includes the provision of food and drink and temporary accommodation services.)
It is important to correctly identify the class or classes of interest for various reasons. I discuss a few of these below.
- When conducting an availability search, the parameters of the search (classes of interest) must be set. It is however also recommended that the search be extended to cover classes that cover goods/services similar to those of interest as the search may reveal marks that cover goods and services that may be cited by the Register, upon examination, or that may form the basis of an opposition by third parties;
- When an applicant files an application for a trade mark, it will need to specify the class(es) that the application(s) covers as well as the specification of goods/services that the mark will be used on or in respect of. Once an application(s) has been filed, it is virtually impossible to amend the class(es) of interest and a fresh application(s) will have to be filed which will result in a delayed process to secure registered trade mark rights as well as the expenditure of further costs.
- Upon examination, the Registrar will examine the mark against other marks that cover the same goods or services, or goods and services that are very similar to the goods that are covered by the application.
- The courts will also take into account the classes covered by a trade mark registration when determining if there was any infringement of a registered mark.
In conclusion, the importance of correctly classifying the goods and services of interest cannot be underestimated and specialist advise should be sought to ensure that this aspect is done correctly.