The International Classification of Goods and Services for the Purposes of the Registration of Marks (known as the “Nice Classification), was, via the Nice Agreement, the result of the Nice Diplomatic Conference, which was held in Nice, France, on 15 June 1957. This Agreement was later revised in 1967 and 1977.
The Nice Agreement creates a Special Union (within the Paris Union) for the countries party to this Agreement, and establishes a classification of goods and services for the registration of marks. This system of classification simplifies the searching of trademarks used or intended to be used on similar or related goods and/or services.
The Nice Agreement currently, as of December 2007, has a membership of 82 countries. Malaysia became a party to the Nice Agreement on 28 June 2007, and the Agreement came into force here on 28 September 2007. Prior to this, however, the Nice Classification was widely used locally as the general classification system for the registration of marks. In fact, to date, there are 66 countries and 4 organisations that use the Nice Classification system, which are not party to the Nice Agreement. The question arises then, what is the effect of Malaysia becoming a party to the Nice Agreement?
The main effect of Malaysia becoming a party to the Nice Classification, it would seem, is that now, it is mandatory for us apply the Nice Classification system for the registration of marks locally. However, there is a discretion given in the Agreement that each Member State reserves the right to use it either as a principal or a subsidiary system.
With Malaysia now being a party to the Nice Agreement, it is important to take note of the recent revisions of the Nice Classification that were incorporated into the 9th Edition of the Nice Classification. The 9th Edition will come into force for all member states on 1 January 2008.
Amongst the changes that were incorporated are the additions of new indications. For instance, ‘Automated teller machines [ATM]’ and ‘DNA chips’ are now included in Class 9, ‘Computer virus protection services’ included in Class 42, and ‘Outsourcing services [business assistance]’ included in Class 35. Further to that, certain indications were deleted, such as ‘Refractory materials’ from Class 19. Certain existing indications were also changed or transferred. Similar changes were also made to particular class headings and explanatory notes, as well as other minor changes.
One of the major changes introduced by the 9th Edition of the Nice Classification is in relation to the classification of goods made of precious metal. In the existing 8th edition, there was confusion as to whether certain finished goods were to be classified according to their function or purpose under their respective classes or under Class 14 if these same goods were made of precious metal. Further, Class 14 only included some, but not all, goods which can be made of precious metal. For instance, picture frames were clearly listed in Class 20, but were not present in the Alphabetical List in Class 14. In this case, were the picture frames to be classified in Class 20, or Class 14?
The 9th edition of the Nice Classification provided a solution to this problem, by providing that finished goods which are classified according to their function or purpose are not included in Class 14, and whether they are made of precious metals is not to be taken into account. This is however subject to an exception for finished products that are classified according to the material of which they are made. These products will remain classified under Class 14 if they are made of precious metal. Whether this exception will cause problems, remains to be seen.
Further, in the 9th edition of the Nice Classification, ‘legal services’ is moved from Class 42 to Class 45. Class 45 now accordingly reads: ‘Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals’.
The LOCARNO Classification is a classification system for Industrial Designs. This classification was the result of a treaty administered by the World Intellectual Property Office (WIPO) in 1968, concluded in Locarno, Switzerland. This treaty was called the Locarno Agreement Establishing an International Classification for Industrial Designs. Similar to the Nice Agreement, the Locarno Agreement also creates a Special Union for its contracting Member States, and establishes a single classification system for filing industrial designs. As of December 2007, there are 49 countries party to the Locarno Agreement.
Malaysia is presently not a member of the Locarno Agreement. However, the Locarno Classification is locally accepted and used in filing industrial designs. Like the Nice Classification, the Locarno Classification simplifies industrial design searches and reclassification matters. Recently, in October 2007, some amendments were proposed and accepted, and will come into force in the 9th Edition of the Locarno Classification, in January 2009.
Amongst the main changes is the creation of a new class in the Locarno Classifications, namely Class 32. This class will comprise graphic symbols, logos, surface patterns, and ornamentations. Once the 9th edition of the Locarno Classification comes into force, goods such as get-up, 2-dimensional graphic designs and graphic designs incorporating comic figures will be included in this class.
It is interesting to note that the miscellaneous Class 99 (known as the “trash-can class”) will be deleted in the 9th Edition of the Locarno Classification. The goods previously categorised under this class (such as coffins, coffin linings, incense burners and crematory urns), will be transferred to the various existing classes and sub-classes. The amendments which are to be implemented in the 9th edition of the Locarno Classification are fairly wide. Therefore it will be interesting to note the outcome of these changes in future.
For further information or advice regarding your trademark or industrial design applications, kindly contact us and we will assist you further. Please seek professional advice when determining the appropriate class of goods and services for your trademark and/or industrial design application, as a registration under the wrong class is as good as no registration or protection for your mark and/or design.