A registered trademark is not intended to give a monopoly to use the trademark. With so many different types of goods or services, identical or similar trademarks can often co-exist quite easily. And this is what the Nice Classification is used for.
What Is The Nice Classification
When you apply to register a trademark you must specify the types of goods or services you are seeking to protect. To help, trademark registers group similar types of products and services under different classes of products and services. This is done through what is called the Nice Classification system. There are 45 classes and each of these has a heading which describes the type of goods or services covered by that class. 35 of the classes are for goods and ten are for services.
When conducting trademark searches, a trademark register doesn’t just search the specified classes but also related classes. Because apparently similar or related activities can fall under different classes, this can add to the scope of the clearance searches that you should conduct and to the level of application fees.
You should still specify more precisely the products and services that you want to protect. One benefit of being more specific is that it lessens the prospect of oppositions arising, which can add significant costs to the application process.
There is also a rule that a trademark must be used or intended to be used within the specified classes within five years of registration. So the goods or services specified should be realistic or your trademark could be challenged later on.
There is recent important caselaw on how the Nice Classification should be used. One important case is the IP Transaltor case. With cases like these, it can be important to take expert advice on what goods and services to designate for your trademark application.
Nice Classification Headings
Class 1
Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.
Class 2
Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.
Class 3
Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Class 4
Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.
Class 5
Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
Class 6
Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.
Class 7
Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines.
Class 8
Hand tools and implements (hand-operated); cutlery; side arms; razors.
Class 9
Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.
Class 10
Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.
Class 11
Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
Class 12
Vehicles; apparatus for locomotion by land, air or water.
Class 13
Firearms; ammunition and projectiles; explosives; fireworks.
Class 14
Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.
Class 15
Musical instruments.
Class 16
Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.
Class 17
Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.
Class 18
Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery.
Class 19
Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.
Class 20
Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.
Class 21
Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.
Class 22
Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.
Class 23
Yarns and threads, for textile use.
Class 24
Textiles and textile goods, not included in other classes; bed covers; table covers.
Class 25
Clothing, footwear, headgear.
Class 26
Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.
Class 27
Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings. (non-textile).
Class 28
Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
Class 29
Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats.
Class 30
Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.
Class 31
Grains and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals; malt.
Class 32
Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.
Class 33
Alcoholic beverages (except beers).
Class 34
Tobacco; smokers’ articles; matches.
Class 35
Advertising; business management; business administration; office functions.
Class 36
Insurance; financial affairs; monetary affairs; real estate affairs.
Class 37
Building construction; repair; installation services.
Class 38
Telecommunications.
Class 39
Transport; packaging and storage of goods; travel arrangement.
Class 40
Treatment of materials.
Class 41
Education; providing of training; entertainment; sporting and cultural activities.
Class 42
Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
Class 43
Services for providing food and drink; temporary accommodation.
Class 44
Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
Class 45
Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.