Introduction
Searches
Renewals
Classifying new applications
Arabic versions
Departures from the classification
Comment
When the 10th edition of the Nice Classification of goods and services came into force on January 1 2012, the way in which trademark applications are classified was updated overnight in the 83 signatory countries to the Nice Agreement.
This is a significant advantage for trademark owners filing trademark applications in countries that have adopted the Nice Classification. The goods and services covered by a given mark are classified by reference to the same up-to-date system, which makes trademark searching and filing in these countries relatively straightforward.
However, in the Middle East, where most countries are not signatories to the Nice Agreement, the position has become more complicated than it was previously.
For example, in the six countries of the Gulf Cooperation Council (GCC), four different editions of the Nice Classification are currently in use. Of these countries, only Bahrain is party to the Nice Agreement. Of the remaining countries, the United Arab Emirates, Oman and Kuwait follow the ninth edition, Saudi Arabia follows the eighth edition and Qatar follows the seventh edition.
The situation is further complicated in some countries, as the question of which edition of the Nice Classification applies is decided by the practice of the trademark office, rather than being set out in legislation. For example, the United Arab Emirates follows the ninth edition, but the UAE Trademarks Law sets out its own classification system that is independent from, but based on, the eighth edition of the Nice Classification.
As a result of these differences across the GCC countries, trademark owners and their agents must be aware of and understand the differences between the editions before conducting clearance searches, filing applications and renewing registrations throughout the region.
When Saudi Arabia, Bahrain, Oman and the United Arab Emirates adopted the eighth edition of the Nice Classification, marks in Class 42 were not reclassified into the new additional classes (43, 44 and 45). As a result, it is possible in these countries for registrations to exist for the same mark and services in both Class 42 and, depending on the services in question, Class 43, 44 or 45.
Accordingly, given that cross-class searches are not conducted as a matter of routine in GCC countries, it is important to conduct an additional search in Class 42 before clearing a mark for registration in Class 43, 44 or 45.
When renewing registrations that contain specification items that have since been reclassified by subsequent editions of the Nice Classification, it is important to understand whether the registration will be reclassified on renewal to the correct class, or whether it will remain in the original class of registration. For example, in the United Arab Emirates, the present practice of the trademark office is not to reclassify; instead, the registration will be renewed in the original class of registration.
This is a particular concern in relation to some Class 42 registrations obtained under the seventh edition, as these must be renewed in Class 42 (despite the adoption of a subsequent edition). As a result, if a Class 42 registration (eg, for café services) can be renewed only in Class 42, it may be appropriate to file a second application in Class 43 in order to block subsequent conflicting applications for the same mark and the same services in Class 43. Given that cross-class searches are not routinely conducted during examination, this is a real possibility.
The number of classes in the 10th edition, as well as the class heading for each class, remains unchanged from the ninth edition. However, it is important to bear in mind which edition of the Nice Classification applies in each GCC country when filing applications in the region to ensure that applications are filed in the correct class in each country.
The main classification changes in the 10th edition relate to various goods previously in Class 9 that have been moved to other classes. For example, 'swimming belts', 'swimming jackets' and 'water wings' have been transferred to Class 28, and 'soldering apparatus', 'electric door openers' and 'vending machines' have been transferred to Class 7. As a result, particular care must now be taken in relation to goods covered by these classes when filing applications in GCC countries.
The trademark offices in the GCC often refer to Arabic translations of the Nice Classification more as an exhaustive list of goods and services that can be filed in each class, rather than as a guide.
There are a number of difficulties in translating technical specification items from Arabic into English. As a result, objections are regularly raised against specification items that are not specifically listed in the Arabic translation of the Nice Classification being used by each office. Such objections can often be overcome by demonstrating that the same specification has been (or would be) accepted in other countries where a trademark registration has been obtained.
The 10th edition may exacerbate this problem, given the technical nature of some of the new terms added to the 10th edition (eg, 'cloud seeding' in Class 42).
Departures from the classification
Regardless of which edition of the Nice Classification is being used, the trademark offices in the GCC countries will depart from the Nice Classification when dealing with items that are deemed to contravene public morals. For example, applications covering alcoholic beverages in Class 33 (and related services in Class 42 or 43, depending on the country) are not accepted by the trademark offices of any GCC country.
The Nice Classification is scheduled to be updated annually from January 1 2013 onwards. This more frequent updating of the classification should not in itself cause more difficulties than those that already exist in the Middle East.
However, there is a real possibility in the coming years that more countries in the region will sign up to the Nice Agreement. In addition, some trademark offices may change their practices to adopt a more recent edition of the Nice Classification, which could lead to further inconsistencies across the region.
It is therefore important for trademark owners with an interest in the Middle East to be vigilant when conducting clearance searches, filing applications and renewing registrations in the Middle East. It is also important for such owners to keep a careful eye on legislative and practice changes in the region so that any further changes that may affect them can be identified.
The information set out in this update is accurate as at January 30 2012. Since then, the UAE Trademarks Office has issued a circular stating that it will apply the 10th edition of the Nice Classification to all trademark applications filed on or after January 1 2012.
For further information on this topic please contact David Harper or Rob Deans at Clyde & Co by telephone (+971 4 331 1102), fax (+971 4 331 9920) or email ([email protected] or [email protected]).