In March 2017, the World Intellectual Property Organization (“WIPO”) issued guidelines regarding the International Classification of Goods and Services (the “Nice Classification”) for the purposes of international registration of a trademark under the Madrid System (“Guidelines”). In this respect, it is to be noted that Malta implements the Nice Classification by way of practice yet it is not an officially a contracting party to the Nice Agreement.
The Guidelines primarily provide information regarding classification and formatting principles applied by WIPO.
Noteworthy Guidelines include:
- a “finished product” is to be classified in accordance with its function or purpose. In the absence of a specific function or purpose in a class heading, the product is to be classified by analogy with other finished products. If an analogy is not possible, other subsidiary criteria, such as the material, mode of operation or nature are to be applied;
- services are to be classified in accordance with the branches of activities specified in class headings (inclusive of their explanatory notes), failing which, also by analogy with comparable services. However, services involving “advice”, “consultancy” (or similar services) are to be classified in the same class as the service that corresponds to that advice;
- WIPO accepts the use of certain expressions, for example “in particular”, “especially” and “including”, to further specify or to restrict the scope of protection. However, WIPO does not accept expressions with a view of extending the scope of protection without specifying the breadth covered. For example the use of expressions such as “and the like” or “etc” are not accepted;
- WIPO does not accept claims regarding all goods/services in a particular class. Each good/service must be specifically listed.
- Abbreviations are only accepted where it is possible to accurately and unequivocally determine the goods/services concerned. If an abbreviation is not known to the public, it will not be accepted unless its “developed form” is provided.
You may find the full Guidelines here: http://www.wipo.int/edocs/mdocs/madrid/en/mm_ld_wg_15_rt/mm_ld_wg_15_rt_classification_guidelines_ib.pdf