Nice Classification and filing a mark for protection in China. Does it apply?

If you want to register a trademark, you are faced with the dilemma of which products or services to protect. The obvious one is to protect the products you have today. But are you planning to expand your product portfolio into new categories in the future? Shouldn’t you be thinking ahead? You will have these dilemmas, many of our clients do. For example, where do you find a list of products to protect? Yes, such a list exists and is defined in the so-called Nice Classification. 

What is the Nice Classification?

To be effective, the system of trademark protection had to be organised in a comprehensible way. All goods and services produced have been grouped into classes. There are 45 classes in total, with product groups numbered from 1 to 34. This classification system is administered by the World Intellectual Property Organisation (WIPO). The system was adopted by the signatory countries to the Nice Agreement. This is an international treaty adopted in Nice on 15/06/1967, hence the name Nice Agreement or Nice Classification. 

For the sake of form, however, it must be acknowledged that the Nice Classification was not the first system for classifying products for the purpose of trademark protection. The first was an alphabetical list of 34 classes of goods adopted in 1935 by the United International Bureaux for the Protection of Intellectual Property (BIRPI). Only later was it transformed into the International Classification of Goods and Services for the Registration of Marks. This took place at the Diplomatic Conference in Nice on 15.06.1957. The document was then called the Nice Agreement. It was not until ten years later that it became an international treaty. 

Is the Nice classification up to date?

While the idea of organising products and services according to the Nice Classification remains unchanged, the contract itself has been updated several times. This is not surprising. As technology evolves, new forms of distribution emerge, or previously unknown services become available, the lists of products and services included in the classes should also be updated. Do not look too far back – was anyone designing websites forty or thirty years ago? Or optimising websites for SEO thirty years ago? Or producing drones? The answers to these questions are obvious. 

What is the frequency of updating of the Nice Classification?

Originally, the Nice Classification was updated every ten years. If this rate of change were maintained, it would quickly become a museum. There is a problem of synchronicity with the Nice Classification. It deals with trademarks that are to be protected for future products and services. The classification itself had to move from the past to the future. It is obvious that it has to contain the real latest existing products and services in classes. Hence the need to keep it up to date. The classification is revised annually. A new list comes into force on 1 January each year, following a six-month publication period.  

Does the Nice Classification apply in China? 

Of course, the Nice Classification applies in China. The People’s Republic of China is a signatory. Official accession to the treaty took place in 1980. The Chinese way of classifying products and services is therefore analogous to the standard adopted by WIPO. But does this mean that the accepted goods and services that can be protected in China are 1:1 identical to the WIPO list? Realistically, this is not the case for a local application. 

The Chinese Trademark Office (CNIPA) has not only divided the products and services into classes – as in the Nice Classification – but has also introduced sub-classes within the classes. This makes it easier to find the right product. Most importantly, because China is and will be the factory of the world, it offers a wider range of products to the world than other countries. So there are more specific products on the list. How do you deal with this?  

When applying for a trademark in China, we recommend a local application. It has many advantages, as we wrote about in this other article. The most important advantage is that it is the local applicant who selects the appropriate products and services according to the company’s development plans, indicating them from a standard list adopted by the Chinese Trademark Office (CNIPA). We know from experience that an application prepared in this way is likely to be registered more quickly, as we have experienced for our client. Our current record is to register a trademark in China in just 5.5 months from filing. Not bad, huh?

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