June 24, 2013

10th Edition of Nice Classification Is Implemented

World Trademark Review

As part of Thailand’s efforts to join the Madrid Protocol by 2015, on March 1, 2013, the Thai Trademark Office announced the implementation of the 10th edition of the Nice Classification of Goods and Services for all new applications and renewals submitted after this date.

The purpose of this move is to streamline trademark registration processes in Thailand to bring them into line with those of many other countries that are already using the 10th edition of the Nice Classification. This will facilitate the task of international applicants and trademark counsel when classifying goods/services, both for national trademarks and international filings under the Madrid Protocol.

This change should be beneficial to applicants, particularly when seeking to claim priority rights based on foreign applications. Before the change came into effect, for example, “goggles for sports” fell within Class 28, as they were considered to be sports articles. According to the 10th edition of the Nice Classification, however, “goggles” now fall within Class 9. Prior to the implementation of the 10th edition, if an applicant claimed a priority date based on a foreign application filed under Class 9 for “goggles for sports,” it could lose its priority rights and have to file its mark under Class 28 instead, since ‘goggles for sports’ fell within Class 28 in Thailand. Priority claims could be rejected by the registrar, unless the applicant actively filed arguments to maintain its priority rights, because a Thai application must cover the same classes and goods as the foreign application. This used to be problematic for applicants wishing to claim priority based on foreign applications, since Thailand was not using the same classification as many other countries. However, with the implementation of new classification system, this problem should no longer exist.

Other changes in the 10th edition of the Nice Classification include:

  • The description “jewelry boxes” will now fall within Class 14. Previously, an applicant had to specify whether its goods were “jewelry boxes made of precious metal” (Class 14) or “jewelry boxes made of plastic” (Class 20).
  • The description “antioxidants” will now fall within Class 5, whereas, previously, an applicant had to describe it as “medicines for antioxidation.”
  • The description “computer games adapted for use with television,” which used to fall within Class 9, will now fall under Class 28, along with other devices for playing games.

As Thailand is not a contracting party to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, the country is not obliged to implement the 10th edition of the Nice Classification, so this development will not affect the registrar’s discretion in refusing broad or vague descriptions of goods/services. The implementation means only that some descriptions of goods/services have moved from one class to another; it does not mean that the Thai registrar will accept all goods/services on the Nice Classification listing, if those goods/services are perceived as being too broad or unclear. Nevertheless, following this change, the registrar may be more inclined to accept more descriptions if the applicants print out the 10th edition of Nice Classification to prove to the registrar that the goods/services should be accepted.

This article first appeared on WTR Daily, part of World Trademark Review, in May 2013. For further information, please go to www.worldtrademarkreview.com

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