03 Jan 2020Tim Slingschröder
Everyone who has ever taken a good look at a Trademark Certificate has most likely noticed that it mentions a certain ‘class’. This class refers to a class of goods or services, and in many jurisdictions – including Indonesia – corresponds with the so-called Nice Classification. But what is the Nice Classification exactly? A brief explanation.
Virtually all goods and services you could possibly want to sell – whether it’s sushi or stuffed animals – are recorded in it. The ‘International Classification of Goods and Services for the Purposes of the Registration of Marks’, or better known as the Nice Classification, was established in 1957 by the Nice Agreement. Over time, the list has been revised several times and new items such as computers and smartphones have been added. The Classification’s current, 11th edition entered into force on January 1, 2019. As of late 2019, 88 countries around the world have joined the Nice Agreement, and over 60 other nations use national lists of goods and services that are largely based on the Nice Classification.
As explained earlier, about all goods and services imaginable have been recorded and classified in the Nice Classification. The Classification consists of 45 different classes; class 1 until 34 contain groups of goods, while the remaining ten classes describe services. Every good or service is grouped with somewhat similar other goods and services. Class 1 for example mainly includes raw materials and chemicals, such as unprocessed plastics, helium and potting soil. Class 2 lists down coloring and protecting substances like paints and varnishes.
Though some items on the list are pretty straightforward – such as ‘mittens’ under class 25 – others are a lot more specific. ‘The arranging of passenger transportation services for others via an online application’ for example is listed under class 39, and implies the arranging of transport, of passengers, for others, online and via an application.
Some goods and services are not explicitly mentioned under one of the classes, but due to their nature fall under more than one class. Parties intending to launch a mobile application, for example, should have their trademarks registered under both class 9 (for electronic devices and computer software) and class 42 (for technological services). On top of that, the applicant in question best also has his trademark registered under the class that matches the goods and/or services offered through the mobile application. As passenger transport is listed under class 39, the operator of an online taxi-booking app such as Uber should have his trademark registered under class 39 as well for optimal legal protection.
There are also some goods and services that appear to fit within one classification but actually belong under another. The earlier mentioned class 2, for example, includes paints and other coloring liquids but excludes cosmetic dyes such as hair dyes. Hair dyes instead are listed under class 3, which is dedicated to cosmetic products and cleaning preparations.
Indonesia is not a signatory state to the Nice Agreement, but the Indonesian Directorate-General of Intellectual Property (DGIP) does apply the Nice Classification. Applicants for trademark registration should, therefore, mention the applicable class(es) as defined in the Nice Classification in their applications. As of November 2019, the 11th Edition of the Nice Classification is followed.
The fact the Indonesian government has never signed the Nice Agreement results in the possibility for Indonesian lawmakers to adjust the Classification as they please. Though the Indonesian version of the Nice Classification is largely the same as its international counterpart, the descriptions of some goods/services differ among both Classifications.
The Indonesian DGIP works with very strict definitions of the goods and services as recorded in its own version of the Nice Classification. Including any goods or services in an application that are – even slightly – different from the ones listed in the Indonesian version of the Nice Classification is literally impossible. A party wishing to have his trademark registered for the service ‘sales agency services’ for example can not do so; he will have to change ‘sales agency services’ to ‘agency services relating to commercial sales’, as only the latter one is mentioned in Indonesia’s Nice Classification. An experienced lawyer or intellectual property consultant can find out which goods and services from the Indonesian version of the Nice Classification are most similar to the applicants. This enables such applicants to file for covering the protection of their trademark Indonesia for the goods and/or services they intend to offer under it.