Classification practice at the PRH from 1 May 2019

A list of goods and services which identifies the goods and services covered by the application grouped into classes according to the Nice Classification must always be included in a trademark registration application. The list is considered to cover the goods and services within the literal meaning of the class headings in the list.

Thus, a trademark’s scope of protection is determined by the literal meanings of the listed terms. However, the classification principles of the Nice Agreement have to be taken into account when assessing the range of the literal meaning. Therefore, the application or registration covers the goods or services which are included in the literal meaning of the classification term and fall into the class in question.

Class headings which need to be specified

If your application includes any of the class headings below, you must indicate precisely which goods or services within the literal meaning of the heading’s general wording you want to include in your application. If you do not specify, the processing of your application will be slower.

• Class 7 – Machines and machine tools
• Class 37 – Repair; Installation services
• Class 40 – Treatment of materials
• Class 45 – Personal and social services rendered by others to meet the needs of individuals

Classification practice at the PRH from 1 January 2014 to 31 December 2015

Applicants always had to list the goods and services they wanted to use the trademark for.

The scope of protection has covered the literal meaning of the listed terms. However, the classification principles of the Nice Agreement have to be taken into account when assessing the range of the literal meaning. Therefore, the application or registration covers the goods or services which are included in the literal meaning of the classification term and fall into the class in question.

Class headings which needed to be specified

If the application included any of the class headings below, the applicant had to specify which goods or services they wanted to use the trademark for, out of all the goods or services that belong to the class in question and to the literal meaning of the general term.

• Class 6 – Goods of common metal not included in other classes
• Class 7 – Machines and machine tools
• Class 14 – Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes
• Class 16 – Paper, cardboard and goods made from these materials, not included in other classes
• Class 17 – Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes
• Class 18 – Leather and imitations of leather, and goods made of these materials and not included in other classes
• Class 20 – Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics
• Class 37 – Repair; Installation services
• Class 40 – Treatment of materials
• Class 45 – Personal and social services rendered by others to meet the needs of individuals

Classification practice at the PRH from 1 October 2012 to 31 December 2013, concerning the coverage of class headings

If a trademark application contained the whole of a class heading and, in addition, the phrase “all other goods/services included in this class in the Nice alphabetical list", the registration came to cover the goods or services in that class within the literal meaning of the class heading and also all goods or services in that class included in the alphabetical list valid at the time of application.

If the application instead contained the whole of a class heading but not the phrase, the registration came to cover only the goods or services in that class within the literal meaning of the class heading.

Classification practice at the PRH before 1 October 2012, concerning the coverage of class headings

If a trademark application contained the whole of a class heading, the registration came to cover all the goods or services in that class. Thus, it came to cover also such goods and services that were not included in the alphabetical list of that class or in the literal meaning of the class heading.

Example: The whole heading of class 35: Advertising; business management; business administration; office functions. An application in class 35 came to cover, among other things, the service “retail sale of clothing”, although the service was not included in the alphabetical list of the Nice Classification and the class heading could not be considered to cover retail sale.