On January 1, 2021, the 11th edition of the Nice Classification 2021 for trademarks came into force. There are no structural changes, but is the 2021 version quite up to date? About robots, joysticks and automation in the Nice Classification 2021.
As of January 1, 2021, the 2021 version of the 11th edition of the Nice Classification 2021 (NCL 11-2021) will be in effect. This annual update has been in place since 2012. There are no major structural changes such as class changes in the 2021 version.
However, the assignment of products to the classification is not always intuitively explained; in some aspects, the 2021 version of the Nice Classification also seems as if it is not quite up to date. The best example: Robots are not a class of their own, but can be found in 5 different Nice classes, and this does not even include self-playing percussion instruments (class 15) or maintenance and repair of vehicles (class 37).
In 1957, a convention was concluded in Nice to standardize the classification of goods and services for trademark applications worldwide. With each trademark application, it must be indicated for which Nice Classes the trademark is to be registered. In total, the Nice Classification is subdivided into 45 classes, 34 of which are classes of goods and 11 of which are classes of services, comprising a total of around 10,000 terms. For a better overview, the German Patent and Trademark Office (DPMA) publishes a recommendation list for the classification of goods and services.
In addition, one can also refer to a classification harmonized in the EU International. For this purpose, national trademark offices of the EU, together with the European Union Intellectual Property Office (EUIPO), have created a database for classification, which in the German-speaking area is referred to as the “Unified Classification Database” (eKDB). This database can be viewed via the tool “TMclass“, available in 23 languages.
Why is the selection of the right Nice classes so important?
If too few or the wrong Nice Classes are selected during the trademark search, the search will become inaccurate and lose its informative value. Please also keep in mind that the list of goods and services of your trademark cannot be extended – it can only be limited.
It should also be noted in the trademark search that it is not sufficient to search for earlier trademarks only in the same Nice classes as your own.
In principle, any third party can request cancellation of your mark either within the opposition period (three months after registration of your mark) or later in cancellation proceedings in court. Therefore, we advise you to seek professional assistance in filing your trademark application – and in selecting the Nice Classification.
Furthermore, the classification according to the Nice Classification is not always intuitively explained, this happens also in the new Nice Classification 2021.
Industrial robots were already noted in early versions of the Nice Classification. As before, they are assigned to Nice Class 7 in the 2021 version (as is additive manufacturing = 3 D printing).
Humanoid robots with artificial intelligence (AI), however, and likewise teaching robots, robots in laboratories and robots for security surveillance are assigned to Nice Class 9. However, if a robot is not used in the laboratory but in operations, it belongs to Nice Class 10.
The robot cars, which are also present today, are assigned to Nice Class 12; however, this does not apply to self-driving street sweepers, which belong to Nice Class 7.
Automatic control devices for vehicles and also simulators for steering and control of vehicles are basically assigned to Nice Class 9. This also includes virtual reality headsets and data goggles. Automation is nevertheless not always easy to classify; machine tools and devices driven by a motor belong to Nice Class 7, but what if this motor is connected to a computer? Or even with artificial intelligence? In any case, computers and computer peripherals belong to Nice Class 9, as does computer software. But an industrial robot is assigned to Nice Class 7.
The classification of joysticks is similarly confusing. Although joysticks for computers belong to Nice Class 9, if they are parts of machines, they are assigned to Nice Class 7. In general, much depends on how a joystick is used.
As a joystick for vehicles it belongs to Nice Class 12, joysticks for video games, control devices for toys and game consoles, on the other hand, to Nice Class 28. In this class there are also – basically logically – toy robots. Self-playing percussion instruments, on the other hand, are assigned to Nice Class 15.
Service as mark
Like the previous versions, the Nice Classification 2021 also offers a total of 11 classes of services. Here, too, one has to choose exactly in the Nice Classification, as the example “security” shall illustrate. Since the Nice Classification 2017, a distinction is made between services relating to “physical” security in Nice Class 45 and the area of “data security”. For coordination or monitoring in relation to data security is classified as a programming service, this belongs to Nice Class 42.
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