Harmonization of Trademark Law and Practice Committee Publishes Guidelines on International Classification

Published: October 15, 2018

Joseph Myers Seyfarth Shaw LLP Atlanta, Georgia, USA

Among other objectives, the International Classification (IC) Subcommittee of the Harmonization of Trademark Law and Practice Committee (HTLPC) has been tasked to review and monitor amendments of existing laws, regulations, and trademark practices concerning the classification of goods and services and the issue of subclasses, and harmonization initiatives by trademark offices, the Five Trademark Offices (TM5), and the World Intellectual Property Organization (WIPO) relating to international classification, including taxonomy structures, class scopes, classification of items, and classification tools.

To that end, a new set of guidelines compiled by the IC Subcommittee, titled Considerations Regarding Identifications of Goods and Services in an International Trademark Filing Program, provides in-house counsel, outside counsel, and trademark administrators with an overview of the classification of goods and services with a view to international trademark protection.

The guidelines identify areas of harmony among countries and regions in the classification of goods and services as well as the pitfalls caused by differences in the various trademark jurisdictions. By providing the guidelines as a hypothetical, context is given to the associated business decisions in a way that presents the basic considerations of trademark classification, but also offers practical tips for the experienced practitioner.

The guidelines start with an overview of the Nice Classification as a classification framework. It discusses common deviations from Nice, including class heading registrations, no recognition of service classes, and non-adoption of Nice. Overviews of the TM5, TMclass (a free online service that classifies good and services), and WIPO harmonization efforts are provided. Lastly, the guidelines provide appendices with helpful classification reference materials.

These guidelines were prepared by INTA’s International Classification Subcommittee of the Harmonization of Trademark Law and Practice Committee. The group comprises task group leader Joseph “Jay” Myers (Seyfarth Shaw LLP, USA) and members Punita Bhagava (Inventure IP, India), Barbara Friedman (Edell Shapiro & Finnan, LLC, USA), Rowena Price (Gill Jennings & Every LLP, UK), Karen Cushman (Columbia Sportswear Company, USA), and Ese Akpogheneta (Nucleus IP Limited, UK). The task group is also grateful for the contributions of Ben Imhoff (Andrus Intellectual Property Law, LLP, USA) and Tawnya Wojciechowski (TRW Law Group, USA), who led the task group in the past committee terms, as well as past members of the International Classification Subcommittee.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2018 International Trademark Association