Worldwide harmonization of classification? Ásta Valdimarsdóttir Director Madrid Operations Division Madrid Registry WIPO

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1 Worldwide harmonization of classification? Ásta Valdimarsdóttir Director Madrid Operations Division Madrid Registry WIPO

2 Main points Classification Role of the IB Nice Classification Guidelines On line tools and databases

3 Classification Important part of the registration process Specify the products and services to which a trademark will apply and defines the scope of protection their trademark will enjoy Terminology that describes the products/services precisely enough not too narrow and not too broad 3

scope of protection their trademark will enjoy Terminology that

4 Classification is a balancing act Terminology that describe the products/services precisely enough not too narrow and not too broad Avoid irregularities from the IB and refusals in Designated states 4

5 Classification role of WIPO WIPO shall register the international applications with the classifications and grouping that WIPO considers to be correct. Different practices in the Member States 5

6 Role of WIPO Check if goods and services in international applications are : grouped in the appropriate classes of the Nice Classification the goods and services are indicated in precise terms Rule 12 and Rule 13 of the Common Regulations

the Nice Classification the goods and services are

7 International Applications: irregularities With errors; 19,207; 39% With no errors; 30,085; 61%

8 Breakdown of irregularity letters Other Errors related to Rule 11(4) (Administrative errors); 11% Rule 12 (Classification); 10% Rule 11(3) (Fees); 28% Rule 13 (Indications of G&S) 51%

9 Nice Classification Nice treaty from States & WIPO follow the classification 10 editions and new versions every year 11 edition in 2017 Changes to 12 class headings

10 Source for classification Class headings Alphabetical list of the NICE Classification Explanatory notes to the NICE Classification The General remarks for G&S in the NICE Classification Guidelines 10

11 Guidelines Introduced to the Members of the Madrid System in the Roundtable 17 th of June 2016 For discussion and comments until 1 of November 2016

12 The purpose: Guidelines Inform the Madrid System users of the practices followed by WIPO Support users when listing goods and services Increase the predictability of examination in WIPO Set an example for the practices in the Member States 12

goods and services Increase the predictability of

13 Guidelines Three main Sections General information about the Nice Classification and the Madrid System Classification principles applied by WIPO Practical information on the acceptable format to 13 list indications of goods and services

Classification principles applied by WIPO Practical

14 Class headings Classification principles Indications that can be classified in more than one class Use of certain expressions (namely, all other services..) Classification of specific goods and services (kits, electronic games ) Use of trademarks, geographical indications or appellations of origin in the list of goods and services 14

.) Classification of specific goods and services (kits, electronic games ) Use of

15 Class headings WIPO accepts the Class headings Class headings include general indications describing goods and services, limited by semicolons. WIPO accepts the general indications in the Class headings Some States accept Class headings, others do not Some States accept all indications in the Class headings, other do not

WIPO accepts the general indications in the Class headings Some States accept

16 EUIPO & too vague terms Eleven terms in the Nice class headings considered too vague in 2015 Six of them have been changed in the Nice class headings Five terms have not been changed Class 7: machines and machine tools Class 37: repair Class 37: installation services Class 40: treatment of materials Class 45: individuals personal and social services rendered by others to meet the needs of Terms accepted by WIPO but refused by EU states and EUIPO 16

Class 37: repair Class 37: installation services Class 40: treatment of materials Class 45: individuals personal

17 Madrid Goods & Services (MGS) Cornerstone of a well-structured international application is the list of goods and services MGS assists applicants in compiling list of standard terms acceptable to the IB and many Madrid member states

goods and services MGS assists applicants in compiling

18 Madrid Goods & Services (MGS) BROWSE pre-approved terms by the IB SEARCH pre-approved terms using keywords ACCEPTANCE of terms selected can be verified WIPO (free-text) Designated Contracting Party (dcp)

19 Madrid Goods & Services (MGS) Close to English terms acceptable by the WIPO terms (Nice Alphabetical list, NCL ) terms, validated from various origins: International Applications & Registrations (frequencybased) TM5 Harmonized ID-list (CN, EM, JP, KR and US) USPTO Manual EU Harmonized Database (TM class)

258 terms (Nice Alphabetical list, NCL10-2016) 69.

20 MGS: Three layers

21 MGS Layer 1 and 2: Preferred and Synonyms Class ID Source corn flour farine de maïs harina de maíz corn meal maize flour maize meal USPTO Capri pants pantacourts pantalones pirata USPTO Capris corsaires [pantalons] WIPO Capri trousers

22 MGS Layer 3: Operationally Acceptable

23 Layer 3: Operationally Acceptable MGS

24 MGS Check acceptance

25 Reference to TMclass TM Class & MGS 25

26 Nice & Taxanomy 26

27 Thank you! Asta Valdimarsdottir Director Operations Division Madrid Registry Brands and Designs Sector World Intellectual Property Organization

Madrid Goods & Services Manager MGS

Madrid Goods & Services Manager MGS Isabelle Vicedo Head Madrid Goods & Services Database Section Geneva November 5, 2015 What does MGS contain? 74,884 English terms acceptable by the I.B. (Sept. 2015):