In short

EuroClass brings together the classification databases (Goods and Services descriptions or terms) of each Participating (trademark) Office (PO) to facilitate the process of classifying your Goods & Services. This classification is a necessary step when applying for a trademark, whether an international trademark, a community trademark which gives you trademark protection in all the EU states, or country specific trademark.

At the moment more than half of the National Offices and the OHIM (EU Agency for trademarks and designs) provide data for EuroClass. Soon WIPO (World Intellectual Property Office) will also incorporate its databases.

When you search for a classification term in EuroClass, you will see in which Participating Office databases that term appears. If the term doesn't appear in an Participating Office database it doesn't mean that the term will necessarily be rejected by the Participating Office . However the application procedure in a Participating Office may take longer, if you choose a term that is not part of the database of that Participating Office because it can not be classified automatically and has to be revised by an examiner.

If you choose terms from more than one class you may be required to pay extra fees. For example, in the OHIM, the registration fee includes the possibility to choose from 3 classes, whereas in the UK office (UKIPO) each additional class has a small fee. Check with the Participating Office where you are registering your trademark.

History

In the past, trademark protection was done on a country by country basis. It was quite a complicated process as you needed to know the language in order to be able to seek protection in another country. Also the way different countries classified Goods and Services differed radically.

Since 1957 there have been a series of initiatives to unite the way that different offices and countries classify Goods and Services for the purpose of trademark registration. Among these initiatives are the Nice Classification, the Trilateral agreement and the Harmonization project, as outlined below.

The Nice Classification

The Nice Classification administered by WIPO in 1957, is a system for the classification of goods and services for the purposes of registering trademarks. It was established by a multilateral treaty called the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, administered by WIPO and concluded in 1957 (www.wipo.int).

Many countries have adopted the Nice Classification for the purpose of classifying Goods and Services for trademark registration.

The Nice Classification comprises the Class Headings, Explanatory Notes and an Alphabetical List of Goods and Services. The Class Headings describe in very broad terms the nature of the goods or services contained in each of the 34 classes of goods and 11 classes of services. To view the complete list of Class Headings, click here. Each class has Explanatory Notes which describe the type of product or service included, and in some cases not included in a class. The Alphabetical List sets out specific items of goods and a range of services in alphabetical order, in each case showing the appropriate class.

In EuroClass, there are descriptions of Goods and Services marked with an N. This is an indication that the term is from the Alphabetical List of the Nice Classification. This indication will only appear in the data coming from the OHIM.

A list of Goods and Services consisting exclusively of descriptions found in the Nice classification will be accepted as correctly classified provided that they have been used in the class indicated by the database.

The Trilateral Agreement

The Trilateral Agreement (2001) was between the US Patent & Trademark Office (USPTO), the Japanese Patent & Trademark Office (JPTO) and the EU Agency for trademarks and designs (the OHIM) which is the European Trademark Office.

In EuroClass, descriptions of Goods and Services marked with a T have been accepted by USPTO, JPTO and the OHIM as part of the Trilateral Agreement. This indication will only appear in the data coming from the OHIM.

A list of Goods and Services consisting exclusively of 'Trilateral' descriptions will be accepted as correctly classified by the USPTO, JPTO and the OHIM provided that they have been used in the class indicated by the database.

The Harmonization Project

The aim of the Harmonization on Classification is to reach a common classification practice amongst the Participating Offices to ensure that the user will be presented with one single list of Goods and Services in all languages and one way of applying classification practise, thus accepting and refusing in the same way lists of Goods and Services.

Background:

The Nice classification was set up mainly for administrative purposes. It was adopted by many of the trademark offices, including the OHIM for the classification of Goods and Services for trademark registration. When an item of goods or a service does not appear in the alphabetical listing, a set of classification rules is used to determine the class. As this is open to interpretation, different classification practices have been developed by the office over the past decades.

These differences lead to confusion. They are not user friendly and do not allow applicants to have a unique classified list for the same trademark in various offices.

The idea to harmonize came about during a EuroClass conference in July 2008. All participants agreed that there should not be classification differences amongst the offices. The starting point for a new Harmonized Database was set up between the UKIPO and the OHIM, agreeing on a common database of Goods and Services in English. Sweden agreed to follow suit by taking this English database translated into Swedish as their official list. Other offices agreed to follow this approach and interest was shown by the majority of EU offices.

All European offices with English as a working language (OHIM, the UK, Ireland and Malta) have adopted the English Harmonized list.

Ultimately the idea is to create "problem- free" scenarios such as this: trademark applicants use a common classification list in different offices which have agreed to accept it up front. The risk of objections for the applicant is low and the Participating Office s face less deficient applications.