How Does the Nice Agreement Affect my Trademark?

The Nice Agreement is an international system of classifying trademarks into one of 45 different categories, including both goods and services.

Across the world, millions of businesses and individuals from dozens of countries use the same system to understand their intellectual properties.

Originally created in 1957 through the Nice Agreement, the Nice Classification system (NCL) is now in use in 85 nations around the world. This list includes many of the world’s largest markets, such as China, Russia, and the United States.

In this article, we’ll discuss the basics of the Nice Agreement and the Nice Classification system. We’ll talk about who the agreement applies to, as well as how it might affect your intellectual property holdings.

For a more complete view of the individual trademark classes laid out by the Nice Agreement, make sure to check out our in-depth series on the subject.

What Is the Nice Agreement?

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Essentially, text of the Nice Agreement lays out the ideas behind the Nice Classification system, and mechanisms to keep it updated.

In part, this means listing the duties of member states, which essentially involve respecting the terms of the agreement and paying dues. However, the bulk of the Agreement is spent describing the exact mechanics and nature of the NCL’s trademark classification process.

The Nice Classification System

The Nice Classification system aims to assimilate every imaginable variety of goods and services into one of 45 trademark classes. This is a pretty ambitious undertaking, which explains why the full text of the classification list runs 327 pages. Fortunately, there’s no need to read the entire system to benefit from the Nice Agreement as a potential trademark holder.

Instead, what’s important to understand is which of the 45 classes of goods and services your trademark falls into. By applying for a trademark in each of those classes, you an protect your intellectual property from infringement.

Usefully, the NCL classification list is available in several languages. This makes it easy to understand which classification you need to apply under. It’s also extremely useful for applying for trademarks in foreign trademark offices, which almost always require applications to be fully translated.

How Does the Nice Agreement Protect my Trademark from Infringement?

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By itself, the Nice Agreement doesn’t actually prevent others from infringing on your trademark. However, it does insure that trademark classes are intelligible between nations. While this won’t prevent all confusion, it helps to ensure that the laws of different states are applied consistently.

For example, consider the case of the owner of a pharmaceuticals company who would like to apply for trademarks in both Japan and the United States. The U.S. and Japan have very different trademark laws, but both have signed the Nice Agreement. This means that each nation will classify a pharmaceuticals-related trademark under class 5.

This is important, because in most countries trademarks only protect against infringement from within the same class. Thus, in the U.S., the companies Delta Airlines and Delta Faucets both have trademarks on the name “Delta.” However, because those trademarks are in two completely different classes, neither can sue the other for trademark infringement.

If there was an inconsistency in how countries register trademarks, it would greatly hamper the growth of international businesses. This is because a brand name or logo in one country might count as infringement in another.

How Does the Nice System Deal with Ambiguity?

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While the Nice Classification system is exhaustive, there are always corner-case trademarks that do not fit cleanly into one specific category.

For example, the trademarks of a company that develops software on-demand for specific industries fall under Trademark Class 42: Science and Technology Services. However, if a company instead wants to apply for a trademark connected to commercially-available software (rather than custom-made), they will need to file under trademark Class 9: Electric and Scientific Apparatuses.

But what if a company wants to do both?

Fortunately, the NCL offers an easy solution in situations like these: simply apply under both trademark classes. Provided that you can demonstrate extant goods and services in each category, you may apply under any number of different trademark classes.

Keep in mind, however, that government trademark offices typically charge additional fees for each extra class you apply under. Registering under multiple trademarks can get expensive quite quickly.

Limits to Registration

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The ability to apply under any number of trademark classes makes the NCL a useful, flexible way to classify international trade. However, it also renders it open to abuse.

That’s because, in theory, the holder of a relatively broad or useful trademark could simply register under every class. After doing so, they could sit on their mark, waiting to sue others for infringement. Fortunately, the NCL has a built-in measure to prevent the worst of such abuses.

The Nice Classification system cannot be used to register a trademark for any form of abstract use. In order to receive a trademark through the NCL, you must provide evidence that you’re actively using the mark in commerce.

You must prove that you either actively use, or intend to soon use, the trademark, otherwise your government might consider your trademark dead or inactive. In this case, you lose all protections normally provided by registering your trademark.

Who Does the Nice Agreement Apply To?

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Over 150 trademark offices around the world use the NCL to classify their trademarks. This includes offices in member countries, as well as some non-member countries that use the system, such as India.

Additionally, the following regional organizations use the NCL:

  • The European Union Intellectual Property Office (EUIPO).
  • The African Intellectual Property Organization (OAPI).
  • OAPI’s counterpart in East Africa, the African Regional Intellectual Property Organization (ARIPO).
  • The Benelux Office for Intellectual Property (BOIP).

For years, Canada remained one of the largest nations not to use the NCL on a widespread basis. However, that changed in 2017, when Canada signed the Nice Agreement.

The Canadian Intellectual Property Office now plans on finalizing their switch to the NCL before 2020.

Conclusion

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All in all, the Nice Agreement is an incredibly useful measure for making trademarks legible between countries. However, it’s important to remember that the NCL is only a classification system. While useful, it does not actually do anything to protect your trademarks by itself.

For that reason, it’s important to consult an experienced trademark lawyer before registering for a trademark. This is doubly true if you are applying for a trademark in more than one country.

Even if you know exactly which class to register under, a good trademark lawyer can still help you navigate the intricacies of each nation’s trademark law. This will help insure the success of you, your business, and your trademark down the road.

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