As we know, trademarks are used and registered for the specific goods and/or services to which they relate. For the purpose of simplifying the procedure for the categorisation of goods/services indicated in trademark applications, the International Classification of Goods and Services for the Purposes of the Registration of Marks, otherwise known as the Nice Classification (NCL), was established in 1957 by the Nice Agreement.

As of the publication of the 1st NCL edition of 1963, it has been revised and published every 5 years. Since 2013, the Classification has been revised annually and is subsequently published on January 1st of each year to include any amendments, additions or deletions to classes. A whole new edition of the NCL is published every 5 years.

The editions of the Nice Classification are available online and comprise a full list of all classes in relation to the goods and services detailed therein, alongside the relevant explanatory notes, available on the WIPO website. At present, there are 34 available classes of goods, and 11 classes of services, for which a trademark can be registered.

The headings of the classes broadly denote the nature of the goods and services contained within the class, whilst the explanatory notes describe the types of products or services which can come under that class umbrella. There are 10,000 indications of goods in the alphabetical list of the Classification, and 1000 indications of services in the last edition of NCL.

The NCL is currently utilised by approximately 150 intellectual property offices across the globe, inclusive of the regional offices of the African Intellectual Property Organization (OAPI), the African Regional Intellectual Property Organization (ARIPO), the Benelux Office for Intellectual Property (BOIP) and the European Union Intellectual Property Office (EUIPO).

Each member state of the Nice Agreement is obliged to include the relevant class numbers corresponding to the goods and services for which the mark is being registered on official documents and publications in relation to the trademark registration. Further, the NCL must be applied in these jurisdictions either as a principal classification, or as a subsidiary classification.

The Nice Classification is a useful tool which provides for a more simplified and efficient way of drafting applications which are to be filed in multiple countries, owing to the fact that the goods and services applicable to the trademark application will be classified in a uniform manner in all states which utilise the NCL. Furthermore, as the Classification can be accessed in multiple languages, it eliminates the need for translation when an applicant opts to file for goods or services differing from that of the office of origin of an application.

If you are interested in applying for a trademark, contact us.

The International Patent Classification (IPC), administered by the World Intellectual Property Office (WIPO), is a hierarchical system for use in relation to the uniform classification of patents and utility models.

The main objective of the IPC is to establish an effective search tool through which users can retrieve relevant patent documents such as applications and specifications of granted patents et al. Such documents may be used, for example, to assist in the establishment of novelty and assessment of an inventive step or non-obvious element of an invention.

Moreover, the IPC also facilitates selective dissemination of relevant patent and utility model information across users of the system, and provides a basis on which statistical analysis on intellectual property and technological development can occur.

Established by the Strasbourg Agreement of 1971, the IPC contains information on patent publications from all Contracting States privy to the system, as well as most other jurisdictions, making it the most widely used patent classification system worldwide. Each patent or utility model publication is assigned one or more classification symbols which indicate the subject, or technological area, to which an invention pertains, allowing users of the IPC to efficiently distinguish details of patent publications. By utilising language-independent symbols, the classification system allows for the multi-jurisdictional use of the IPC in a uniform manner.

The classification system is split into eight alphabetised sections of subject areas for patents and utility models, namely:

A. Human necessities

B. Performing operations and transportation

C. Chemistry and metallurgy

D. Textiles and paper

E. Fixed constructions

F. Mechanical engineering, lighting, heating, weapons and blasting

G. Physics

H. Electricity

Each of these sections is then divided into classes and subclasses, as well as groups and subgroups, each possessing its own alphabetical or numerical code. The corresponding letters and numbers come together to form an overall symbol to which patent publications can be assigned, for example in the format of A01B 1/00.

The "hierarchical" element is demonstrated by the tiered format of section, class, group etc. Typically, a patent examiner will assign the classification to a patent application at the most detailed level possible in accordance with their technical content and subject matter.

The IPC is reviewed annually to reflect relevant technical developments, with the newest version being enforced on January 1st of each year. At present, the classification system is in use in over 100 countries across the globe, and divides technology into almost 80,000 areas. The IPC also details a Catchword Index, which constitutes a list of 20,000 technical key terms in relation to the appropriate classification placement, provided in both English and French, the two main languages of the system. A detailed version of the index is also provided in English and German by the German Patent and Trademark Office, which contains over 100,000 terms.

Other patent classifications are also in operation, for example, the Cooperative Patent Classification (CPC), managed jointly by the European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO).

The International Patent Classification system, as well as other operational classification models used worldwide, can prove a vital tool for use in the retrieval and assessment of patent documents. If you have any questions regarding the IPC, or are interested in filing a patent or utility model application, please feel free to contact us.

The Madrid System for the International Registration of Marks facilitates the registration and maintenance of trademarks internationally, and is administered by the International Bureau (IB) of the World Intellectual Property Organisation (WIPO). The system is governed by the Madrid Agreement Concerning the International Registration of Marks of 1891, and the Protocol Relating to the Madrid Agreement of 1989.

The Madrid Union consists of 113 Member States, comprising a total of 129 countries and regions overall. The system affords applicants the opportunity to file one international application, accompanied by a single set of fees, covering any or all of the 129 Contracting States to the Madrid Protocol.

In order to file for international trademark protection by way of the Madrid System, it is necessary for an applicant to first file a national application with an IP Office of Origin. This must be an Office in a Contracting State to the Madrid Agreement/Protocol, which the applicant either resides, is a national of, or has a commercial business in. This initial application is referred to as the "basic" one, and serves as the basis for further filing of the international application, which must be filed with the same IP Office of Origin.

The international application must be identical to the basic one, containing the same mark, along with the goods or services to which the mark relates in accordance with the Nice Classification. Furthermore, it is obligatory to detail the designated Contracting States for protection. The application can be filed with the IP Office of Origin in any of the three official languages of the System, namely English, French, or Spanish, depending on the language prescribed by the IP Office of Origin. Upon filing, the Office of Origin will check and certify that the international application corresponds to the basic one and all the necessary documents are submitted, before sending it on to the WIPO.

Once the international application has been received by the WIPO, the IB will conduct the formal examination of the same for compliance with the requirements of the Madrid System, and payment of the corresponding fees. If any discrepancies or issues with the application are found, the IB will inform the applicant and the Office of Origin, and they must be remedied within 3 months of notification, as failure to do so will result in the application being considered abandoned.

If the international application is approved by the IB, the mark will be published in the WIPO Gazette of International Marks and recorded in the International Register.

Thereafter the WIPO proceeds to notify each Contracting Party designated in the application. The substantive examination of the mark is conducted in each individual designated territory in accordance with the respective national or regional legislation of that state. As such, each independent Office has the right to refuse the grant of a trademark registration in light of any grounds for objection, or oppositions filed, and this decision will not impact those made by the Offices of the other states designated in the application.

If the examining Office reaches a decision of provisional refusal, this decision should typically be communicated within the standard 12-month time limit set forth by the Agreement or Protocol. However, some Contracting States may declare an extension to the time limit of up to 18 months. Moreover, in some jurisdictions, refusals based upon an opposition to a trademark application may be communicated even after the expiry of the period of 18 months.

Should an applicant opt to contest a refusal, for example, by appealing the decision, or by responding to an opposition, these actions will be conducted directly between the applicant and the respective Office itself. Once a final decision has been made, the Office will then notify the IB via a final statement, either confirming total grant of trademark protection, partial grant, or total refusal.

If no grounds for refusal are found, the examining Office should send the decision to register the trademark in that jurisdiction to the IB within the relevant aforementioned time limit.

The decisions made by each examining Office will be recorded in the International Register and published in the WIPO Gazette.

Once granted, an international trademark is valid for an initial period of 10 years from the date of international registration, which is typically recorded as the date on which the international application was received by the Office of Origin, and has the same effect in each respective designated jurisdiction as it would had it been filed directly with that state. The mark may be renewed for a further consecutive 10 year period before its expiry directly with the WIPO in any or all of the Contracting States in which the mark is effective.

For the first 5 years after registration, the international trademark is dependent upon the initial basic mark and everything that happens with the basic mark reflects on the international one. Therefore, if the basic trademark becomes ineffective in some or all goods/services within this time, the international registration will cease to protect the same goods/services. After this period, the international mark is deemed as independent in it's own right.

Overall, the Madrid System simplifies the process of obtaining trademark protection within the parties privy to the system, whilst also streamlining the process for trademark maintenance in a centralised manner, making it an advantageous method of filing for multi-national trademark protection. If you have any questions, or are interested in filing via the Madrid System, please contact us.

Filing patent applications in more than one jurisdiction can prove to be a potentially complex process, but the PatentCooperationTreaty (PCT) provides for a simplified and streamlined route for the filing of patent applications internationally.

The PCT entered into force in 1978, and is administered by the World Intellectual Property Organisation (WIPO). The multilateral treaty currently incorporates 153 national and regional offices, including the IP 5; China, South Korea, the US, Japan, and the EPO.

Through the PCT, applicants can file one patent application, accompanied by the payment of one set of fees, designating any or all PCT member states for further filing. The PCT does not provide for an "international patent", since patent protection can only be valid within a given national/regional territorial jurisdiction. Rather, it serves as a basis for further national patent proceedings in the countries of the applicant(s) interest, meaning a patent obtained via the PCT route is still national or regional in nature.

The process of filing an application through the PCT begins with the international phase. Typically, applicants will first file a local patent application which establishes an earlier priority date. The PCT application should then be filed with a "Receiving Office" (RO) within 12 months of the filing of the priority application. However, the step of a first local filing is not obligatory and may be omitted.

The RO is either a national or competent regional office of the PCT contracting state which at least one of the applicant(s) resides in or is a national of. The International Bureau of WIPO also acts as the RO. Once received by the RO, the international application will be checked to ensure it has met the PCT formal requirements.

A PCT application will then be subject to an international search, undertaken by a competent International Searching Authority (ISA). This will result in an InternationalSearchReport (ISR) which is established within 3 months from the receipt of the copy of the international application transmitted by the RO to the competent ISA, or within 9 months from the earliest date of filing if priority was claimed, whichever time limit expires later.

The ISR will detail any prior art found which may impact the patentability of the subject matter contained within the international application. A preliminary WrittenOpinion of the International Searching Authority (WOISA) is also provided, advising whether the invention claimed in the international application appears to meet the criteria of novelty, inventive step and industrial applicability set forth by the Treaty. The same WOISA will later be used as the International Preliminary Report on Patentability (IPRP) if a demand for further International Preliminary Examination is not made.

Any amendments to the claims in the application may be made within 2 months of the establishment of the ISR or 16 months from the priority date, whichever time limit expires later.

Provided the application is not withdrawn by this stage, the international application is then published on PatentScope by the International Bureau of WIPO after the expiration of 18 months from the earliest priority date.

Applicants may further request an optional international preliminary examination either within 3 months from the date of transmittal to the applicant of the ISR and WOISA, or 22 months from the priority date, whichever expires later.

Requesting an international preliminary examination can be useful to applicants who wish to amend, or raise arguments in relation to, their application in light of any issues highlighted in the WOISA, as this may result in a more positive International Preliminary Report on Patentability (IPRP)/International Preliminary Examination Report (IPER). Moreover, requesting such an examination may also help to better estimate the applicant’s chances of success in further proceedings in the national/regional phases.

Since an international application does not result in automatic national protection for an invention, it is required to enter the PCT national/regional phase in the applicant’s jurisdictions of interest within 30/31 months from the earliest priority date. The exact time limit depends on the designated states/organisations for entry. The applicant should pay the necessary national/regional fees, as well as file any translations of the application and other documents that may be required upon entry.

Thereafter, the application will be examined by each individual national or regional office of the designated states, and patents will be granted in each state respectively, depending on whether it meets requirements of patentability established by national law of the designated states.

Applicants may also be obliged or recommended to appoint a local patent agent in each of the respective designated jurisdictions.

Filing an international PCT application is an advantageous opportunity for applicants to prolong the time period for making a decision as to which jurisdictions to pursue protection in, estimate their inventions, and seek investor support for their filings from 12 months under the Paris Convention to 30/31 months. Furthermore, some national/regional offices provide a number of discounts for issued ISR/IPRP in respect of international applications, helping to reduce costs for obtaining a patent.

If you have any questions regarding the PCT, or are interested in filing, please contact us.