2018 Edition of Classification Guidelines Available Now
July 5, 2018
The 2018 edition of WIPO’s Examination Guidelines Concerning the Classification of Goods and Services in International Applications under the Madrid System (“Classification Guidelines”) is now available , offering information on the most current examination principles applied by Madrid Registry examiners.
To help minimize the risk of classification-related irregularities, the 2018 Classification Guidelines include new tips on preparing an accurate and compliant list of goods and services.
Like the original version introduced at the Roundtable of the Madrid Working Group in 2016, this latest edition is divided into three sections: Section 1 provides an overview of the Madrid System and the International Classification of Goods and Services (or “Nice Classification”). Sections 2 and 3, where the majority of new content appears, explain the key classification principles applied by WIPO and provide practical tips and formatting help.
Expanded Classification Principles (Section 2)
Nature of services and branch of activity
Taking stock of the most common errors spotted by examiners last year, we have compiled under Section 2.2 of the 2018 edition new information to help you with the classification of services. In particular, when listing a service, the nature of service and branch of activity must be clearly indicated.
For example, if you’re applying to register your web-based financial services trademark, WIPO would accept the description “providing financial information via a web site” in Class 36, but not “providing a web site featuring financial information”.
References to other classes
This year’s Classification Guidelines warn against descriptions of goods and services that are based on references to another class. For example, expressions such as “computer software for services in Class 35” will not be accepted. Including this type of item on your list will lead to an irregularity (under Rule 13 of the Common Regulations), which could ultimately delay or prevent the registration of your trademark.
New Formatting Tips (Section 3)
Using the word “the”
Conciseness is key. In most cases, use of the definite article “the” is not necessary. According to this year’s Classification Guidelines, it should be avoided wherever possible.
Brackets: round or square?
Several years ago, use of round brackets (parentheses) was eliminated from the Alphabetical List of terms under the Nice Classification. Nowadays, round brackets should not be used to explain or expand a term; instead, they can be used to denote the corresponding American (“Am.”) expression of a term—for example, “trousers / pants (Am.)”.
On the other hand, square brackets are used in the Nice Classification’s Alphabetical List. Unlike their round counterparts, square brackets can be used to include expressions that help clarify or add precision to a term (for example, “blinkers [signaling lights]” under Class 9).
According to this year’s Classification Guidelines, square brackets can also be used as necessary to help define or explain a national or regional product, for instance “kimchi [fermented vegetable dish]” or “senbei [rice cracker]” in Class 30.
Every international trademark application filed through WIPO’s Madrid System must include a list of the goods and services covered by your mark. Your list should be clear and concise, and must follow specific rules on how to categorize (or “classify”) each item—in short, it must comply with the principles of the International Classification of Goods and Services or “Nice Classification.” If these requirements are not met, your application will not pass the formal examination by WIPO and an irregularity notice will be issued.
Remember! Use Madrid Goods & Services Manager to start building your list. This service will guide you through the classification process, and help you verify terms that are acceptable to WIPO and participating IP Offices. Once you’ve compiled your list using the database, the Classification Guidelines can help you fine tune your submission.