Rebeca Nieto
IP Expert – Latin America IPR SME Helpdesk

Once you have decided to expand your business beyond Europe, any help you might have on the way will always be welcome, right?

During these last years, International and European institutions and organizations -notably, the European Union Intellectual Property Office (EUIPO) and the World International Property Office (WIPO) – have joined together with National Intellectual Property Offices from all over the world to harmonise IP practices and tools, trying to minimise the different practices and tools among national and regional registration systems.

Thanks to all these efforts, those EU SMEs seeking patent, trademark or design protection in other regions such as Latin America or Asia, will be pleased to find that some countries have implemented in their national IP systems the same search and classification Intellectual Property tools as we have in Europe.

For instance, if you are a European entrepreneur considering applying for trademark protection in Colombia, you would be able to check (free-of-charge) the availability of your trademark name or idea in that National Intellectual Property Office by using TMview. Note that a preliminary search will provide you with valuable information such as the existence of similar prior trademarks to yours, which may lead to the refusal of your trademark registration. Do not miss the opportunity to know more about the advantages of using this European platform by reading our previous post “TMview steps in Latin America” or directly on TMview website.

When applying, you will also be glad to discover that the Colombian trademark office also applies to the international classification system for the registration of trademarks, the so-called Nice Classification (NCL).

This international classification scheme is administered by the WIPO and enables you to classify goods and services in order to register your trademarks adequately. In this article, we will explain to you some basic notions about this international scheme in connection with Latin American countries.

What is the Nice Classification?

In common with other Trademark classifications, the NCL is used to limit the number of potential products and services that a single trademark represents. It was established in 1957 by the Nice agreement and until today, its numbers show how successful this agreement is, with 85 contracting states and 150 offices currently using it.

The NCL classifies goods and services, assigning them with a class number (for instance, class 15 in products is devoted to musical instruments). The classification is sub-divided into 45 different classes: 34 classes for goods and 11 for services. Furthermore, each class contains a class heading—general indications of the field—and explanatory notes, specifying the types of products and services included in the class.

The first Edition of the NCL came into force in 1963. After that, a new Edition of the Classification came into force every 5 years. A yearly Version is published too, since 2013. The current Edition is the 11th with its 2019 version.

The Committee of Experts at WIPO, with representation from all contracting states, is in charge of the revision of the Classification on a yearly basis. All the changes and amendments that are published annually (version) by the Committee of Experts are introduced afterwards in the new Edition.

The actual version, as mentioned above, is the 11th, and the next one (12th) is expected by 2021.

Is the Nice Classification being used in Latin America?

To this date, Argentina, Brazil, Chile, Colombia, Costa Rica, Cuba, Ecuador, Mexico, Peru, Uruguay and El Salvador are already implementing the 11th Edition, while Bolivia, Dominican Republic, Guatemala, Honduras, Nicaragua, Panama and Paraguay are using the 10th.  Be aware that Nicaragua and Venezuela remain using the 9th and the 8th edition respectively.

What are the benefits that the Nice Classification can provide to an EU SME?

It is clear that the use of a common classification for the registration of trademarks worldwide, helps both users and examiners in the registration and examination of trademarks, respectively. In case you are still doubtful, check out a list of main benefits of using the international Nice Classification:

  • the list of goods and services in which you will classify your trademark application, is going to be classified in the same way in all countries that have adopted the Nice Classification
  • when classifying your trademark application, it is very convenient to be referenced to a single classification, instead of deciding between two or more
  • this classification is available in 44 languages (until today). Thus, you will save money, time and work with the translations

Is it possible to cover several classes with a single application? Single and multi-class applications in Latin American countries

When applying for a trademark registration, the number of classes of goods and services that you select for your trademark is highly important. You have to think about the nature of your trademark. What goods and/or services must I select in the application?

As soon as you know what goods and services will need to be protected under your trademark, it is important to highlight that you will find two types of applications, depending on the country, single class or multi-class:

  • As to the multi-class application ones, you will have the option to file one single application for more than one class of goods and services of the Nice Classification. One application allows the applicant to select how many classes are needed for that trademark, without limitation.

To give an example of this type of applications, the trademark “Nike” is registered for classes 9, 14, 18, 25, 28 and 42 at the EUIPO (6 classes). And, at the EUIPO, Nike only needed one single application, plus pay the corresponding fees for every extra class.

  • As to the single class system, in the countries with this system, you will need to file one single application for every class your trademark needs. That means that if you want to register the name “Smint” in Argentina (country with the single class system) for 3 classes, you will need to prepare three different applications (one for each class) applying for the same name “Smint”.

In common with the European system administered by the EUIPO, in the Latin American region, Chile, Colombia, Costa Rica, Cuba, Dominican Republic, El Salvador, Nicaragua, Uruguay, Panama and Peru are multi-class systems, while Argentina, Bolivia, Brazil, Ecuador, Guatemala, Honduras, Mexico, Paraguay and Venezuela are single class.

Conclusions

The adoption and implementation of the Nice Classification -at the best, of its latest edition- by the National Trademark Offices of Latin America simplifies your trademark filing, as the goods and services covered by a given trademark will be classified according to the same system in all the countries that have adopted this classification scheme. As previously indicated, being the Nice Classification translated into several languages will allow you to save money, time and work when filing internationally.

If you are interested in expanding your trademark protection to any Latin American countries, do not leave this blog before reading “Registering your trademark in Latin America through Madrid System” . Take a couple of minutes to browse through our library for practical IP materials and remember that our Helpline service provide you with professional IP advice – customized, straightforward, and free of charge- within 3 working days.

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