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The ICGS — how it is arranged and why it is necessary to check the list of products and services when filing an application

Dec. 18, 2018

In order to optimize the activities of the Offices of different states for the registration and check of
trademarks and service marks for their compliance with the patentability criteria, the Nice Agreement on
establishing the International Classification of Goods and Services for the Purposes of the Registration of
Marks (ICGS) was concluded in 1957. For the USSR, the Agreement came into force in 1971. Russia, as
the successor of the USSR, has still been being a party to this Agreement and it uses the ICGS for the
designation of the products and services with respect to which the means of individualization are being
registered.
The structure of the International Classification of Goods and Services
The first edition of the ICGS was adopted in 1963 and it consisted of 34 classes and an alphabetical list of
products. The Classification is regularly reviewed by a specially established Committee of Experts
representing the member countries of the Nice Agreement. New products or services are added to the
classes, the subject matters are being redistributed, the changes can possibly be made to the alphabetical
list and the explanatory notes can be adopted. Currently, the 11 th edition (the ICGS-11) adopted in 2017 is
in force. It consists of 45 classes: from 1 to 34 ones contain a list of products, and from 35 to 45 ones
include a description of services.
The text of the International Classification of Goods and Services for the Purposes of the Registration of
Marks includes a general part in which it is indicated how to apply the Classification correctly, and a list
of classes of products and services grouped according to the same type principle, accompanied with the
explanations. The class names are arranged in an alphabetical order and they indicate the areas, which the
product or service can be attributed to.
The definition of the class of the product or service according to the ICGS
If you file an application for the registration of a trademark to the Federal Executive Authority, according
to Subparagraph 3 of Paragraph 3 of Article 1492 of the Civil Code of the Russian Federation, the holder
of the designation must include the list of the products grouped according to the ICGS classes in the text
of the application. If the applicant does not specify the category, the application will be rejected by
Rospatent. The holder of the means of individualization is entitled to specify any number of the classes. It
is important to bear in mind that the amount of the state fee paid will depend on the number of the classes
specified.
For a correct description of the list, it is necessary first to find a general class by the Classification (for
example, class 2 of the ICGS), and then, if possible, to specify the individual products or services
contained in the list. The explanation notes to each class are of great importance, including the
description, the list of the subject matters assigned to this group and the list of the products or services
which are not included in the specified class. In case if the class definition becomes difficult, the creators
of the Classification advise to refer to section “General Remarks,” which is contained in the General
Provisions of the ICGS.
The expediency of using the ICGS
According to the WIPO information, the International Classification of Goods and Services is used in
more than 150 Offices worldwide. At the same time, 84 states are the direct members of the Nice
Agreement and this list is increasing regularly. 1

1 URL: http://www.wipo.int/classifications/nice/en/faq.html

The expediency and effectiveness of using the universal classification is obvious. Firstly, the correct use
of the ICGS allows the applicant to check the uniqueness of the designation in comparison with the
already registered means of individualization with respect to the selected products or services, and also to
understand how likely obtaining a certificate is. Secondly, the availability of the unified classification
simplifies the check of the designation at an examination stage, and, therefore, this allows reducing the
period during which a decision on protectability of the trademark or service mark is made. The ICGS
includes an extensive list of the products and services, regularly added by the new subject matters
appearing at the conditions of a developing economy, which are distinguished with the trademarks. The
use of the unified list of the products and services facilitates the work of the experts greatly.
Why we need checking the list of the products and services, when the application is filed
Before filing an application for the registration of a trademark or a service mark, the holder of the
designation should examine the ICGS in order to clarify the list of the classes and products with respect to
which the designation is planned to be registered. As the analysis of the Classification shows, some
products of the same type are in different classes, for example, “Electric Juicers” are assigned to class 7
of the ICGS, and “Household Non-Electric Juicers” are included into class 21 of the ICGS. It is
appropriate to include in the list even the products that the manufacturer plans to produce if the
manufacturing is expanded, since adding new classes after registering the trademark is impossible.
Then it is recommended to check for the presence of the confusingly similar or identical designations,
among those already registered with respect to the selected classes and products. According to the
provisions of the current legislation, the identical trademarks shall not be registered to distinguish the
homogeneous products. This is due to the possibility of confusing the consumer as a result of using such
designations. At the same time, according to the Rospatent's Methodological Recommendations: “The
adopted International Classification of Goods and Services for the Purposes of the Registration of Marks
does not affect the assessment of the homogeneity of the products and services.” 2 It is necessary to
assume that such position of the Office is due to the presence of the homogeneous products in different
classes.
Assessing the justification and necessity of carrying out the check of the list of the products and services,
it is possible to make an unambiguous conclusion that this procedure will allow the applicant to reduce
significantly the time and money costs for the registration of a trademark or a service mark.

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Author of article

Sergey Zuykov

Sergey Zuykov

Managing Partner / Patent Attorney of the Russian Federation / Eurasian Patent Attorney