17 December 2018

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

In order to optimize the activities of the Offices of different states for the registration and check oftrademarks and service marks for their compliance with the patentability criteria, the Nice Agreement onestablishing the International Classification of Goods and Services for the Purposes of the Registration ofMarks (ICGS) was concluded in 1957. For the USSR, the Agreement came into force in 1971. Russia, asthe successor of the USSR, has still been being a party to this Agreement and it uses the ICGS for thedesignation of the products and services with respect to which the means of individualization are beingregistered.The structure of the International Classification of Goods and ServicesThe first edition of the ICGS was adopted in 1963 and it consisted of 34 classes and an alphabetical list ofproducts. The Classification is regularly reviewed by a specially established Committee of Expertsrepresenting the member countries of the Nice Agreement. New products or services are added to theclasses, the subject matters are being redistributed, the changes can possibly be made to the alphabeticallist and the explanatory notes can be adopted. Currently, the 11 th edition (the ICGS-11) adopted in 2017 isin force. It consists of 45 classes: from 1 to 34 ones contain a list of products, and from 35 to 45 onesinclude a description of services.The text of the International Classification of Goods and Services for the Purposes of the Registration ofMarks includes a general part in which it is indicated how to apply the Classification correctly, and a listof classes of products and services grouped according to the same type principle, accompanied with theexplanations. The class names are arranged in an alphabetical order and they indicate the areas, which theproduct or service can be attributed to.The definition of the class of the product or service according to the ICGSIf you file an application for the registration of a trademark to the Federal Executive Authority, accordingto Subparagraph 3 of Paragraph 3 of Article 1492 of the Civil Code of the Russian Federation, the holderof the designation must include the list of the products grouped according to the ICGS classes in the textof the application. If the applicant does not specify the category, the application will be rejected byRospatent. The holder of the means of individualization is entitled to specify any number of the classes. Itis important to bear in mind that the amount of the state fee paid will depend on the number of the classesspecified.For a correct description of the list, it is necessary first to find a general class by the Classification (forexample, class 2 of the ICGS), and then, if possible, to specify the individual products or servicescontained in the list. The explanation notes to each class are of great importance, including thedescription, the list of the subject matters assigned to this group and the list of the products or serviceswhich are not included in the specified class. In case if the class definition becomes difficult, the creatorsof the Classification advise to refer to section “General Remarks,” which is contained in the GeneralProvisions of the ICGS.The expediency of using the ICGSAccording to the WIPO information, the International Classification of Goods and Services is used inmore than 150 Offices worldwide. At the same time, 84 states are the direct members of the NiceAgreement 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 useof the ICGS allows the applicant to check the uniqueness of the designation in comparison with thealready registered means of individualization with respect to the selected products or services, and also tounderstand how likely obtaining a certificate is. Secondly, the availability of the unified classificationsimplifies the check of the designation at an examination stage, and, therefore, this allows reducing theperiod during which a decision on protectability of the trademark or service mark is made. The ICGSincludes an extensive list of the products and services, regularly added by the new subject mattersappearing at the conditions of a developing economy, which are distinguished with the trademarks. Theuse 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 filedBefore filing an application for the registration of a trademark or a service mark, the holder of thedesignation should examine the ICGS in order to clarify the list of the classes and products with respect towhich the designation is planned to be registered. As the analysis of the Classification shows, someproducts of the same type are in different classes, for example, “Electric Juicers” are assigned to class 7of the ICGS, and “Household Non-Electric Juicers” are included into class 21 of the ICGS. It isappropriate to include in the list even the products that the manufacturer plans to produce if themanufacturing 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 theprovisions of the current legislation, the identical trademarks shall not be registered to distinguish thehomogeneous products. This is due to the possibility of confusing the consumer as a result of using suchdesignations. At the same time, according to the Rospatent's Methodological Recommendations: “Theadopted International Classification of Goods and Services for the Purposes of the Registration of Marksdoes not affect the assessment of the homogeneity of the products and services.” 2 It is necessary toassume that such position of the Office is due to the presence of the homogeneous products in differentclasses.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 reducesignificantly the time and money costs for the registration of a trademark or a service mark.

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