Adoption of NICE 11th EDITION and reclassification existing services under Class 42
11th edition of Nice Classification – version 2018 has been adopted by OAPI trademarks office as of 01/01/2018 and all new trademark applications filed henceforth should abide by this classification. Still, however, the trademark office has accepted the use of 11th edition of the Nice Classification -version 2017 up till 31 March 2018. As of April 1, 2018, the trademarks office has enforced the adaptation of 11th edition of the Nice Classification – version 2018. The official circular clarifying aforementioned matter can be referred to for confirmation. In previous editions of the classification system, class 42 included services such as “providing of food and drink; temporary accommodation; medical, hygienic and beauty care; veterinary and agricultural services; legal services; scientific and industrial research; computer programming; services that cannot be classified in other classes”. However, since the adoption of the above most recent edition, these services are re-classified into classes 42 to 45. As for existing registrations in class 42, the registrar has put forward the following options to be implemented only at the time of renewal, taking into account the availability of the new classes 43, 44 and 45.
Extending existing registrations in class 42 to add classes 43, 44 and 45 respectively or any of these classes will not incur additional cost except the fees for renewal of the extended class (es) at time of renewal:
- Official renewal fee in one class (42): USD 925
- Official fees for each additional class: USD 190
The renewal certificate issued after the re-classified service classes will bear the same registration number and filing date in the accordance to the initial trademark application.
If registrant does not wish to maintain part of the services initially filed under class 42, the registrant will have to apply for renewal and the same will be published in class 42. Simultaneously the owner ought to submit a recordal of partial abandonment of services previously covered in class 42 and currently re-classified in either 43….or more.
- Official fees for the restriction/partial abandonment is USD 490 per trademark
Re-classification request has additional follow up procedures such as examination and publication. However, after re-classification the trademark will not be faced with a rejection for the new classes due to relative grounds of identical or closely similar trademarks filed after 1 April 2018 in any of these classes as such rights are already in force. Also, for new trademark being filed under classes 43, 44, 45 a prior right search will not be undertaken for existing trademarks under class 42. The trademark for the new re-classified classes will not be open to third-party oppositions at the time of publication of renewal since such application is concerning only renewal of rights of the prior registration (with the same registration number and application date). It is not considered as a new registration. On the other hand, the trademark holder may object to the registration of similar marks filed in classes 43, 44 or 45 after 1 April 2018 on the basis of his prior right. Extension request cannot be undertaken as a separate action and must await the renewal date to proceed.
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