Anticipating 2021 - Changes to Nice 11
Changes to Nice 11 in 2021
The events of 2020 have reinforced that change is one of the only constants in our world. As 2021 approaches, we are hoping for positive change and looking forward to embracing the start of a new year.
In the trademark world, annual changes to the Nice 11 Classification have become the new normal. This multilateral treaty, originating in the 1930’s was changed relatively infrequently in its early years. However, WIPO now issues annual amendments to keep up with the accelerated rate of change and innovation and its impact on goods and services.
If you’re interested, take a look at our article, The Ghosts of Nice 11 - Past, Present and Future for a brief history of the Nice classification system and how it has evolved.
Changes to Nice 11 coming in 2021 - classes 35, 36, 41 and 43
As in previous years, the services classes see the most changes for 2021, largely to clarify and distinguish the terms used to describe specific services in these classes.
In the latest amendment, there are changes to two class headings, namely Classes 35 and 36, and significant changes to their explanatory notes.
Let’s take a look:
Class Heading changes - classes 35 and 36
There’s always been a close relationship between classes 35 (primarily business related services) and 36 (financial services). The changes to the class headings and the accompanying explanatory notes seek to distinguish them somewhat:
Class 35 Advertising; businessmanagement, organizationand administration; business administration; office functions
Class 36Financial, monetary and banking services; insurance services; financial affairs; monetary affairs; real estate affairs
The class 35 heading will be expanded to include not only business administration but also business management and organization.
In the class 36 heading, the slightly outdated terms “financial affairs” and “monetary affairs” will be replaced with “financial, monetary and banking services.”
Changes to explanatory notes - classes 35, 36, 41 and 43
Class 35 covers services provided in relation to management, operations, commercial functions or office administration of a business. Over the last 20 years or so, class 35 has also come to cover retail services (which must surely be one of the most popular services in class and begs the question why “retail” has not been added to the class heading).
The explanatory notes have been amended to specifically mention a number of services that are within class, and others that are not.
This Class includes, in particular:
the bringing together, for the benefit of others, of a variety of goods, (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets, through vending machines, mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes;
advertising, marketing and promotional services, for example, distribution of samples, development of advertising concepts, writing and publication of publicity texts;
shop window dressing;
public relations services;
production of teleshopping programmes;
organization of trade fairs and exhibitions for commercial or advertising purposes;
search engine optimization for sales promotion;
commercial assistance services, for example, personnel recruitment, negotiation of business contracts for others, cost price analysis, import-export agency services;
administration services relating to business transactions and financial records, for example, book-keeping, drawing up of statements of accounts, business and financial auditing, business appraisals, tax preparation and filing services;
commercial administration of the licensing of the goods and services of others;
services consisting of the registration, transcription, composition, compilation or systematization of written communications and registrations, and also the compilation of mathematical or statistical data;
office functions, for example, appointment scheduling and reminder services, data search in computer files for others, computerized file management, telephone switchboard services.
services of advertising agencies and services such as the distribution of prospectuses, directly or through the post, or the distribution of samples. This Class may refer to advertising in connection with other services, such as those concerning bank loans or advertising by radio.
This Class does not include, in particular:
services such as evaluations and reports of engineers which do not directly refer to the working or management of affairs in a commercial or industrial enterprise (consult the Alphabetical List of Services).
financial services, for example, financial analysis, financial management, financial sponsorship (Cl. 36);
real estate management (Cl. 36);
stock brokerage services (Cl. 36);
transportation logistics (Cl. 39);
energy auditing (Cl. 42);
graphic design of promotional materials (Cl. 42);
legal services in relation to the negotiation of contracts for others (Cl. 45);
licensing of intellectual property, legal administration of licences, copyright management (Cl. 45);
registration of domain names (Cl. 45).
In the explanatory notes for Class 36, more detailed descriptions of the financial, banking and real estate services covered have been provided, along with some guidance on when similar services fall into other classes.
Class 36 includes mainly services rendered in financial and monetary affairs and services rendered in relation to insurance contracts of all kinds.relating to banking and other financial transactions, financial valuation services, as well as insurance and real estate activities.
This Class includes, in particular:
services relating to financial or monetary affairs comprise the following:
services of all the banking establishments, or institutions connected with them such as exchange brokers or clearing services;
services of credit institutions other than banks such as co-operative credit associations, individual financial companies, lenders, etc.;
services of “investment trusts,” of holding companies;
services of brokers dealing in shares and property;
services connected with monetary affairs vouched for by trustees;
services rendered in connection with the issue of travellers’ cheques and letters of credit;
hire- or lease-purchase financing;
– services of realty administrators of buildings, i.e., services of letting or valuation, or financing;
services dealing with insurance such as services rendered by agents or brokers engaged in insurance, services rendered to insured, and insurance underwriting services.
financial transaction and payment services, for example, exchanging money, electronic funds transfer, processing of credit card and debit card payments, issuance of travellers’ cheques;
financial management and research;
financial appraisals, for example, jewellery, art and real estate appraisal, repair costs evaluation;
cheque verification;
financing and credit services, for example, loans, issuance of credit cards, hire- or lease-purchase financing;
crowdfunding;
safe deposit services;
financial sponsorship;
real estate agency services, real estate management, rental of apartments, rent collection;
insurance underwriting, actuarial services;
brokerage services, for example, securities, insurance and real estate brokerage, brokerage of carbon credits, pawnbrokerage.
This Class does not include, in particular:
administration services relating to business transactions and financial records, for example, book-keeping, drawing up of statements of accounts, business and financial auditing, business appraisals, tax preparation and filing services (Cl. 35);
sponsorship search, promotion of goods and services through sponsorship of sports events (Cl. 35);
cash replenishment of automated teller machines (Cl. 39);
freight brokerage, transport brokerage (Cl. 39);
quality evaluation of wool and standing timber (Cl. 42).
A significant number of services have been included in the updated explanatory notes for Class 41, highlighting how diverse the “entertainment class” has become.
Class 41 coversincludes mainly services rendered by persons or institutions in the development of the mental faculties of persons or animals, as well as services intended to entertain or to engage the attention.consisting of all forms of education or training, services having the basic aim of the entertainment, amusement or recreation of people, as well as the presentation of works of visual art or literature to the public for cultural or educational purposes.
This Class includes, in particular:
services consisting of all forms of education of persons or training of animals;
– services having the basic aim of the entertainment, amusement or recreation of people;
– presentation of works of visual art or literature to the public for cultural or educational purposes.
organization of exhibitions for cultural or educational purposes, arranging and conducting of conferences, congresses and symposiums;
translation and language interpretation services;
publication of books and texts, other than publicity texts;
news reporters services, photographic reporting;
photography;
film direction and production services, other than for advertising films;
cultural, educational or entertainment services provided by amusement parks, circuses, zoos, art galleries and museums;
sports and fitness training services;
training of animals;
online gaming services;
gambling services, organization of lotteries;
ticket reservation and booking services for entertainment, educational and sporting events;
certain writing services, for example, screenplay writing, songwriting.
This Class does not include, in particular:
organization of exhibitions for commercial or advertising purposes (Cl. 35);
writing and publication of publicity texts (Cl. 35);
news agency services (Cl. 38);
radio and television broadcasting (Cl. 38);
videoconferencing services (Cl. 38);
technical writing (Cl. 42);
day nursery and crèche services (Cl. 43);
health spa services (Cl. 44);
planning and arranging wedding ceremonies (Cl. 45).
Class 43’s explanatory notes now include a host of new examples of some of the services covered by this class. There are a couple of interesting distinctions - while bar services and hookah lounge services fall into class 43, nightclub (or as they’re referred to here “discotheque”) services fall into class 41. Also, retirement home services are in this class, but the very closely related “rest and convalescent homes” are covered by class 44.
Class 43 covers mainly services provided by persons or establishments whose aim is to preparein relation to the preparation of food and drink for consumption, as well asand servicesfor provided to obtain bed and board in hotels, boarding houses or other establishments providing temporary accommodation.
This Class includes, in particular:
reservation services for travellers’ accommodation, particularly through travel agencies or brokers;temporary accommodation reservations, for example, hotel reservations;
boarding for animals;
rental of meeting rooms, tents and transportable buildings;
retirement home services;
day-nursery and crèche services;
decorating of food, food sculpting;
rental of cooking apparatus;
rental of chairs, tables, table linen, glassware;
hookah lounge services;
personal chef services.
This Class does not include, in particular:
rental services for real estate such as houses, flats, etc., for permanent use (Cl. 36);
arranging travel by tourist agencies (Cl. 39);
preservation services for food and drink (Cl. 40);
discotheque services (Cl. 41);
boarding schools (Cl. 41);
rest and convalescent homes (Cl. 44).