Registrar reclassifies goods following Nice Classification changes

Hong Kong
The ninth edition of the Nice Classification was recently revised. The 10th edition was published in June 2011 and came into force on January 1 2012. The number of classes of goods and services remains unchanged at 45, and the principles on which classification are based also remain unchanged. However, as some classes - most notably Class 9 - cover a broad range of goods, the classification of the goods and services falling within these classes has been further refined. 

"Apparatus for games" and "amusement apparatus" are no longer classified in Class 9 and now belong to Class 28, with some new indications added:
  • “Video game machines”;
  • “Portable games with liquid crystal displays"; and
  • "Arcade video game machines".
Descriptions such as "adapted for use with an external display or monitor" are no longer used.
In addition, certain dietary supplements, food additives and food stuffs have been revised. The revisions will affect Classes 1, 5, 29, 30 and 31.

A number of indications have been transferred from one class to another. The classes affected are Classes 5, 7, 9, 11, 13, 16, 17, 20, 21, 22, 25, 26, 30, 35 and 36.

Further, the class headings of Classes 5, 7, 31 and 32 have been amended, and explanatory notes have been added to Classes 1, 3, 5, 8, 9, 28, 29, 30, 31, 36, 38 and 39. General remarks have also been added regarding how "leasing services" and "franchising services" should be classified.

The above revisions and changes will affect the Hong Kong Trademarks Registry's cross-search list of identical or similar earlier registered trademarks and applications, used in the examination of new applications for registration in Classes 4, 5, 6, 7, 8, 9, 10, 16, 20, 21, 23, 26, 28, 29 and 36. The only classes where cross-search is not required are now Classes 2, 13, 15, 22 and 31.

Existing trademark registrations which are classified under the Trademarks Rules of the former Trademarks Ordinance (Cap 43) and the 9th edition of the Nice Classification will be reclassified by the registrar by sending reclassification notices to registered owners on renewal of their trademarks. After receiving the notices, the owners may make written objections within three months of the notices or extension thereof. If no objection is received, the reclassified registrations will be published in the IP Journal, subject to oppositions being filed within three months of the date of publication.

In general, the changes introduce clarity to some indications of goods and services which have always been regarded as vague and uncertain. This should benefit trademark owners in seeking protection, as well as in enforcing their rights.

Helen Tang, Wilkinson & Grist, Hong Kong

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