Trademark searches may be more expensive and less reliable under new practice

The Slovenian IP Office has adopted a new practice whereby it does not allow the reclassification of goods and services covered by a trademark registration. Reclassification was possible in the past, and was usually requested at the time of renewal of a registration, in cases where the Nice Classification had been amended since the trademark was registered or last renewed, and certain goods/services had been moved to another class.

In 2002 the Nice Classification was amended and Classes 43 to 45 were introduced; restaurant services no longer fell within Class 42, but within Class 43.

In the present case, the applicant requested that the IP Office reclassify the restaurant services covered by its trademark from Class 42 to Class 43. However, the IP Office refused the reclassification request.

In the decision, the IP Office explained that the reclassification was not necessary because it would not affect the content of the IP right itself or the scope of protection. The Nice Classification is a technical and administrative tool that is intended only for classification purposes and to have a better overview of the goods and services protected by a trademark. The IP Office noted that the scope of protection of a trademark is determined by the actual list of goods and services included in the registration, and not by the class in which they fall.

While this is true, the purpose of reclassification is not to change the scope of protection, but to make the records of the IP Office more reliable, to make searching more efficient and to help avoid potential conflicts.

The new practice will make searching in Slovenia more expensive, because it will be necessary to cover not only the class which is relevant under the current edition of the Nice Classification, but also the relevant class(es) under previous editions of classification. In the long run, this will make searching less reliable, because it will be difficult to keep track of all the changes in the Nice Classification, and some classes might be inadvertently missed.

The decision of the IP Office may be challenged before the Administrative Court.

Gordana Pavlovic, Cabinet Pavlovic, Brussels and Belgrade

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