A Reflection on Nice Classification in 2022 and The Coming-Into Force of the 12th EditionA Reflection on Nice Classification in 2022 and The Coming-Into Force of the 12th Edition
At the 32nd Session of the Nice Committee of Experts it was confirmed that the 12th Edition of the Nice Classification will come into force this January 1, 2023.
This new Edition reflects changes to the Nice Classification Headings, a few transfers with respect to goods, but does not contain any transfers with respect to services. Most notably “dispensers” have been transferred and will now be classified according to material composition.
The 12th Edition is also the first new edition since Nice became a requirement for filing applications in Canada and must be used after January 1, 2023.
While the Canadian Intellectual Property Office should continue to process applications filed under the 11th Edition of Nice Classification under that particular edition, it will be interesting to see how the Office handles the coming-into-force of this new edition.
As we near the end of 2022, a review below of a few notable topics that generated significant discussion with the Committee of Experts, as well as in the global IP community:
The debate continues for the Nice Classification of cannabis products. (See: UnsrIPted 2019 Article: Canada’s Trademark Applications for Marijuana Products and Services Cause an International Stir at the Committee of Experts).
This year Denmark spearheaded the discussion with their belief that all cannabis products should be placed in Class 5 and encourages the Committee to agree on this approach. The support for this position stemmed from English dictionary definitions translated into Danish to indicate that cannabis is only a drug and, therefore, anything to do with cannabis should be placed in Class 5. Denmark voiced further concerns that use of the term “recreational” to distinguish from medical use could mean that any form of any other drug could also be referenced in this manner.
Denmark encourages companies that have cannabis as a feature of the product to avoid using reference to the “cannabis” if they do not want their products placed in Class 5. For example, “skin lotion containing cannabis” would be placed in Class 3 in Canada, but as this contains reference to cannabis, this would be placed in Class 5 in Denmark. The delegate stated that if the product is simply “skin lotion,” reference to “containing cannabis” is unnecessary as this is an ingredient in the product.
Delegates from France and the UK added that adding cannabis products to the Nice Alphabetical list sends a message to users that these prohibited goods may be acceptable in applications. Currently, the French Intellectual Property Office refuses applications that contains reference to cannabis unless they are for medical use.
The German delegate stated that it is difficult to include reference to these products in the Nice Alphabetical List as the legality of cannabis differs in many member states. Then stated that perhaps the distribution of these products should influence classification. The delegate gave the example that if the goods are only sold in pharmacies and drug stores then they should be in Class 5. However, Germany did not comment on recreational cannabis.
The USPTO position is well known and their classification philosophy is closely tied to the legality issue they face in the United States.
Israel, Australia and Switzerland continues to support the classification methodology of Canada by main purpose of the product. Surprisingly, Norway volunteered that they are of the opinion that they would also like to follow this approach.
Most delegates agree that if the US legalizes cannabis, this would change the landscape for many IPOs and it will be beneficial to determine an appropriate global approach to the classification of these goods.
- Non-fungible Tokens (NFTs)
The US took the lead in the presenting the proposal for non-fungible tokens (NFTs) indicating that this is a new term rapidly evolving in the marketplace. NFTs are data stored on a blockchain that represent digital items and authenticate their ownership. The proposal for “downloadable digital music files authenticated by non-fungible tokens [NFTs]” was to provide guidance regarding this new technology and clarify that the classification of NFTs is based on the item represented by the NFT.
It was resolved that the broader term “downloadable digital files authenticated by non-fungible tokens [NFTs]” would be added to the Nice Alphabetical List in Class 9.
As all “downloadable digital files” are placed in Class 9, despite how they are “authenticated,” this wording seemed to be a reasonable way to include reference to NFTs in the Nice Alphabetical List.
- War in Ukraine
Russia’s actions in the Ukraine influenced the tone of the session as United Nations delegates joined the Committee to make statements. The delegate from Ukraine stressed the importance of the Committee to aid the world in the effort to resume business as usual post-pandemic. However, business as usual is not possible for Ukraine, as most government employees are hiding throughout the country. The delegate formally asked WIPO to condemn Russian actions against Ukraine.
A number of UN delegates also took the floor to condemn Russian actions. The US UN delegate indicated that WIPO should not stand by as one member state not only seriously affects IP rights globally, but also causes catastrophic loss of life in another member state. The UK UN delegate indicated that as WIPO, as a UN body, is mandated to protect the body of IP rights holders and Russian actions are affecting the rights holders in Ukraine. The Canadian UN delegate indicated that Russia shattered peace and security in Europe and this was an attack on international laws including the UN charter and Russia must be held to account. Opinions of other UN delegates present and those of the Committee were also in agreement.
However, the Russian UN delegate suggested that countries were taking the opportunity to politicize the nature of the Committee of Experts and did not affect the substance of the current meeting nor the points outlined on the agenda.
As a number of global brands pulled out of Russia and the war in Ukraine continues, as cannabis and NFTs are still trending up, we are reminded how brands, trends and world events can alter the economic status of a nation and influence the world of intellectual property.