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Trade mark law: new Nice Classification to enter into force, including digital goods with NFTs

A new version of the Nice Classification will apply from 1 January 2023, with digital goods authenticated by non-fungible tokens (NFTs) listed separately for the first time.

According to experts, this will facilitate trade mark registration.

The  International Classification of Goods and Services for the Purpose of the Registration of Marks (Nice Classification) is an international classification system for trade mark applications. The European Union Intellectual Property Office (EUIPO) and numerous other national trade mark offices will apply the new version to every application for trade mark registration received from 1 January 2023 onwards.

The 12th edition of the Nice Classification includes a number of new goods and services, among them digital goods linked to NFTs. Specifically, "downloadable digital files authenticated by NFTS" have been added to the existing categories of goods in class 9. NFTs are a link in a blockchain. NFTs are therefore code sequences that - unlike bitcoins or other blockchain-based cryptocurrencies, for example - are not exchangeable and are therefore forgery-proof. They can thus be used, among other things, as a certificate of authenticity for digital works.

Dr Fabian Klein, trade mark law expert at Pinsent Masons, said that businesses should take the amendment as an opportunity to consider extending their trade mark protection to digital categories. "Digital assets will inevitably continue to grow in importance,” he said. “The protection offered by existing trademarks may quickly prove to be insufficient."

However, businesses will have to apply for new trade marks for the corresponding goods, even if they have already registered their trade mark in another class or for other goods or services. "Extended trade mark protection must always be applied for again when new goods or services come into focus. An extension of existing trade marks is not possible," said Dr Klein.

Dr Nils Rauer, intellectual property expert at Pinsent Masons, highlighted that there is a particular subtlety to the new regime: "Only the content linked to the NFT is included in the classification, not the NFT itself. So the code sequence itself cannot be registered, as it is neither a good nor a service. Protection as a computer program is also rightly to be denied to the individual token. In this respect, it is consistent to tie in the content linked to the NFT when expanding the classification."

The experts also said that the new version of the Nice Classification provides no answer as to what extent digital goods can be confused with their real counterparts from a trade mark law point of view – for example, whether the digital handbag is similar to the physical handbag. "At present, it is probably advisable to choose a rather broad digital goods list. In addition, the digital goods should further specify which contents are to be covered," said Dr Klein.

The Nice Classificationis divided into a total of 45 classes, 34 of which are of goods and 11 of services. Each class contains class headings, explanatory notes and an extensive list of various goods and service terms which are accepted by the trade mark offices as sufficiently defined and can therefore be used in the application procedure without any problems. In order to adapt the Nice Classification to current developments, it is revised regularly, with a new version every year and a new edition every five years.

But Dr Klein noted that the Nice Classification only serves as a guide for the trade mark offices. It is also possible to register trade marks for goods that do not appear in the list. In this case, however, greater effort and longer waiting times are to be expected, as the offices have to examine and assess the applications more extensively.

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