WIPO recently published Examination Guidelines Concerning the Classification of Goods and Services in International Applications. According to WIPO the document serves as a guide to the goods and services examination principles applied by its trademark examiners.
Every international trademark application filed through WIPO’s Madrid System must include a list of the goods and services covered by your mark. Your list should be clear and concise, and must follow specific rules on how to categorize (or “classify”) each item—in short, it must comply with the principles of the International Classification of Goods and Services or “Nice Classification.” If these requirements are not met, your application will not pass examination and an “irregularity” notice will be issued.
The Classification Guidelines seek to provide a better understanding of the classification principles applied, and minimize the risk of errors. WIPO has published the Classification Guidelines in English, French and Spanish, dividing the guidelines into three sections.
Section 1 provides general information on the Madrid System and the Nice Classification, while Section 2 outlines the classification principles applied by WIPO. Practical information and formatting guidelines are provided in Section 3.
The Classification Guidelines also provide guidance on classifying raw materials, components (parts), and cases (e.g. for smartphones) under sections 2.2(c) – (f), as well as specific rules for the following goods and services: electronic games and game software, low-alcohol beverages or wines, filters and filtering materials, valves, kits, parts and fittings (or accessories), manufacturing of goods, association services, wholesale and retail services, and repair services. Further details can be found in Section 2.6 of the document.
The Classification Guidelines clarify WIPO’s position on the use of proprietary names in the list of goods and services (Section 2.7), as well as the application of certain common expressions (Section 2.6).
According to WIPO,it will accept words intended to specify or limit the scope of your trademark registration—words like “in particular”, “especially”, “including”, “i.e.” or “namely”—as long as they are followed by the names of specific goods or services.
On the other hand, WIPO will not accept broad terms (such as “and the like” or “etc.”) that prevent your products or services from being clearly identified. Expressions like “all goods”, “all other services”, or “all products other than those in Class [X]” are generally considered too vague and will not be accepted.
Section 3 of the Classification Guidelines addresses common formatting issues, such as punctuation, brackets, the use of capital letters, special characters, and plural forms, and the acceptability of abbreviations and acronyms.