The UK Intellectual Property Office (UK IPO) recently issued a press release regarding reclassification of trade mark specifications. For the purposes of trade mark registration, goods and services are classified under the Nice Classification system.
There have been periodic changes to the Nice Classification, most notably in 2002 with the addition of Classes 43, 44 and 45, which now contain services which were previously in Class 42. Since then it has been the practice of the UK IPO to allow proprietor's of UK national trade mark registrations in Class 42 to reclassify services now in the new classes. In practice, reclassification tends to occur once a registration has been renewed; the UK IPO sends a notice to the proprietor with a recommendation to reclassify (where appropriate). However, reclassification is not mandatory and it does not affect the scope of protection of a registration.
Change of practice
The UK IPO has now decided that with effect from 31 October 2011 it will no longer reclassify trade mark registrations, although it will still be possible to reclassify up to that date.
As reclassification does not affect the scope of protection of a registration, the UK IPO's decision will not affect the rights of trade mark proprietors that have not requested reclassification of services in Class 42.
However, the change of practice will have two main effects:
- When conducting UK trade mark clearance searches for services in Classes 43-45, it may also be necessary to search in Class 42 for earlier registrations that cover services that have not been reclassified.
- Part of the value of a trade mark registration is that it acts as a deterrent to third parties considering using identical or similar marks. Where a proprietor has not reclassified services previously found in Class 42 but now proper to Classes 43-45, third parties searching for similar marks in those classes may not be aware of a proprietor's earlier trade mark rights.
As stated above, trade mark proprietors may still request reclassification until 31 October 2011. We can assist UK trade mark registration proprietors with reclassifications until this date. We will also be glad to provide advice to those considering whether reclassification is right for them.
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