Circular No. 351: Trade Mark Classification Systems for Goods and Services in Africa
As trade mark registration grants an exclusive right to use the mark (in other words a monopoly), the ambit of such monopoly must be restricted to a specific class of goods or services in most jurisdictions. In an attempt to ensure international uniformity in classifying such goods or services, the International Classification of Goods and Services for the Purposes of the Registration of Marks ("Nice Classification") was established by an Agreement concluded at the Nice Diplomatic Conference, on June 15, 1957.
Use of the Nice Classification is mandatory not only for the national registration of marks in countries party to the Nice Agreement, but also for the international registration of marks effected by the International Bureau of the World Intellectual Property Organisation ("WIPO"), under the Madrid Agreement Concerning the International Registration of Marks and under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, and for the registration of marks by the African Intellectual Property Organisation (OAPI), by the Benelux Trade Mark Office and by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). Changes in the Classification, in particular the transfer of goods and services between various classes is made from time to time.
Recent changes to the Nice Classification (the 8th Edition) introduced the most radical amendments to the classification system for many years namely the replacement of class 42 with classes 42, 43, 44 and 45.
The former class 42 covered "providing of food and drink; temporary accommodation; medical, hygienic and beauty care; veterinary and agricultural services; legal services; scientific and industrial research; computer programming; services that cannot be placed in other classes" and it has been replaced by the following classes:
- Class 42
Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.
- Class 43
Services for providing food and drink; temporary accommodation.
- Class 44
Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
- Class 45
Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.
South Africa has become the most recent African nation to adopt the latest amendments to the Nice Classification. These changes came into effect on 27 February 2002 and the re-classification of trade mark applications and registrations may be applied for at any time.
Unfortunately, these changes have not been so widely adopted across the remainder of the African continent. In fact, the continent still supports several classification systems, and there are a number of States that have no provision for the registration of service marks at all.
An overview is provided in the accompanying table from which it will be noted that:
- Gambia, Sierra Leone and Zanzibar - still follow the old British classification system (50 classes of goods and no provision for service marks). Until everything ground to a halt, Somalia had been using the former Italian system, which had 49 classes of goods. Class 49 was a miscellaneous class and a practice had evolved of classifying all services in that class. However, we fear that when Somalia re-enters the world of commerce, one may find that the Registry and its records have been totally destroyed and that it will require new legislation and with it, a new classification system.
- Burundi, Rwanda and Mauritius - still have no classification systems at all. Mauritius does not make provision for the registration of service marks. Whilst the laws in Burundi and Rwanda are silent on the point, the Registries have been accepting the registration of marks for both goods and services.
- Ghana, Malawi, Nigeria, Uganda and Zambia - use the Nice Classification but have no provisions for the registration of service marks. Although Libya uses the Nice Classification of goods it has its own system for the classification of services (classes 101 - 112).
This leaves a large number of jurisdictions in Africa that use the Nice Classification system of both goods and services, but few are in fact members of the Nice Agreement and there have been differing approaches to the adoption of the new service classes 42 - 45.
- Algeria, Malawi, Morocco, Mozambique and Tunisia plus two of the Member States of OAPI (Benin and Guinea) are members of the Nice Agreement. With the exception of Malawi, the remaining States and OAPI have adopted the latest changes.
- Of the countries that are not members of the Nice Agreement one finds that Botswana, Egypt, Kenya, Madagascar, St. Helena, South Africa, and Tanzania (Tanganyika) have adopted the latest changes.
We have not been able to determine the exact position in Tangier, as the separate registration system should soon disappear, once the new Moroccan IP law is brought into force. For the time being we believe the Registry will probably follow Morocco’s lead and adopt the new classes, if only to maintain consistency between the soon to be amalgamated registries.
The following States are not members of the Nice Agreement and have not adopted the new classes 42, 43, 44 and 45:
- Congo (Zaire),
The position in some of these countries is far from clear and may change at any time.
We are in the process of reviewing client portfolios and will be happy to provide further information pertaining to marks affected by recent changes to the International Classification.
To obtain a copy of the table accompanying this circular, please contact Marco van der Merwe
Spoor & Fisher Jersey