At the core of any trade mark application, is the decision of what to claim, and which classes to cover. As a quick primer for non-practitioners, trade marks are, under the Nice Classification of Goods and Services, classified (or categorised) in one of 45 classes, covering a wide range of goods and services.
The importance of classification and specification preparation for any trade mark cannot be overstated. The specifications, or descriptions of the monopoly the trade mark is claiming, are paramount to determining the scope for enforcing registered trade mark rights; to attending on licensing and franchising arrangements; and up to, and including, whether or not a trade mark registration might survive an attack by a third party.
Governmental authorities, of course, recognise the importance of having an advanced, universal, and modern classification system in place, keeping in lock step with global economic and commercial development. As a prime example, recently, on 22 April 2021, Saudi Arabia formally acceded to the World Intellectual Property Organisation’s (WIPO) Nice Agreement Concerning the International Classification of Goods and Services (Nice Agreement), which will enter into force in the country on 22 July 2021.
Saudi Arabia’s accession to the Nice Agreement is undoubtedly a major step in advancing the country’s Vision 2030 goals, and allows Saudi Arabia’s representation at WIPO’s Committee of Experts on the Nice Agreement as a member country, elevating it from observer status. That is, Saudi Arabia now joins the 88 member countries, including its regional member countries, Bahrain, Egypt, and Jordan, in having equal status and voting rights in shaping the future development of the system, including on procedural issues, contributing to changes to the classification system, making recommendations to the other member countries, and contributing towards the application of the system by developing countries. In addition, Saudi Arabia may also now have a delegate representative at WIPO’s Assembly of the Special Union, which is reserved to countries having ratified or acceded to the Nice Agreement.
Saudi Arabia’s accession to the Nice Agreement is, from a wider perspective, part of the regional advancement of trade mark registration systems, such as that the United Arab Emirates will soon be joining WIPO’s Madrid System, which enables registration of a trade mark in up to 124 countries through a centralised system with uniform rules and procedures; it will move to publishing a bi-weekly trade mark gazette and accept the late filing of supporting documents for trade mark applications; and the United States Trade Representative Office recently removed the UAE from its watch list, due to the UAE’s Ministry of Health and Prevention resolving certain concerns pharmaceutical intellectual property protections. Certainly, with the importance trade marks play in the worldwide economy, it is heartening to see the regions major economies take stage in development of global trade mark practice, and in advancing their own protection systems, easing the defining of monopolies created by trade mark registrations, which might well exist indefinitely into the future.