Classification goods and services into different classes for the purpose registration of trademarks enables systematic storage and retrieval of information.

However, in determining whether two or more trademarks are confusingly similar, it is necessary to examine the nature of the goods or services. It is not sufficient to merely rely on the class number under which those trademarks are registered.2 Although the classification system was established as an administrative tool, it has been playing an equally important role in evaluating the scope of rights and in determining infringement disputes.3

The Nice Classification & India

The Nice Classification, administered by WIPO, is an international classification system for the classification of goods and services for the purposes of registration of trademarks. It was established by a multilateral treaty called the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks,4 at the Nice Diplomatic Conference held on June 15, 1957.5 It is regularly updated to include changes and advances in technology and commercial practices.6 From January 1, 2012, the 10th edition of the Nice Classification was adopted by the World Intellectual Property Organization (WIPO) for the classification of goods and services for the purposes of registration of trade marks. 7.

The Nice Classification comprises Class Headings, Explanatory Notes and an Alphabetical List of Goods and Services. The Class Headings indicate, in a general manner, the nature of the goods or services contained in each of the classes. Each class has Explanatory Notes which describe the type of product or service included, or not included in a class. The Alphabetical List sets out specific items of goods and services in alphabetical order, along with the appropriate class.8

India has been following the Nice Classification system for trade mark registration. The Indian Trade Marks Rules 2002 were amended and Trade Mark (Amended) Rules, 2010 have come into force with effect from May 20, 2010, to adopt the Ninth Edition of Nice Classification in the Fourth Schedule. Additional service classes, namely, classes 43-45 have been added9

Classification systems employed in other countries

Most jurisdictions employ some sort of classification system for goods and services.10 The Nice Classification system is applied by around 150 countries in the world (member and non-members) and by four regional organizations, viz., the African Intellectual Property Organization (OAPI), the African Regional Intellectual Property Organization (ARIPO), the Benelux Organization for Intellectual Property (BOIP) and the European Union Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM).11.

However, even for jurisdictions which have adopted the Nice Classification, there are slight differences as to its actual interpretation and implementation. OHIM regards the general indications and other words of the International Classification (IC) as including not only the goods they describe literally, but also goods ‘directly related’ thereto. Hence, each item means more than the sum of its constituent words. Whereas, the UK Registry views the IC as simply a list of the goods claimed, and has no significance (for identical goods) beyond the literal meaning of its constituent words. Germany has regarded the class heading as exhaustive rather than exemplary or illustrative, the items within it being afforded broad ‘economic’ interpretations.12.

In several jurisdictions, the changeover from a national classification system to the international classification system has created problems in determining what is confusingly similar.13 Some jurisdictions (e.g. Japan) have added their own sub-classification system to the Nice Classification in order to facilitate in determining whether goods or services are confusingly similar to each other.14

Canada Intellectual Property Office (CIPO) does not follow the international classification system either in the filing or prosecution of trademark applications, or in oppositions or litigation when assessing confusion.15 No trademark classes are used in Canada. Instead, items associated with a trademark must be described in the application in “ordinary commercial terms” (their normal name).16 For example, Class 32 refers to “light beverages” which are enumerated as: “Beers, mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.” For Canadian filing purposes, the wares “non-alcoholic beverages” require further specification, for example carbonated drinks, colas, energy drinks, sports drinks, drinking water, fruit-based soft drinks, fruit juices, hot chocolate, milk, non-dairy soy, coffee or tea.17 Applicants pay only one filing fee, regardless of how many goods or services are claimed.18.

Its nature as a classification tool

The Nice Agreement on the International Classification of Goods and Services was intended to be a purely administrative tool for trademark offices without any legal significance. It does not provide a basis for concluding the similarity of goods and services. However, the classification system has greatly affected the adjudication of trademark rights due its analysis and application in the likelihood of confusion by trademark offices and courts.19

Taking into account the worldwide cultural differences, some wordings of the headings may prove to be vague and imprecise. Examiners face a tough time in grasping the market practices and established customs, and comparing it with the Nice Classification, which was never intended to be a tool for comparing goods and services in the first place. It is merely a classification tool which categorizes goods and services into different classes.20

These customs, especially trade practices, are dynamic and constantly changing. For instance, mobile phones nowadays combine many functions, from being a communication tool & camera to a word processor & internet browser. The examiner may sometimes come know about the customs in trade & practices only from the facts and evidence submitted by the parties.21. Therefore, it is necessary to base the findings on the realities of the marketplace, i.e. established customs in the relevant field of industry or commerce, and not solely on the classification system.22.

Basis of the Nice Classification

The Nice Classification has been structured on the basis of some common characteristics of goods/services. Many classes are organized according to their function, composition and/or purpose of use which may be relevant in the comparison of goods/services.23


• Class 1 comprises chemical goods primarily based on their chemical properties rather than on their application; while Class 3 is based on their application, viz., either for cleaning, personal hygiene or cosmetic purposes, although they can come under chemical products.

• Class 18 comprises goods made of leather; whereas Class 25 is based on use, viz., apparels, which may also include clothes made of leather.24

In many cases, however, the structure of the class headings is not uniform and does not follow the same logic. Some classes just have one general indication, covering nearly all the goods/services included in that class (Class 15 musical instruments; Class 38 telecommunications). While some other classes include many general indications, from being very broad to very specific. For example, the heading of Class 9 is extremely broad, ranging from scientific apparatus and instruments to fire-extinguishing apparatus.25

A few class headings contain general indications comprising another general indication, thus further specifying the category of goods to be included, e.g. though materials for dressing in Class 5 includes plasters, plaster has also been included in Class5.

In certain cases, a specific indication in a class heading explicitly clarifies that it does not belong to another class, even though it might have been included in another class in a broader sense.

Example: adhesive used in industry included in Class 1 (chemicals used in industry) distinguishes it from adhesives for stationery or household purposes in Class 16.26.

Similarity of goods/services

Generally, items may be considered to be similar if they have some common characteristics. In assessing the similarity of goods, all the relevant factors relating to those goods should be taken into account, including both their nature as well as the commercial perspective (intended purpose, method of use, and whether there is any connection between them)


• Pharmaceutical preparations (in the form of creams) included Class 5 can also be included in Class 3 as cosmetics (in the form of creams).

• Chemical substances for preserving foodstuffs in Class 1, may also comprise vinegar included Class 30

• Playing cards in Class 16, is similar to Games and play things in Class 28

Textile goods (Class 24) versus clothing (Class 25)

The main similarity between textile goods in Class 24 and clothing in Class 25 is that they are made of textile material. However, they serve completely different purposes and their method of use is different. Textile goods are just fabrics used for household purposes and decorations, whereas clothing is a covering designed to be worn on a person's body and is the finished textile product (e.g. ready-made garments). Though their use may appear to be dissimilar, they are confusingly similar with regard to their use in different cultures around the world.


• A “Sari”, being a long piece of cloth with no sewing or stitching, would be classified by most countries as a type of textile good under Class 24. In India, however, it is used as a clothing (ready-to-wear garment) and can therefore be classified under Class 25

Leather goods (Class 18) versus clothing (Class 25)

The broad category of goods made of leather and imitations of leather in Class 18 includes goods such as (hand) bags, wallets, purses, etc. These goods are related to (and are therefore similar to) articles of clothing, headgear and footwear in Class 25, since the consumers are likely to consider them as complementary accessories to articles of clothing, headgear or footwear. Many times they are sold in the same retail outlets.27.

Changes in the classification of goods/services

Every revision of Nice Classification brings about changes in the wording of headings as well as transfer of goods/services between various classes. Thus for a contested mark, the classification of goods and/or services must be interpreted according to the edition of the Nice Classification at its moment of filing.


• Legal services were transferred from Class 42 to Class 45 in the 9th edition of the Nice Classification, even though the nature of these services did not change.28.

Likelihood of confusion

Goods or services listed in the same class may not necessarily indicate similarity.29


• Cutlery is dissimilar to razors (Class 8)

• Live animals are dissimilar to flowers (Class 31)

• Advertising is dissimilar to office functions (Class 35)

Even if specific goods/services fall under the same general indication of a class heading, it might not make them similar


• Cars and bicycles (Class 12) - although both fall under vehicles in Class 12, are not considered similar.

Goods or services listed in different classes might not necessarily be dissimilar.



• Meat extracts (Class 29) are similar to spices (Class 30).

• Travel arrangement (Class 39) is similar to providing temporary accommodation (Class 43).30

• Class 9 includes computers but does not specifically list computer programs or any related term (included in Class 42). OHIM’s ‘class-heading-covers-all’ view in UK practice would treat computer programs as similar goods to computers, thus creating a likelihood of confusion.31.

[The Office for Harmonization in the Internal Market (OHIM) is the official trade marks and designs office of the European Union. OHIM administers the Community Trade Mark (CTM), introduced in 1996 to cover the whole of the European Union and is valid in all 27 Member States.]32

Likelihood of confusion survey

The ‘Proof of Confusion Subcommittee’, of the Enforcement Committee of International Trademark Association (INTA), undertook a survey to assess the extent to which classification of goods and services is taken into consideration as part of a likelihood of confusion analysis by trademark offices and courts. The survey covered selected jurisdictions of each continent (Germany, United Kingdom, European Union, France, Italy, Russia, United States, Brazil, Australia, South Korea, India, Malaysia and Singapore). The key findings of this survey relating to the issue of confusion analysis are available on the INTA website: “Use of Classification in Likelihood of Confusion Analysis”

The survey revealed that the classification system is not consistent in all countries and there is no defined standard for classification of goods and services. There is a high probability that goods and services which are actually identical or similar, but classified under different classes, may not be regarded as identical or similar. The Proof of Confusion Subcommittee recommended that the classification system should not be taken into consideration for determining the likelihood of confusion analysis by trademark offices and courts.34

Indian scenario for classification of goods/services

In the Indian context, the Nice Classification system seems to be inadequate in classifying certain goods which because of their particular indigenous use, might cause confusion or result in erroneous classification. In order to accommodate such variant use, the current classification system needs to be modified/extended to make it more specific for India. Some typical Indian goods, which cause confusion about the class they belong to, need to be included in the classification system.


• A “Sari” or “Dhoti”, which is used as an apparel in India may be classified under Class 25 (clothing), but it may also be classified under Class 24 (textiles and textile goods)

• “Mukhwasa”, which is eaten as a mouth freshener or as an after-meal snack or digestive aid may be classified under Class 30 (condiments), but it may also be classified under Class 31 (seeds)

• “Rasagolla”, which is eaten as a sweet may be classified under Class 30 (confectionery), but it may also be classified under Class 29 (milk and milk products)

• “Chakli”, which is eaten as a snack may be classified under Class 30 (flour and preparations), but it may also be classified under Class 29

• “Chikki”, which is eaten as a sweet may be classified under Class 30 (confectionery), but it may also be classified under Class 29

• “Bidi”, which is used as a cheap cigarette may be classified under Class 34 or 31

• “Datoon”, which is the stem of a Neem tree and used as a tooth brush, may be classified under Class 3, 21 or 31

• An “Angeethi”, which is used as a heating device for personal warmth may be classified under Class 11 or 21

• “Bindi”, which is used as a fashion accessory may be classified under Class 3 or 25


The Nice Classification is mainly an administrative tool and cannot be conclusively relied upon for comparing the similarity or dissimilarity of goods and services. Similar goods/services may be classified in different classes, whereas dissimilar goods/services may fall within the same class. Therefore, before comparing specific contested items, all the different contributing factors should also be taken into account, and not just the class numbers under which they are classified.35

A more comprehensive and India specific version of the classification system needs to be adopted which is more suitable for the Indian goods and their usage. Every class needs to be expanded to include extensive examples of such goods.

A search tool incorporating various such factors and a corresponding database would greatly support examiners for the assessment of the similarity of goods and services. It would also bring about consistency in their decisions on the assessment of similarity of goods and services.36

Taken From 
Classification%20and%20 Introduction%20of%20Classes%2043%20to%2045%20.mspx
ConfusionAnalysis.aspx 20

ConfusionAnalysis.aspx 34Ibid
chapter_2_comparison_of_g_and_s.pdf 36Ibid


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