The new edition of the Nice Classification will include blockchain-related goods and services

WIPO has announced the new 12th edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks which will come into force on 01.01.2023.

What is exciting about this addition is the entrance of new types of goods and services and in particular such related to blockchain technologies.

According to the IPKat blog, the following amendments and additions were made in the upcoming edition of the classification:

In Class 9:

• New goods: “downloadable digital files authenticated by non-fungible tokens [NFTs]”, “computer network routers”, “portable document scanners”, “cases for smartphones incorporating a keyboard”.
• Amendment of the goods: “downloadable computer software for managing cyptocurrency transactions using blockchain technology” to “downloadable computer software for managing crypto asset transactions using blockchain technology”. 

In Class 42:

• Amendment of the services: “information technology [IT] consultancy” to “information technology [IT] support services [troubleshooting of software]”. 
• Amendment of the services: “cryptocurrency mining / cryptomining” to “mining of crypto assets / cryptomining”.  
• New services: “archaeological excavation”. 

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Will there be a shortage of available trademark names in the future?

James Nurton has published an interesting article for IPWatchdog that focuses our attention on one potential problem – a future trademark names depletion in the US and the EU.

According to professor Barton Beebe of NYU School of Law, 75% of English words in daily use are already registered as trademarks in the US as well as 55% of common surnames.

When it comes to the European Union, the situation is even more concerning. The professor’s data shows that 77% of the 20,000 most common English words are registered as trademarks.

In some classes of goods and services, the situation is even worse. For example, in class 25 – clothes, shoes, etc. 80% of common words are registered.

This trend is similar for other languages as French, Italian, Spanish.

According to Beebe, this can be a serious challenge for the trademark registration process in this century. The problem is that in the presence of “trademark crowding” the cost for registration of new trademarks will arise because the registration process will be accompanied by more oppositions from owners of earlier rights. And at some moment new registration can be really difficult.

There are different solutions to this problem. For instance, Patent Offices can do an examination of whether the applied-for trademarks are identical or similar to already registered signs for the same Nice classes. The EUIPO doesn’t do that whereas there are such checks in other jurisdictions. The Offices can start requiring for narrow specification of goods and services limiting the trademark protection scope. Another option is the requirement for trademark use to be examined by the Patent Offices ex officio. For example, you need to prove trademark use every 5 years in the US otherwise the Patent Office will cancel the trademark registration.

Apart from this procedure and legislation options, new technologies can be of help. One immediate example is blockchain. What is typical for this technology is the fact that it offers uniqueness. A blockchain record is immutable. This corresponds with one of the trademark characteristics, it is a source of trade origin. Trademarks are valid to the extent the mark is used in the market in the way how it is registered.

So blockchain can be helpful in the future but what I mean is not this technology to be used for proving trademark use of fight against counterfeit goods. Probably in the future, the blockchain coding signs can be trademarks themselves identified by consumers through different technical tools, for example.

This topic is quite interesting. What is for sure is the fact that trademark registration becomes more and more complex. There are millions of registered marks all around the world and every new application can face oppositions or cancelations by owners of already registered signs.

That’s why the application process must be preceded by a good trademark clearance search and analyses that to show all possible risks.

Alibaba tries to use blockchain to combat against IPRs infringements

WIPR reports about a new patent application filed by one of the biggest online retailer Alibaba in the US. This patent concerns a blockchain technology that allows government agencies or authorised parties to freeze accounts in Alibaba for which there are suspicious for an infringement of intellectual property rights.

This will facilitate the enforcement of IPRs which is a challenge in the digital era.

According to the article, Alibaba possesses more than 10% of all patents related to blockchain technology in the world for the last year. This technology is deemed as a potentially effective tool for combating against online IPRs infringements.

 

EUIPO announced an anti-counterfeiting blockchain competition

EUIPO announced the first-of-its-kind blockchain competition in Europe, which main goal is to find out new tools for flight against counterfeiting. The event will take place in Brussels for 4 days between 22 and 25 June 2018. The winners can take 100 000 Euro prize.

For more information here.