IN THE UK OFFICE

Practice Points

The Restructuring of Class 42 Services

As of 1 January 2002, Class 42 of the International Classification Index is to be restructured and the services currently residing in that class will be redistributed among four classes, thus increasing the total number of classes in the Index from 42 to 45. For the UK Registry this will be the first classification restructuring since the enactment of the Trade Marks Act 1938 when the old UK national classification system of 50 goods classes was restructured into 34 classes of goods under the International Classification Index. Later, in 1984 when service marks were adopted in the UK, it became possible to protect trade marks in the eight service classes of the International Classification Index (Classes 35 to 42) but no restructuring of any existing classes was involved.

At the moment, Class 42 broadly covers four main identifiable service sectors which are:

• Legal services and professional services in the scientific, technical, computing and industrial research areas;

• Provision of food, drink and temporary accommodation;

• Medical, hygiene, beauty, veterinary and agricultural/horticultural services;

• Personal services and security services.

 

In addition, Class 42 acts as a miscellaneous class in which are placed services not readily falling within the above descriptions and which do not conform to the structure of any other of the service classes - for example the services of authenticating works of art and of knitting machine rental.

It is the above four readily identifiable divisions within the present Class 42 which will form the basis of the restructuring that will result in a revised Class 42 and new Classes 43, 44 and 45.

The new classes will cover the following service areas:

Class 42 - this revised class will concentrate on scientific, technological, industrial, computing and legal services. The Registry guidance note indicates that these will comprise services provided by members of professions such as chemists, physicists, computer specialists, scientists, lawyers, etc. but not medical and healthcare professionals whose services will fall within the scope of new Class 44 (see below). Examples of services to be covered by the revised Class 42 are scientific research, industrial design, design and development of computer hardware and software, legal services, technical design consultancy, materials testing, etc. Although the services of medical, veterinary and healthcare professionals will not fall in this revised Class 42, scientific research services for medical purposes will be correctly classified here.

Class 43 - this new class will cover services relating to the provision of food, drink and temporary accommodation so services such as those in the areas of restaurant, bar, café, hotel, catering, exhibition facilities, accommodation reservations, boarding kennels, holiday campsite accommodation and rental of portable buildings will fall into this new Class 43.

Class 44 - this new class will cover medical and veterinary services, hygiene and beauty care for humans and animals, and agriculture, horticulture and forestry services. Some typical services in this class would be those in the area of beauty salons, hospital patient care services, physiotherapy, treatment clinics, nursing homes, dentistry, manicuring, pet grooming, hairdressing, landscape gardening, tree surgery, flower arranging and plant nurseries. In the medical area, the difference between services in this class and Class 42 is that services in this class are provided to individuals in the form of treatment and treatment-related services, whereas Class 42 covers the scientific research and development services which will result in products and treatments for individuals.

Class 45 - this new class covers personal and social services for the needs of individuals and also includes security services for protection of individuals and property. This comprises a large variety of services and will include services in the area of escort agencies, personal introductions, undertakers, evening dress rental, security guards, detective and investigation agencies and consultancy for surveillance systems.

The Registry is to publish information on how the restructuring will be brought into effect and to date it has published a Notice on the practice that it is intending to apply in relation to certain practical matters when the new classification changes come into force on 1 January 2002.

Pending applications in Class 42 filed up to and including 31 December 2001 will continue to be classified according to the current Class 42 structure. Examination of those applications will proceed under the present classification regime, being the regime in force at the time they were filed. Once registered, the proprietor may request reclassification for services falling in the new Classes 43, 44 and 45 but it is not presently envisaged that there will be an automatic requirement to reclassify.

Applications filed on or after 1 January 2002 will be classified according to the new system for any services falling within the revised Class 42 and the new Classes 43, 44 and 45 and will be examined under the new classification regime.

For existing registrations, although the Registrar has the power to require reclassification, it is intended that, at least initially, reclassification will not be mandatory but will be left to the request of the proprietor. However, the Registry is keen to encourage reclassification and will provide assistance to any proprietor who wants to put their registration in order under the new system. Obviously reclassification will only be necessary if the services of an existing Class 42 registration fall under the scope of one of the new Classes 43, 44 or 45 - those whose entire specifications still fall within the revised Class 42 will not require reclassification.

For cross-searching purposes the Registry Notice issued in July 2001 merely states that applications filed in the new Classes 43, 44 and 45 will be cross-searched into Class 42 in order to identify conflicting marks filed before 1 January 2002. Although it has not been stated, there will presumably be some amendment to the cross-searching practice for other classes. For some time to come there will be many marks in Class 42 existing on the Register which have not been reclassified and which are protected for services falling within the three new classes. Therefore, new applications in classes which would normally have been cross-searched against a particular sector of Class 42 which is now the subject of one of the new classes will presumably need to be cross-searched against both Class 42 and the new class. For example, this should apply to new applications for wines in Class 33 normally cross-searched against restaurant and wine bar services in existing Class 42 which should need cross-searching against both Class 42 and new Class 43 under the new regime. Similarly, new applications for medical insurance services in Class 36 normally cross-searched against health care and dentistry in Class 42 should presumably need to be cross-searched against both Class 42 and new Class 44 under the new regime. However, cross-searching of applications for computer hardware and software in Class 9 against computer services in Class 42 should not change. Similar adjustments will also need to be borne in mind when infringement and registrability searches are conducted for marks to be used in relation to services falling within new Classes 43, 44 and 45 (but not revised Class 42).