The World Intellectual Property Organization (WIPO) has made available to the general public the 13th edition of the Nice Classification, which will come into effect on January 1, 2026. Although it may seem like a technical change, its effects can be profound for the registration of trademarks and distinctive signs, especially in countries that, without being part of the Nice Agreement, apply this classification by legal mandate.
The reclassification of products and services for the registration of trademarks and other distinctive signs responds to the analysis carried out by the WIPO Committee of Experts on the titanic task of trying to classify all products and services available in commerce. An impossible task, considering the speed with which humanity creates new inventions or ways of providing services, but one that allows us to resolve and standardize the way in which distinctive signs are protected in the world.
The update of the classification may influence oppositions of new products, annotations on renewals, and be used as argumentation in legal conflicts. Therefore, every lawyer specializing in distinctive signs must go beyond the class number. With each new edition, it is essential to review the terminological and functional modifications to detect possible coincidences or overlaps with previously registered products or services. Below I share some interesting reclassifications:
Technical reclassification of products:
- Essential oils for industrial cosmetic use, move from Class 3 to 1.
- Lenses and contact lenses are moved from Class 9 to 10, aligning with their medical function.
- Buttercream moves from Class 29 (dairy products) to 30 (pastry products)
Terminological and functional adjustments:
- The term “multimedia” is added to downloadable digital files in Class 9, expanding its scope.
- Joke glasses (“novelty spectacles”) are expressly excluded from the new definition of optical devices in Class 10.
How does it impact Central America and the Dominican Republic?
Although countries such as Costa Rica,[1] El Salvador,[2] Guatemala,[3] Honduras,[4] Nicaragua,[5] Panama[6] and the Dominican Republic[7] are not part of the Nice Agreement, their respective laws directly recognize the application of current classifications. However, they are all very consistent in that the consideration of similarity is not exclusively limited to the Nice classification, but to the description of the protected product:
To this somewhat constant position, on the importance of the description of the protected product, interesting decisions are added that can give us a clue as to how the different industrial property offices would apply this type of change. A perfect example is provided by the cross-fertilization technique, looking at the jurisprudence of the Andean Court in the matter, whose competence extends to both countries that are part of the agreement and others that are not.
Decision 193-IP-2022 of the Court of Justice of the Andean Community states the criterion that the modification of the Nice Classifications does not require modifying pending applications or registrations already granted or in the process of renewal. This classification functions as an international reference system, but the effective protection of a trademark is based on the concrete description of the products or services, not on the assigned class number.
From this perspective, what is truly relevant for the owner of a trademark is the content of the petition, beyond the numerical class, which they could even be unaware of. Therefore, the analysis of the risk of confusion should not focus on formal coincidences between classes, but on the existence of a competitive or functional relationship between the products or services involved.
What Can You Do Now?
1. Audit your trademark portfolio: identify reclassified products.
2. Evaluate your pending applications: make sure they are aligned with the new edition.
3. Consult with your trademark attorney: a preventive strategy can avoid conflicts.
[1] Article 89 of the Law on Trademarks and other Distinctive Signs of Costa Rica
[2] Article 85 of Decree No. 868 of El Salvador –
[3] Article 164 of Decree 57-2000 of Guatemala–
[4] Article 45 of the Industrial Property Decree Law No. 12-99 of Honduras. The case of Honduras illustrates how the application of the Nice Classification in its legislation does not come from a direct adherence to the Nice Agreement, but from an obligation derived from the Free Trade Agreement between Central America, the Dominican Republic, and the United States (CAFTA-DR). Although the country has not signed the Agreement as such, the normative reference to the Nice Classification is incorporated by mandate of the trade agreement, which implies an indirect but binding application. Curiously, the Honduran legal article that regulates this matter affirms that the country is part of the Agreement, which evidences both the influence of the treaty and a possible legal inaccuracy in the normative wording
[5] Article 93 of Law No. 390 on Trademarks and other Distinctive Signs of Nicaragua
[6] Article 94 of Law 35 on Industrial Property of Panama
[7] Article 164 of Law 20-00 on Industrial Property of the Dominican Republic
