By Breon Gravatt,

Trade mark class 42 covers a range of services including those that do not fit within any other class. It is to be narrowed while three new classes are to be introduced.

Both the Intellectual Property Office of New Zealand ("IPONZ") and IP Australia have adopted these changes, which should take effect on 1 January 2002.

If you have service marks to file, you should consider doing so before the end of this year or risk having to file multiple applications in the new classes, at increased cost.

Background
New Zealand and Australia both use the Nice Classification for categorizing trade marks into various classes of goods and services, as do many other countries around the world. This classification system was established in 1957 and is periodically updated. The 8th edition is due to come into force on 1 January 2002.

The current edition of the Nice Classification has eight classes of service marks. The use of these has increased over time and now about forty percent of trade mark applications in each country are for service marks.

The range of services being provided in the community has also increased. This results in part, from advances in technology and in part from changes in society and the economy. Almost ten percent of trade mark applications filed in New Zealand and nearly eighteen percent of those filed in Australia are in class 42.

This increase in the use of service marks, in particular, class 42, has prompted the World Intellectual Property Organisation to refine and expand the classes of services.

The Changes
At present, Class 42 covers:

"providing of food and drink; temporary accommodation; medical, hygienic and beauty care; veterinary and agricultural services; legal services; scientific and industrial research; computer programming; services that cannot be placed in other classes."

This will be narrowed by moving many of these services to new classes and by eliminating the final catch-all, "services that cannot be placed in other classes".

The revised Class 42 will cover:

"scientific and technological services and research and design related thereto; industrial analysis and research services; design and development of computer hardware and software; and legal services."

The new classes are:

Class 43:

"services for providing food, drink and temporary accommodations".

Class 44:

"medical and veterinary services; hygienic and beauty care for humans and animals; and agricultural, horticultural and forestry services."

Class 45:

"personal and social services rendered by others to meet the needs of individuals and security services for the protection of property and individuals."

Introduction of the New Classes
IP Australia is implementing the changes on 1 January 2002.

The Intellectual Property Office of New Zealand ("IPONZ") intends implementing the changes on 7 January 2002, provided that necessary amendments to the Trade Mark Regulations are approved by Parliament in time for this to occur.

In both countries: