12 March 2021
The Trade Marks Registry was established in the year 1940 in India and currently, it administers the Trademarks Act, 1999. The major objective of the Trade Marks Act, 1999 is to register trademarks applied for better protection of trademarks and also to prevent the usage of similar names under similar products/goods in the market. Registering a trademark preserves your name and goodwill in that territory. You can quickly familiarise your company with the target market with the trademark. Trademarks can be used to represent these components as graphics, text, term or combination. It can be used by the company's letterhead, service banners and merchandise, publicity brochures, tour cards and many more. In essence a trademark will act as a creation or acknowledgment of your company brand name and the services it provides or goods that are sold under the banner.
The product/services must be classified according to class or classes in order to submit the application for trademark protection to the Indian trademark office. The Indian Trademark offices are situated at Mumbai, Delhi, Kolkata, Chennai. The request for the trademark protection must be categorised in the relevant class. To that end, India follows the “Nice Classification” classification. Section 13 of the Trade Mark Act of 1999 states that the goods and services classified for the purposes of trade mark registration must be classified by the registrar in compliance with the international classification of goods and services.
The International (Nice) goods and services classification scheme is a system for registering trademarks developed by an Agreement signed at the Diplomatic Conference in Nice on 15 June 1957 and revised in Stockholm, 1967 and Geneva in 1977. The Indian trademark office used the new edition of the Nice Classification for the purposes of classification of products and services when reviewing a trademark application filed.
The Classes 1 to 34 categorise goods or products and the categories 35 to 45 categorise services. There are 45 classes under the classification of Nice. A large title called 'class header' is provided in the Nice Classification, which gives a simple description of the type of goods or services protected by each class and offerings under each class, based on these classes the registrant can file his or her trademark. It is always advisable to seek help from a trademark attorney in order to fit in the best suitable class for the product and services offered as a brand.
The value of the class is huge, as there is a compulsory need of determining if the class/class involved corresponds to one's business area, in relation to registration, prosecution and other legal proceedings concerning trademarks are carried out domestically. In essence, a class of trademarks reflects a particular category of goods or products. For instance, with reference to the classification it can be said that the explosives and firearms trademarks fall under the 13th class, while the financial and insurance services fall under the 36th class.
Here it should be noted that the registration of a trademark is only granted in the class/classes of goods or services which define or would define the particular company with reference to its brand and product. Furthermore, the selection of the required class for registration of trademarks basically involves extensive specialist expertise on the different distinct types of goods, products and services. For example, chemical compounds used in medical research are kept in the Class 1 trademark and adhesives are kept in Class 5 and 16 for different household and/or stationary purposes and the like. Sometimes the classification may vary depending on the extensiveness of the brand and the services one intends to provide under the said name. For example, Class 9 and 42 both deal with computer software and technological goods and services. In case you are a smartwatch builder you will fall under the category of class 9, while on the other hand if you are a service provider that deals with technology you will fall under the category of class 42.
The main aim of classification of trademark goods and services is to prepare a complete hierarchy which trademark is being used under which category and remove the confusion among the public. There is a very interesting case law which shows the importance of a classification.
Karnataka Co-Operative Milk Producers Federation has been producing and selling milk and milk products since years and has obtained registrations for their trademark “NANDINI” along with its variants in class 29 for milk and milk products, in English as well as several other languages, with a user date of 1985. Nandhini Deluxe, a restaurant chain, which is in the market since the year 1989, applied for registration of their trademark “NANDHINI”, in class 29 for meat, fish, poultry, meat extracts, preserves, dried and cooked fruits and vegetables, jellies, jams, eggs, milk and milk products, edible oils and fats, salad dressings etc.
The Supreme Court put together a detailed comparison on the trademarks in dispute and observed that the marks in question, “NANDHINI”/”NANDINI” of Nadhini Deluxe (Appellant) and Karnataka Co-Operative Milk Producers Federation (Respondent), respectively, cannot be claimed to be deceptively similar, and not amounting to any confusion among the general public. The Court held as follows: “Though there is a phonetic similarity insofar as the words “NANDHINI”/”NANDINI” are concerned, the trademark with logo adopted by the two parties are altogether different. The manner in which the Appellant has written “NANDHINI” in totally different font as compared to the style adopted by the respondent for its trademark “NANDINI”. Further added, that the marks although were under the same class did not serve the same purpose and were different from each other. The Court concluded that there is no provision of law which expressly prohibits registration of a trademark which is similar to an existing trademark and used for dissimilar goods, even when they fall under the same class. It was held that no person can have exclusive right or monopoly over the entire class of goods, especially when the trademark is not being used with respect to all the goods falling under the said class. The Supreme Court’s decision clearly construes that two visually distinct and different marks cannot be called deceptively similar especially when they are being used for different goods. Here is when the classification of the trademarks played an important role.
Class 1: is for Chemicals, Resins, and Plastics.
Class 2: is for Varnishes, Paints, and Anti-corrosion substances
Class 3: is for Cosmetics, Hair Oils and Lotions, and Cleaning Preparations
Class 4: is for Greases, Lubricants, and Fuels
Class 5: is for Pharmaceutical, Medical, and Sanitary Preparations
Class 6: is for Goods of Metals and Alloys, Ironmongery and Hardware Products
Class 7: is for Equipments and Machineries
Class 8: is for Hand-operated Devices and Tools
Class 9: is for Scientific, Electrical, and Technological Apparatus
Class 10: is for Medical and Surgical Instruments and Apparatus
Class 11: is for Heating, Cooling, Drying, and Refrigerating Apparatus
Class 12: is for Land, Air, and Water Vehicles
Class 13: is for Explosives and Firearms
Class 14: is for Precious Metals and Stones, and Jewellery Items
Class 15: is for Diverse Musical Instruments
Class 16: is for Paper Goods, Stationery Products, and Printed Materials
Class 17: is for Rubber and Plastic Goods and Products
Class 18: is for Products made of Hides and Leathers
Class 19: is for Various Non-Metallic Building Materials)
Class 20: is for Furniture, and other precious household Articles
Class 21: is for Kitchen Utensils, Household Appliances and Glass products
Class 22: is for Ropes and Cordage, Fibres, and Stuffing materials
Class 23: is for Threads and Yarns for uses in textiles
Class 24: is for Textiles and Fabrics
Class 25: is for Apparels and Clothing
Class 26: is for Fringes and Fancy Goods and Products
Class 27: is for Floor Coverings and Wall Hangings
Class 28: is for Toys, Sporting, and Sports Goods
Class 29: is for Meats and Processed Food Items
Class 30: is for Auxiliary Food and Beverage Items
Class 31: is for Agricultural and Horticultural Products
Class 32: is for Beers, Light Beverages, and Fruit Juices
Class 33: is for Wines and Spirits
Class 34: is for Tobacco Products and Smokers' Articles
Class 35: is for Advertising and Business Services
Class 36: is for Insurance and Financial Services
Class 37: is for Building, Construction and Repair Services
Class 38: is for Telecommunication Services
Class 39: is for Transportation and Storage Services
Class 40: is for Treatment of Materials Services
Class 41: is for Education and Entertainment Services
Class 42: is for Computer, Scientific and Legal Services
Class 43: is for Hotels and Restaurants Services
Class 44: is for Medical, Beauty, and Agricultural Services
Class 45: is for Personal and Social Services
For classifying products and services for trademark registration in India, the following online resources are very effective.
Well, during the process of trademark registration there is one of the fields where you need to specify about the trademark classes like the category of products and services for which the trademark will be used. The essentiality of a class under a trademark is that it defines “the mark” best to say, a trademark class specification is the one that determines the usage of the mark in the industry and act as an identifier to the mark. The classification is important for the Trademark registry to understand the market of the mark and the target audience it will set and what will the trademark represent itself for in establishing its worth in the market. This acts more like an identification mark for the registrant. It is utmost important to choose the right category and right classification for a trade name. Hence as time and again mentioned and repeated, a trademark attorney will act as the representative for the companies seeking advisory help on the brand value creation vide trademark registration.
REMEMBER: BRAND EQUITY IS CREATED VIDE TRADEMARK REGISTRATION AND THEN A PERFECT CLASSIFICATION FOLLOWS.
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