An owner or service provider can register a trademark in India under one of the “Trademark Classes” or “Trademark Categories”. NICE Classification is also known as ICGS (International Certification of Goods and Services).
We will discuss Trademark Classes in this blog and how they play a significant role in obtaining TM registrations in India. Find the trademark class details here.
Know the Concept of Trademark in India
Generally, a trademark entails the protection of a name, device, label, symbol, word, or color combination.
In addition to facilitating differentiation between the registered owner’s goods and others on the market, TM Registration has other benefits.
By registering a trademark, the owner can maintain the uniqueness of their goods and services. When a trademark is infringed, the owner has the right to sue the third party.
After successful trademark registration, the symbol “R” will be applied to the product or service. In addition to a 10-year validity period, it is also eligible for trademark renewal.
Governing Force for Trademarks
Trademarks are regulated by the Controller General of Patents, Designs, and Trademarks (CGPDT), while the Trademarks Act 1999 governs them.
Concept of Trademark Classes
Obtaining Trademark Registration falls under the category of Trademark Classes. NICE Classifications are used to define these classes. Additionally, there are 45 trademark classifications, of which 34 are referred to as TM Classes for Goods, and 11 are referred to as TM Classes for Services.
Currently, Trademark Classifications cover approximately 8000 products and services.
Significance of Trademark Classes
A summary of the significance of Trademark Classes is as follows:
Provides Guideline for Registering Trademarks in India;
Helps in Identifying the Trademark Infringers in India;
Concept of Trademark Search in India
Trademark Search or Trademark Public Search is the process of determining the correct Trademark Class for TM registration. Moreover, an applicant can use the Indian Trademark Registry Database (ITRD) to search for TMs.
A Trademark Public Search is used to determine whether a specific product or service is covered by Trademark Classification.
Concept of Trademark Description
In trademark descriptions, general indications appear on different kinds of goods and services. Product or service fields are basically represented by them.
Concept of NICE Classification
Classifications are based on a mechanism called NICE Classifications. A diplomatic conference agreement was signed on 15.06.1957, establishing NICE. Nevertheless, the said classification was revised in 1967 at the Stockholm Conference and again in 1977 at the Geneva Conference.
In addition, India signed the NICE Agreement on 07.09.2019 for the classification of goods and services, which is being used by the ITO (Indian Trademark Office).
In addition, the NICE Classification provides a broad heading referred to as “Class Header”. There is a clear indication of what goods and services each class covers in a class header.
Tools Available for Trademark Classification
In order to classify trademarks, the following tools can be used:
The Tool was provided by the World Intellectual Property Organization (WIPO);
Developed by the European Union Intellectual Property Office (EUIPO);
TM Classification, in our opinion, is a better tool than NICE Classification. According to the TMO (Trademark Office), this tool highlights goods and services that are not eligible for TM registration.
Procedure to Choose a Valid Trademark Class
Determine Between Goods and Services
Identifying whether the applicant provides goods or services is the first step. It is also possible to register a trademark for both goods and services.
Both Starbucks’ products and services have registered trademarks. The reason for this is that it offers a variety of coffees, as well as ground coffee, branded coffee beans, and coffee mugs.
Select a Valid Trademark Class
From the finalized Goods and Services classification, the applicant must choose a valid Trade Mark Class.
In the case that the functions of a good or service are not included in the class heading of the trademark classes. A good or service can be categorized based on its description.
An applicant can file a Trademark Application only for one class of goods or services. Applicants who want to register a trademark in more than one classification must submit multiple trademark applications.
Conduct Trademark Search
Last but not least, the applicant should conduct a trademark search based on the nature of the goods and services and not on their components.
Nevertheless, this process requires professional assistance, since if the applicant makes a mistake, classification will have to be re-started.
In the case of a search for Photography, Chemicals under Class 1, Computer and Scientific Devices under Class 9, and Education and Entertainment Services under Class 31 are displayed as relevant categories. Therefore, an applicant needs to consult an IPR expert.
Basics for the Trademark Classification of Goods
In order to classify goods based on trademarks, the following factors must be considered:
In general, products are categorized based on their uses and functions. In cases where a good’s usage or function is not indicated by a class, the owner will classify it based on its similarity to other finished goods in the alphabetical list.
The applicant can categorize the product based on its mode of operation or material used as the subsidiary criteria if no similarity can be found.
When a good serves multiple objectives, it will be categorized in all classes related to its purpose. In the absence of explicit functions, the criteria in (b) will apply.
Raw Materials are classified according to their components, whether unworked or semi-worked.
The product that intends to form a part of some other product is classified in the class of the product it intends to form a part of.
When a product is composed of more than one raw material, it will be classified based on the raw material that predominates.
Services Trademark Classification Basics
In order to classify services under the trademark system, the following factors should be considered:
As a general rule, services are classified based on the branches of activities specified in the Service Class Heading and Explanatory Notes.
In the absence of specific branches of activities, a service will be classified on the basis of its similarity to other services in the alphabetical list.
In rental services, the services offered using rental objects are categorized by class.
The class for consultation, advice, and information services corresponds to the subject matter of the services.
Trademark Class Mistakes and Their Consequences
If you choose the wrong trademark class, you will face the following consequences:
The trademark application will be rejected by the authorities;
No refund of the Registration Fees;
This individual will be infringing the rights of a registered trademark holder;
When the applicant obtains trademark registration in the wrong class, he/she cannot switch to the correct class. A new registration process will need to be initiated by the applicant.
The third party cannot be sued for trademark infringement.
Trademark Classes are clearly essential to the process of Trademark Registration after thorough discussion. As a result, seeking professional assistance is always advisable during both the trademark public search and trademark classification processes, since one wrong step can result in the rejection of the registration application.