JURISDICTION REPORT: INDIA
INDIA BRINGS TRADEMARK RULES UP TO DATE
Manoj Singh Singh & Associates
Two amendments to India’s Trade Marks Rules, 2002 were made by way of notification dated May 20, 2010.
Te classification of goods and services under schedule IV of the Trade Marks Rule, 2002, is amended to include the following new classes:
Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and soſtware.
Class 43: Services for providing food and drink; temporary accommodation.
Class 44: Medical services, veterinary services, hygienic and beauty care for human beings or animals; agriculture. Horticulture and forestry services.
Class 45: Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.
Prior to these provisions, the classification of goods and services under Indian Trade Marks laws was based upon the 8th edition of the NICE Classification of Goods and Services, which listed 42 classes of goods. Since the addition of the new classes, India has followed the 9th edition of NICE. In the past, services falling under NICE classes 43 to 45 were applied in India under class 42 itself; this led to confusion in claiming priority in India. Te same was true for Indian trademarks filed in a convention country claiming Indian priority. Te current amendment will curb this problem.
Te Registrar of Trademarks issued a notice on August 23, 2010, confirming amendments to trademark applications and registrations in accordance with the new classification. Trademarks already registered or published in class 42 shall be deemed to have been validly made irrespective of whether the services covered by the registration fall in any of the classes 42 to 45. However, this does not preclude a proprietor filing a request in Form TM-40 to convert the registration into the appropriate class. Te renewal of such marks will be made in the same class and will provide the same remedies, under the act, as if it had been made in the relevant classes.
Where the examiner has objected to an application, or has yet to examine it, the examiner will notify the applicant of the correct classes following the amendment. It is for the applicant to decide either to divide the application into different applications as per the new classes or to restrict the application to a single class by deleting the services falling in other classes. If this happens, the priority date of the application will remain the same.
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Te other significant amendment was made by adding a proviso to sub-rule (3) of rule 62:
“provided that if Registrar is satisfied with the claim of the registered proprietor supported by evidence that the certificate of registration issued under sub-rule(1) has not been received by the registered proprietor, he may issue duplicate or copy of the certificate of registration without any further payment of fee:
Provided further that, no such duplicate or copy of certificate of registration shall be issued where such request is received aſter the expiry of the time limit for renewal of registration and restoration of the registered trademark”.
Tis amendment deals with situations where a trademark is registered at the Trade Marks Office, but the Certificate of Registration does not reach the applicant for any reason. Before this amendment, the applicant had no option but to request a duplicate certificate and pay an additional fee; now, the registrar may issue a duplicate certificate without any additional charges, at his discretion. To get the certificate under this proviso, the applicant needs to apply along with supporting evidence to the satisfaction of the registrar. It also provides that no certificate can be issued when the request is received aſter the expiry of the time limit for renewal of registration and restoration of the registered trademark.
Manoj K. Singh is managing partner at Singh & Associates. He can be contacted at:
manoj@singhassociates.in
World Intellectual Property Review September/October 2010 83
“ TRADEMARKS ALREADY REGISTERED OR PUBLISHED IN CLASS 42 SHALL BE DEEMED TO HAVE BEEN VALIDLY MADE IRRESPECTIVE OF WHETHER THE SERVICES COVERED BY THE REGISTRATION FALL IN ANY OF THE CLASSES 42 TO 45.”
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