Clarification on new service classes issued

Following recent amendments to the India Trademarks Rule 2002, three new service classes were added to the Indian trademark classification of goods and services - that is, Classes 43 to 45. Previously, Class 42 was being treated as a residuary class, where applications for services that could not be classified in other classes were being accepted. The amendments to the Trademarks Rule required the applicant/registered proprietor to convert their applications and/or registered marks from Class 42 to the appropriate new class where the description of their services included those that would fall within Classes 43 to 45 (for further details please see "Nice Classification adopted in its entirety").  
The process of conversion was time bound and it was felt that, with its existing backlog, the Trademark Registry might not be equipped to handle this new work. Thus, after representation and meeting of stakeholders, the controller general of patents has issued a further notification clarifying certain points.
Marks registered in Class 42:
  • It is not mandatory for the registered proprietors to convert their registrations in Class 42 (that contain services falling within Classes 43 to 45) to the appropriate new class. However, they do have an option to do so.
  • Marks currently registered in Class 42 (that contain services falling within Classes 43 to 45) will be renewed in the same class.
  • Marks already published with a broad description of services will proceed to registration in Class 42.
Pending applications:
  • At the examination stage, the examiner will inform the applicant of the appropriate classes in which the services fall. The applicant will be required to either:
    • delete the services which do not fall within Class 42; or
    • file a request for division of the application into appropriate classes. The priority date in such cases will be maintained.
  • Where applications have been examined and the applicant has submitted its response, there will be re-examination to check for the classification of services. The applicant will then be required to take steps as outlined above.
Finally, all new applications filed in Classes 43, 44 and 45 will be examined taking into account registrations in Class 42.
At this stage, brand owners are not required to take any immediate action, since their rights will be protected on the basis of their earlier filings in Class 42. However, they may review the description of services in their pending applications to identify whether they need to apply for division of their application at an appropriate stage. Applicants who have been granted registration in Class 42 may want to consider converting the registration to an appropriate class. In cases where the description of services is not ‘broadly worded’, the brand owners may consider filing new applications to seek better coverage.
Ranjan Narula, Ranjan Narula Associates, Delhi 

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