Nice Classification adopted in its entirety

With effect from May 20 2010, the Indian Trademark Rules on the classification of goods and services have been amended to provide for 45 classes, so as to conform with the Nice Classification. In order to achieve this, the former Class 42 has been sub-divided into Classes 42, 43, 44 and 45.

Before the amendment, the rules on the classification of goods and services provided for only 42 classes. Therefore, services included in Class 43 of the Nice Classification, for example, had to be applied for in Class 42 in India. This anomaly has now been removed and, with regard to future applications, the classification will follow international norms. Another advantage is that the new classification represents a step towards India's accession to the Madrid System. 
However, even though the former Class 42 has been sub-divided into four classes, anomalies remain in earlier applications covering Class 42 services. For example, several pending applications covering Class 42 services also cover some, or all, of the services falling within Classes 43, 44 and 45 of the Nice Classification. The rules do not clarify how these applications should be treated, and the following issues arise:

  • Will these applications continue to be treated as Class 42 applications on the basis that, on the date of the application, the Indian rules provided only for 42 classes?
  • Will the trademark registry require that the applicants sub-divide pending applications so as to conform with the new classification?
  • If so, will the registry require the payment of additional registration fees, since such fees are calculated on class-by-class basis?
Similar issues may arise in opposition proceedings relating to pending Class 42 applications.
Mustafa Safiyuddin and Shailendra Bhandare, Legasis Partners, Mumbai

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