Alert 369 – India– Adoption of 9th Edition of Nice Classification and Introduction of Classes 43 to 45


India will now follow the Ninth Edition of the International Classification of Goods and Services after an important amendment was introduced to The Trade Mark Rules 2002 with effect from May 20, 2010. The amendment expands the Fourth Schedule to include 45 classes where there were previously 42 (Class 42 being treated as the residuary class). The notification can be accessed at http://ipindia.nic.in/tmr_new/tmr_act_rules/Notification_20May2010.pdf.

The classes that have been added are:

42.  Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

43.  Services for providing food and drink; temporary accommodation.

44.  Medical services, veterinary services, hygienic and beauty care for human beings or animals; agriculture; horticulture and forestry services.

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.

The Trade Marks Registry has issued a supplementary notification that requires trade mark applicants and proprietors to  request amendments to any pending applications or registered marks in Class 42 that include services which now fall within Classes 43 to 45, together with the prescribed fee. The Registry has clarified that the application/registration date will not change upon creation of the new class(es).  Until all the applications and registrations for services in Class 42 are transferred to the appropriate class, searches should be carried out in both Class 42 as well as such appropriate class.

To ensure that applicants and agents do not delay filing these amendments, the Registry has imposed the following limitation:  “Since services mark registrations were introduced in September 2003, subsequent renewal for such registrations 2013 onwards will be effected only after the necessary conversion of specification in the appropriate class has been made as directed by this notification”.

(Please see http://ipindia.nic.in/tmr_new/tm_journal/journal_1443/PublicNotice_12July2010.pdf to access the complete notification).

Our Comments

A foreseeable implication of this notification is that new applications filed in Classes 43 to 45 could have to undergo official examination in Class 42 to ascertain if there are any similar or identical prior marks for similar services.

The steps introduced by the Government appear to move one step further towards India’s accession to the Madrid Protocol that will require sweeping changes in the national system. The Madrid Protocol provides a simple and cost-effective system for global registration of trade marks by enabling the nationals of all member countries of the Protocol to secure simultaneous protection of trade marks in many countries within the prescribed span by filing a single application in their country of origin.

To kick start this transition, applicants and agents will soon have to take organized steps to file requests to reclassify services under Classes 43 to 45 of the expanded classification already applied for or registered in Class 42. However, these will be testing times for the Trade Marks Registry that is already mired with backlog and an insufficient workforce.

In case you have any questions, please address them to tmg@indiaiprights.com.