New trade mark legislation in INDIA now provides for service mark protection in classes 35 to 45

Trade Mark legislation in India has recently (as of 1 July 2010) been amended to adopt the 9th Edition of the Nice International Classification System.  The changes brought about by adopting the 9th Edition are that class 42 has been divided by adding a further three classes, i.e. classes 43, 44 and 45.  The services previously included in class 42 may now fall either in classes 42, 43, 44 or 45.  The question arises as to how this will impact on existing applications and registrations in class 42. 

Marks already registered in class 42 will be deemed to have been validly registered in classes 42 to 45 and the same principle will apply upon renewal.  Class 42 applications which have proceeded to advertisement will mature to registration in class 42 and be treated the same way as marks already registered in class 42.

The changes in legislation will, accordingly, only affect pending applications awaiting examination.  The Examiner will, upon examining of the application and if appropriate,  recommend the more appropriate class or classes.  The applicant will be required to either restrict the services to the particular class, or to request a division of classes.  In case of the latter, the priority date of the application will be maintained.

Class 42 applications which have been the subject of an official action from the Examiner, can be subjected to re-examination.  Class 42 applications which have been the subject of opposition will be deemed to have been validly filed in respect of all services opposed,  irrespective of the new classification system.  Finally, new applications in classes 43, 44 and 45 will be examined having regard to existing and prior rights in class 42 too.

If you have any queries with regards to this issue or would like further information relating to the new act, please contact Natalia Pereira or Therése Davis in our International Trademarks Department: