Sugar and spice and everything NICE

Sugar and spice and everything NICE

A trademark that has been registered is valid for the goods or services that it has been applied for.

If I file a trademark WONKZOO for legal services, aside from the fact that I may be committing professional suicide I need to decide which class of goods I have to file the trademark in. A trademark can be applied for, in one or more classes.

Figuring out what specifications to apply the trademark for requires a certain amount of planning and thought.

Where do I fit in?

The first step would be to identify the class.

India follows the Ninth Edition of the NICE Classification (NICE because the agreement was signed in NICE France, not because collective minds at WIPO ran out of adjectives). While India is not a contracting party to the Nice Agreement, through an amendment of Trademark law in India, it has aligned itself with the Nice Classification. Many countries follow the more recent amended Tenth Edition which came into force on January 01, 2013.

As per Indian trademark law, in conjunction with International obligations there are 45 classes of which 1- 34 are for products and the remaining are for services. A general list of the goods and services can viewed on the website of the Indian Intellectual Property Office over here. If you want a more detailed list though, you’d rather check the WIPO website for the Ninth Edition of the NICE Classification which is available here.

Broad or Specific?

If you are using the trademark that you intend on applying for then you have to describe the goods that you already use and file the application claiming usage from the date of first use.

So if you have used the trademark WONKZOO for nail clippers and have evidence of use of the mark only with regard to nail clippers, you would have to file the application only for nail clippers in Class 08.

If you haven’t actually started using the trademark but plan on using it for a range of hand operated tools, you can file the application on a proposed to be used basis with a wider range of goods i.e. nail clippers, nail cutters, guns, axes, bayonets in the same class 8.

In general though, it is better to apply your trademark for specific goods as opposed to a broad range of goods.

Think like you tweet!

According to Indian law, for a single class you are allowed 500 characters for your specification of goods. For every character in excess of 500, you need to pay 10 rupees per character. So when it comes to finalizing your specifications type them out like you would a tweet – every character counts. Fortunately, the 500 characters do not include spaces so that should give you sufficient characters to spell out the goods you trade in.

Spell it out

It pays to be very clear with your specifications. Linking them to the class header provided on the Registry website helps a great deal. For instance if you use WONKZOO on musical instruments in 15, it would be advisable to apply for the mark with the goods mentioning “musical instruments namely, guitars, violins and harps;” This is particularly useful when you are applying for uncommon goods (uncommon being things the registry officials may not know or recognize) say “trombones and clarinets” in the same class 15.

While you may think the previous comment is un-naturally harsh toward the Registry officials, I assure you that it is only because I’ve spent the entire day reporting needless examination reports to clients where their specifications were very clear but the officials did not recognize that they belong to that particular class. The easiest objection they raise is “please specify/delete the goods as per NICE Classification”. While that alone was not sufficient to make me vent, after a long hard day of reporting such objections to my clients, I came across a mark that was advertised in the journal (after being approved by the same officials) which was filed by a major Indian car manufacturer. Their mark was advertised in Class 12 for vehicles as “(Company’s name) RANGE OF VEHICLES AND OTHER BUSINESS MATTERS OF THE COMPANY.” Clearly “Business matters” falls under Class 12 allotted for vehicles more appropriately than my “clarinets” for musical instruments!

The only positive I see is that knowing the shortcomings of the Registry and the officials helps us plan our strategy for future applications better.

So when you file a trademark application, be clear, concise, specific in your specification of goods.

Disclaimer: The information contained herein is for informational purposes only and is not legal advice or a substitute for legal counsel.

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