Trademark
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This article is written by Poonam Nahar who is pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.

Introduction

In today’s world, there is a race to gain a legal monopoly by registration of their unique work as an intellectual property. Due to globalization and changing trends there is a great demand for trademark protection. Intellectual Property is concerned with ‘Protecting the work of human intellect’. According to the Article 15.1 of the TRIPS Agreement ‘Trademark’ is related to any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks.

Trademark is protected under Trademarks Act, 1999. The Trademark Act, 1999 deals with the protection, registration and prevention of fraudulent use of trademarks. It also deals with the rights of the holder of the trademark, penalties for infringement, remedies for the damaged as well as modes of transference of the trademark. Trade marks promote initiative and enterprise worldwide by rewarding the owners of trade marks with recognition and financial profit.

For example; Nike, Nestle, Apple, Subway, Amul etc.

What are trademark classification and its importance?

Section 13 of the Trademark Act, 1999 entails provisions regarding the Classification of Goods and Services and provides that the Registrar shall classify goods and services in accordance to the International Classification of Goods and Services for the purpose of registration of Trademarks.

Classification of Goods and Services is known as Trademark classification. A Trademark classification is a systematic arrangement of documents according to the class and the description of the goods and services.  A trademark classification is conducted by trademark attorneys and trademark examiners where they arrange documents of applications of trademark and service marks, according to the type and the description of goods or services to which the trademark is applicable. There are several categories of trademark and they are classified into several classes to be registered in the document. In India, Trademarks are also classified into several classes. Trademark classification helps in error-free and smooth work.

Classification of a trademark into its classes might be tricky but the very first step you need to follow is to determine the nature of the class and prepare a specification. For example: note down the description of the goods or services and specify such goods or services not only on products or services of immediate interest but it should also cover the future interest in order to get the benefits of trademark. 

Importance of proper classification of goods & services

When you go into business, odds are there will eventually be something you want to protect and claim as your own. Whether it’s an advertising catch line, a logo for a brand, eventually you could be in need of a trade mark to guarantee that no one else will profit from your success. But, there are different trademark classes so it’s important you are protected with the right one. Trademarks are classified into 45 classes as per the specifications and classifications of goods and services. 

It is important to ascertain the exact nature of goods or services for which the mark is to be used. For example, if the trademark is to be used for “manufacture of clothes” then the correct class would be Class 25 at the same time, if the trademark is to be used for “sale of clothes” then the same would fall in Class 35 under Retail Stores, WholeSale outlets etc. Filing the application in a wrong class would result in the trademark owner losing their rights to enforce their trademark rights in the event of an infringement.

The symbols allied to trademarks, i.e. ™ (the trademark symbol) and ® (the registered trademark symbol) constitute the status of a mark and its protection. 

Nice Classification of goods & services

The Nice classification (NCL) is a part of the World Intellectual Property Organization (WIPO). It is the international system for the purpose of registration of trademarks of classification of goods and services. The Nice Classification includes class headings, an alphabetical list of goods and services and explanatory notes. The Nice classification was established by the Nice Agreement in 1957 and is continuously revised by the committee of experts of the Nice Union and most recently a new edition of the Nice classification i.e. 11th edition was introduced which came into force on 1st of January, 2019. Nice classification is strictly followed by The Trade Marks Act and Rules. There are 45 classes in the Nice classification out of which, classes 1 to 34 categorizes goods or products and classes 35 to 45 categorizes services.

There are several benefits of trademark classification are Gain exclusive rights over trademarks, building of trust among consumers, value in the market, protection of infringement rights, exclusive identification, globally permit of such registered product, etc.

Case Laws

Imagine Marketing Pvt. Ltd. V. Exotic Mile: BOAT V. BOULT

In this case, the plaintiff is a registered company incorporated under the Companies Act, 2013. The plaintiff is the registered proprietor of the trademark ‘boAt’ in many classes of the trademark including, class-9, 11 and 35 and the company is a well-known for manufacturing and selling electronics gadgets. 

The defendant company under the name ‘Boult’. The issue arose when the plaintiff submitted that, the tagline used by the defendant in their goods i.e., ‘UNPLUG YOURSELF’ is deceptively similar to the plaintiff’s tagline i.e., ‘PLUG INTO NIRVANA’. Also, the defendant has also copied the product name of the plaintiff which is deceptively similar to that of the plaintiff’s. 

The plaintiff submitted that, the plaintiff has been selling their products on e-commerce platforms and the defendant has also been selling on the same platform, which creates confusion in the minds of people that the defendant’s products belongs to plaintiff’s company as the defendant mark ‘BOULT’ is phonetically similar and identical to that of plaintiff’s mark ‘boAt/BOAT’.  

On 21st January 2020, The Court has passed an order of an interim injunction, which restrains the defendants its agents, distributors and officers from selling, using, exporting, importing, manufacturing, offering for sale, or in any manner dealing with goods and/or services under the name ‘BOULT’ and the tagline ‘UNPLUG YOURSELF’ till the disposal of the present suit. The Court considered that the defendant’s mark ‘BOULT’ is phonetically similar to that the plaintiff’s mark ‘BOAT/boAt’, and it would create confusion in the minds of the consumers when they buy from the same platforms because of the first two and the last alphabets in the mark reflects similarity.

Cutis Biotech v. Serum Institute of India

Serum Institute of India is an Indian Biotechnology and pharmaceutical company and it is the world’s largest vaccine manufacturer. Cutis Biotech, a nanded based firm, is merchandising under the name “Covishield’ in surface decontaminant, antiseptic products and fruits and vegetables wash. The same brand name being used by Serum Institute of India (SII), Pune based firm for marketing COVID-19 vaccine. Both the company’s products fall under Class 5 of Nice classification which includes class for pharmaceutical products and other preparations and medical or veterinary purposes. Both the companies i.e., The Serum Institute of India and Cutis Biotech filed the trademark applications but the term “Covishield” is not registered by either of the companies, however, Cutis biotech had already filed an application for the trademark of “Cover Shield” prior to Serum Institute of India.  

Both the companies are using the term “Covishield” which means a product that shields or protects or averts one from contracting coronavirus infection. However, it neither outlines nor suggests the nature, quality, features or emergence of the product. For example, the word ‘Shield’ is a general term which represents masks, sanitizers, disinfectants or vaccines that can act as precautionary measures against covid-19 infection (coronavirus).

The defendant raised an objection on the ground of jurisdiction as the plaintiff filed a suit against the defendant before the District Court at Nanded. The plaintiff further added the act of the defendant is of misrepresentation and being deceitful to the customers/consumers in the market. Due to this fact, the plaintiff has suffered irreparable losses as dealers or distributors are not ready to sell their product.

The Bombay High Court refused to grant interim relief to Cutis Biotech, a pharmaceutical company and refused to restrain Serum Institute of India (SII) from using the trademark ‘Covishield,’ for its vaccine against coronavirus. As it says that, nothing would create confusion and disturbance in the administration of COVID-19 vaccine.

Conclusion

Globally increase of brands in every field of goods and services has become necessary to protect the rights of the owner. The trademark classification enables us to determine and demonstrate whether filing for a mark clashes with any other trademark that is already registered or filed. Hence, classification of goods and services according to Nice classification is necessary in order to identify the class of goods and services to be registered under Trademarks Act. 

References

  1. Classification: https://ipindiaonline.gov.in/tmrpublicsearch/classfication_goods_service.htm
  2. https://www.mondaq.com/india/intellectual-property/962052/trade-mark-classes-and-classification-in-india
  3. https://cleartax.in/s/trademark-act-1999
  4. http://www.ipkosh.com/2020/07/boat-vs-boult-delhi-high-court-ordered.html
  5. https://www.livelaw.in/news-updates/bombay-high-court-cutis-biotech-serum-institute-of-india-sii-covishield-coronavirus-vaccine-172872
  6. https://www.wipo.int/edocs/mdocs/sme/en/wipo_kipo_kwia_inv_sel_14/wipo_kipo_kwia_inv_sel_14_b_leong.pdf

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