This article is written by Shreya Patel. This article exhaustively explains trademark class 5 and its importance in trademark protection and registration. It also delves into the specifications of the goods and services that are covered under trademark class 5. Relevant case laws have also been discussed, to depict the importance of trademark class 5.

This article has been published by Shashwat Kaushik.

Introduction 

Trademarks are one of the most popular and commonly protected intellectual property rights in India, as well as around the world. In today’s time, when the market is highly competitive, a trademark plays a key role in helping a business create a unique and distinct position for itself. Indian businessmen and craftsmen have been using trademarks for approximately 3000 years. The craftsmen in India have been carving their mark on the products that they make, such as on jewellery or other creative products. These markings were used to identify the source of the maker. In the world of international commerce, a trademark is one of the crucial elements that emerged as the result of industralisation. 

A distinctive logo or sign that indicates that a product is manufactured by a specific business, person, or industry, is known as a trademark. Trademarks are used on products, while the service marks are used on services to differentiate amongst the various service providers. A single company can have numerous trademarks. Each product can have its own trademark, which is distinctive in nature and distinguishes the goods of that company from the others present in the market. The key element of trademarks, is that they can easily help the consumers distinguish the products and services of one company from the other. 

What is a trademark

The intellectual property that grants an owner the exclusive right over a sign, logo, symbol, design, sound, phrase, or expression, is known as a trademark. Different countries around the world protect different types of trademarks. For instance, the United States accepts registration of a sound as a trademark, while India does not protect a sound or smell mark. 

A trademark can only be used for the product for which it has been registered. Only the owner of the trademark has the sole right to use the mark. No other person, organisation, or entity can use the same mark for their products or services. If any individual, organisation, or entity wishes to use the mark, they would first have to take the consent of the trademark owner. Using the trademark for any commercial purpose by such an entity, individual, or organisation, amounts to infringing the rights of the owner of the trademark. 

Trademark, as defined under Article 15 of the Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement) is – 

A sign or any combination of signs that is competent in setting apart the goods and services of one enterprise, from that of others and is also capable of forming a trademark. A trademark is legally recognised as an industrial property. Exclusive rights are given to the owner of the trademark, to use such a sign whose purpose is to identify the goods and services that are produced. A third party is allowed to use a trademark, in exchange of a fee. 

Section 2(1)(zb) of the Trade Marks Act, 1999 defines trademark as –

A mark that is distinctive in nature and is capable of distinguishing the goods and services of one entity from those of another. A trademark is also capable of graphical representation. The validity period of trademark protection, helps in reducing the unnecessary registrations of trademarks that have no applicability. In India, a trademark registration is valid for a period of ten years. Trademarks act as a hallmark of origin and associate the company’s standing and quality with the product or services or both.

A trademark registration can be renewed unlimited times. For registration, the applicant is required to apply to the Trade Mark Registry Office, which has offices in Kolkata, Delhi, Mumbai, Chennai, and Ahmedabad. Trademark registration is very crucial in order to protect a trademark. At the time of applying for trademark registration, there are various classes of trademarks, which are determined on the basis of the goods and services for which the trademark is being registered.  

Need for a trademark

Trademarks act as a strategic asset for companies that are involved in a highly competitive market. In terms of markets that consist of products and services which are homogeneous in nature, trademarks play the crucial role of boosting the visibility of such products and services and helps in attracting the loyalty of consumers. A successful trademark assists the company in establishing a positive image in the market, and consumers associate the mark with its value. Trademarks being one of the common intellectual properties,  are used in both non-innovative and innovative businesses.

Trademarks also play a vital role in brand recognition amongst the consumers in the market. When a business registers their trademark, they get protection from infringement by way of third parties trying to use the registered trademark without the permission of the owner. It is also considered as a crucial intangible asset for the business. With registration, the business creates an asset that can be sold for monetary purposes in the future. A trademark helps in building as well as increasing the credibility of the business. 

What is trademark class

Products and services are classified into various classes, which are referred to as trademark class. The total number of trademark classes that include both the classes for products and for services, are 45. These trademark classes are divided under the Nice Classification. The first 34 classes consist of products and the services are categorised under the remaining 11 classes, that is, from trademark class 35 to 45. 

The products and services of specific characteristics are listed in each class. It is significant to find and select the trademark class under which the product or service belongs before starting the application for trademark registration. As trademarks play a key role in distinguishing the products or services in a competitive market, it is vital to ensure that no one is using a sign, phrase, logo or symbol similar to what we are applying for. As it is considered infringement if someone tries to register a trademark similar to one that already exists. When a trademark is being applied for registration, the trademark class under which the product or service belongs is to be specified in the application form.

The trademark classes are also known as Nice classification. Certain types of goods and services are categorised together under the same trademark class. For instance, the trademark class 23 includes all the goods that are related to synthetic and natural threads  and yarns that are used by the textile companies. Explosives and firearms come under the trademark class 13. A trademark class helps in determining the usage of the product or service in the industry and helps in defining the mark. Trademark classes often play the role of identifier to the mark. It is vital to choose the right trademark class for the goods or services for which we are filing the trademark application. The trademark applicant can file the trademark for goods and services under multiple trademark classes as well. 

Nice classification

An agreement was reached at the Nice Union – Diplomatic Conference on the Revision of the Nice Agreement, which resulted in the establishment of The International Classification of Goods and Services for the Purposes of the Registration of Marks on 5th June, 1957. This was further revised in 1967 at Stockholm, then in 1977 at Geneva, and later amended in 1979.

The Nice Agreement was accepted by India on 7th September, 2019 and is used by the trademark office of India to classify trademarks and register them accordingly. The Nice Classification is to be obliged by all the countries that are part of the Nice Agreement. The Nice Classification can be applied either as a subsidiary classification or as a primary classification method. The Nice Classification not only applies at a national level, but also affects registration on an international basis. Many countries that are not a part of the Nice Agreement also apply the Nice Classification. 

Trademark classification list

Trademarks are classified under two categories, that is, goods and services. These are categorised under separate classes. Certain goods can be registered under specified classes only. For example, advertising services come under trademark class 35, which consists of services related to business and consulting. 

Trademark class for goods

The finished goods can be classified according to their function and purpose if the goods do not belong to any other class. The goods are mainly classified as per their main purpose, while goods can be classified under more than one class also as per their function. In case the function of the goods does not fall under any of the trademark class, they are often classified under as per the raw materials used or on the basis of the transport mode.

If the semi finished goods or raw materials itself are being applied for trademark registration, then the materials used in making these raw materials are used for the classification. On the basis of the dominant material, the trademark class is chosen if the goods consist of multiple materials. 

Trademark class for services

This classification of trademark includes all the major services which are provided. The services are categorised on the basis of branches of the activities that are carried by an entity, individual or the company applying for the trademark. 

Trademark class 5 : pharmaceutical and medical products

The category of goods that are covered under trademark class 5 consists of veterinary, pharmaceutical, or sanitary preparation goods, along with goods required in disease prevention or treatment in animals or humans, dietary supplements, antiseptics, and other goods that are related to or similar in nature. 

Any kind of vaccines, drugs, minerals, shampoos, soaps, deodorants, vitamins, dressing used in hospitals, sanitizers and mouthwashes, are some of the goods covered under trademark class 5. 

The key categories under trademark class 5 are:

• Plasters, materials for dressings
• Veterinary and pharmaceutical preparations
• Food supplements and dietetic substances
• Sanitary preparations for medical purposes
• Antiseptics and disinfectants

Importance of trademark class 5 

Applying for a trademark registration also requires specification of the trademark class under which the trademark is going to be registered. If a trademark is going to be used for products and services under multiple classes, a separate application must be filed for each trademark class. Trademark class 5 is very significant for businesses that are into manufacturing or distributing pharmaceutical, sanitary, or veterinary preparations. 

A trademark when registered under trademark class 5, ensures that such goods are protected from infringement by any third party. Primarily, this classification builds consumer trust in medical products, which is crucial. Further, registering goods under trademark class 5 would help the business or individual or entity in effectively protecting their brand identity and also prevent future trademark infringement. The business would be able to establish a brand image that is distinct and unique. 

Detailed list of goods under trademark class 5 : pharmaceutical and medical products

Following is the detailed list of all the goods which come under the trademark class 5:

• Acaricides, absorbent cotton / absorbent wadding
• Acetates and acids for purposes related to pharma
• Aconitine and acne treatment preparations
• Sticking plasters or adhesive plasters
• Adhesive tapes/adhesive bands/adjuvants used in medical reasons
• Adhesives which are used in dentures
• Air deodorising purifying preparations
• Albumin dietary supplements
• Albuminous preparations  and albuminous foodstuffs intended to be used in medical purposes
• Alcohol/ aldehydes for purposes related to pharma industry
• Algicides
• Alginate dietary supplements
• Alginates and alkaline iodides for pharmaceutical applications
• Alkaloids for medical applications
• Alloys of precious metals for dental purposes
• Preparations of aloe-vera for purposes related to pharma
• Aluminium acetate which is used in relation to pharmaceutical purposes
• Amino acids which are used for medical purposes
• Amino acids used in or for veterinary purposes
• Anaesthetics and analgesics
• Angostura bark used of medical purposes
• Bracelets which are anti-rheumatism
• Anti-rheumatism rings, Antibiotics, Antioxidant pills, Animal washes
• Anti-uric/anticryptogamic/antiparasitic preparations
• Collars for animals that is antiparasitic
• Antiseptic cotton/antiseptics
• Appetite suppressants used in medical purposes
• Pills that are appetite suppressant
• Articles for headache/asthmatic tea/aseptic cotton
• Napkins and diapers for babies
• Diaper pants and napkin pants for the babies
• Bacterial preparations/ Bacteriological preparations used in veterinary and medical use
• Bacterial poisons
• Balsamic preparations/balms for medical purposes
• Bandages which are used in dressings
• Barks used in pharmaceutical purposes
• Bath preparations utilised for medical purposes
• Bath salts used in relation for medical purposes
• Sanitary napkins’s belts [towels]
• Bicarbonate of soda which is used for pharmaceutical purposes
• Biocides
• Biological tissue cultures, biological preparations intended for medical purposes
• Biological preparations, biological tissue cultures in relation for veterinary purposes
• Bismuth preparations and bismuth subnitrate utilised for pharmaceutical purposes
• Blood plasma
• Blood when used for medical purposes
• Bone cement when used for orthopaedic or surgical purposes
• Bacteriological culture mediums/ bouillons for bacteriological cultures / media for bacteriological cultures
• Bracelets which are used in relation to medical purposes
• Pads used in breastfeeding
• Bromine when is used for pharmaceutical use
• Bronchodilating preparations
• Bunion pads
• Cachets and cachou for pharmaceutical uses
• Preparations for calluses
• Calomel
• Camphor oil, camphor and castor oil for medical purposes
• Candy which is medicated
• Capsules which are medicines
• Carbolineum
• Casein dietary supplements
• Washes for cattle
• Caustic pencils and caustics when uses for pharma purposes
• Cedar wood when used as an repellent for insects
• Cellulose esters and cellulose ethers for pharmaceutical related usage
• Cement when used for animal hooves
• Charcoal when used in relation for pharmaceutical purposes
• Chemical conductors for electrocardiograph electrodes
• Chemical contraceptives
• Chemical preparations which are used to treat mildew and diagnosis of pregnancy
• Chemical preparations to treat wheat smut, for treating phylloxera, for pharmaceutical purposes, medical purposes, veterinary purposes
• Chemical reagents for veterinary or medical purposes
• Chemico-pharmaceutical preparations
• Chewing gum when specifically used for medical use
• Chilblain preparations
• Chinoline for medical purposes
• Chloroform, Collyrium, Compresses, Cocaine, Cod liver oil
• Collodion intended for pharmaceutical purposes
• Condurango bark and Cooling sprays for medical purposes
• Contact lens solutions/ solution which is used along with contact lenses
• Cleaning preparations for contact lenses
• Corn rings for the feet
• Curare
• Croton bark
• Corn remedies
• Cotton swabs, Cotton, cotton sticks when used in relation to any medical purposes
• Creosote and cream of tartar in pharmaceutical purposes
• Cultures of microorganisms for veterinary and medical use / preparations of microorganisms for veterinary and medical use 
• Decoctions used in relation to pharmaceutical usage
• Dental – abrasives, amalgams, cements, impression materials, lacquer, mastics, amalgams of gold
• Deodorants, other than for animals and human beings
• Clothing and textiles deodorants
• Depuratives
• Preparations for destroying noxious animals, dry rot fungus, destroying mice
• Detergents (medical purpose)
• Diabetic bread – used for medical purpose
• Diagnostic preparations, diagnostic biomarker reagents (medical purposes)
• Diagnostic preparations (veterinary purposes)
• Pet diapers
• Diastase for medical purposes
• Dietary fibre
• Digitalin
• Animals’ dietary supplements
• Dietetic foods and beverages or dietetic substances used for medical purposes
• Digestives (pharmaceutical purposes)
• Dill oil for medical purposes
• Disinfectants when used for hygiene purposes and chemical toilets
• Disinfectants
• Lotions and washes for dogs
• Douching preparations for medical purposes
• Dressings, medical
• Drugs for medical purposes
• Elixirs when used in pharmaceutical preparations
• Enzymes and enzyme preparations for veterinary purposes
• Enzymes and enzyme preparations for medical purposes
• Enzyme dietary supplements
• Ergot, esters, ethers, eucalyptol, eucalyptus, extracts of hops for pharmaceutical purposes
• Eye-washes
• Eye-patches (medical purposes)
• Preparations to facilitate teething
• Febrifuges
• Fennel in relation to medical purposes
• Ferments (pharmaceutical purposes)
• Filled first aid boxes
• Fish meal – pharmaceutical purposes
• Flour for pharmaceutical purposes / meal for pharmaceutical purposes
• Flowers of sulphur in pharmaceutical purposes
• Fly catching paper, fly glue, fly catching adhesives
• Fly destroying preparations
• Baby food
• Formic aldehyde, frostbite salve for pharmaceutical purposes
• Fumigating pastilles, fumigating sticks, fungicides
• Fumigation preparations – medical purposes
• Gases/ gamboge – medical purposes
• Gauze used in dressings
• Gelatine and glucose – medical purposes
• Gentian – pharmaceutical purposes
• Germicides
• Glucose dietary supplements
• Glycerine – medical purposes
• Glycerophosphates
• Greases for medical purposes and veterinary purposes
• Guaiacol for pharmaceutical purposes
• Gurjun balsam and gum – medical purposes
• Haematogen / haemoglobin / hematogen / hemoglobin
• Haemorrhoid/ hemorrhoid preparations
• Haemostatic/hemostatic pencils
• Headache pencils
• Herbal teas used in medical purposes
• Herbicides / preparations for destroying weed killers/ noxious plants
• Hydrastine, hydrastinine
• Hydrated chloral – pharmaceutical purposes
• Hydrogen peroxide for medical purposes
• Repellents, repellent incense for insects
• Insecticides
• Iodides/ Iodine – pharmaceutical purposes
• Iodoform
• Isotopes/ irish moss – medical purposes
• Jalap, laxatives
• Jujube – medicated
• Lacteal flour used for the babies
• Larvae exterminating preparations
• Goulard water/ Lead water
• Lecithin, Leeches for medical purposes
• Lecithin dietary supplements
• Preparations of lime – pharmaceutical purposes
• Liniments
• Linseed / flaxseed/ linseed meal/ flaxseed meal for pharmaceutical purposes
• Linseed and linseed oil dietary supplements / flaxseed and flaxseed dietary supplements
• Lint – medical purposes
• Liquorice/ lotions – pharmaceutical purposes
• Lotions used in veterinary purposes
• Lupulin used in pharmaceutical purposes
• Magnesia and malt – pharmaceutical purposes
• Malted milk beverages used for medical purposes
• Mangrove bark used for pharmaceutical purposes
• Medical preparations used for slimming purposes
• Animal feed that is medicated
• Medicinal – tea, oils, herbs, roots, drinks, infusions, alcohol, mud, sediment
• Preparation for medical hair growth
• Medicine cases, filled, portable
• Medicines used in alleviating constipation
• Medicines for dental purposes, human purposes, veterinary purposes
• Melissa water – pharmaceutical purposes
• Menstruation sanitary pads and bandages
• Menthol
• Mercurial ointments
• Milk ferments – pharmaceutical purposes
• Milk sugar/ lactose – pharmaceutical purposes
• Milk of almonds – pharmaceutical purposes
• Milking grease
• Mineral waters utilised for medical purposes
• Mineral water salts
• Mineral food supplements
• Mint – pharmaceutical purposes
• Moleskin – medical purposes
• Mothproofing preparations
• Mothproof paper/ mothproofing paper 
• Moulding wax used by dentists
• Mouthwashes – medical purposes
• Mud used in baths
• Mustard oil for medical purposes
• Myrobalan bark/ mustard for pharmaceutical purposes
• Mustard plasters / mustard poultices
• Napkins/ diapers for incontinents
• Narcotics, Nervines, Opodeldoc, Opiates, Opium
• Nutritional supplements
• Nutritive substances for microorganisms
• Oil of turpentine used in relation to pharmaceutical purposes
• Ointments used in relation to pharmaceutical purposes
• Opotherapy preparations / organotherapy preparations
• Oxygen baths
• Oxygen –  medical purposes
• Pants, absorbent, for incontinents
• Liners for panty
• Paper for mustard plasters and mustard poultices
• Pastilles / lozenges for pharmaceutical purposes
• Pearl powder –  medical purposes
• Pectin, Pepsins, Peptones for pharmaceutical purposes
• Pesticides, Parasiticides
• Petroleum jelly used in medical uses
• Pharmaceutical preparations
• Skin care related pharmaceutical preparations
• Treating dandruff – pharmaceutical preparations
• Phenol and Phosphates intended for pharmaceutical purposes
• Poisons, poultices
• Pollen dietary supplements
• Pomades when used in relation to medical purposes
• Porcelain – dental prostheses
• Potassium salts when used in relation to medical purposes
• Powder of cantharides
• By-products of processing of cereals which are for dietetic or medical purposes
• Propolis when used in relation to pharmaceutical purposes
• Propolis/ protein dietary supplements
• Animal’s protein supplements
• Purgatives / evacuants
• Pyrethrum powder
• Sunburn preparations – pharmaceutical purposes
• Ointments for sunburn
• Suppositories
• Surgical dressings, glues
• Surgical implants consisting living tissues
• Syrups – pharmaceutical purposes
• Tanning pills
• Tartar – pharmaceutical purposes
• Materials for teeth filling
• Therapeutic preparations for the bath
• Thermal water
• Thymol used for pharmaceutical uses
• Tincture of iodine and medical purposes
• Tonics
• Preparations of trace elements for animal use and human usage
• Preparations in relation to treatment of burns
• Turpentine – pharmaceutical purposes
• Vaccines, vaginal washes, vesicants
• Vermifuges / anthelmintics
• Vulnerary sponges
• Vermin destroying preparations
• Veterinary and vitamin preparations
• Chemicals that treat vine disease treating
• Tissues infused with pharmaceutical lotions
• Tobacco extracts – insecticides
• Tobacco-free cigarettes for medical purposes
• Wadding – medical purposes
• Wart pencils
• Wheat germ dietary supplements
• Yeast – pharmaceutical purposes
• Yeast dietary supplements
• Quebracho/ quinine/ quinquina/ cinchona for medical purposes
• Radioactive substances and radiological contrast substances – medical purposes
• Radium for medical purposes
• Rat poison
• Reagent paper for veterinary purposes or medical use
• Preparations for lessening activities that are sexual in nature
• Foot perspiration remedies
• Perspiration remedies
• Dog repellents
• Rhubarb roots / Royal jelly when intended to be used for pharmaceutical purposes
• Royal jelly dietary supplements
• Rubber when is used for dental purposes
• Salts used in mineral water baths
• Salts – medical purposes
• Sanitary panties / sanitary knickers / menstruation knickers/ sanitary pants
• Sanitary/ menstruation tampons
• Sanitary towels/ napkins
• Sarsaparilla – medical purposes
• Scapulars for surgical uses
• Sea water when used in medicinal bathing
• Sedatives / tranquillisers
• Serums
• Semen when used for artificial insemination
• Serotherapeutic medicines
• Lubricants for sexual activities 
• Siccatives which are drying agents when used for medical purposes
• Pills for slimming
• Slug exterminating preparations
• Smelling salts
• Smoking herbs and sodium salts when used for medical purposes
• Soil-sterilising preparations
• Solvents for removing plasters that have adhesives
• Starch for pharmaceutical purposes or dietetic
• Stem cells for medical purposes and veterinary purposes
• Sterilising preparations
• Soporifics, steroids, strychnine
• Stick liquorice intended for pharmaceutical usage
• Styptic preparations
• Sugar – medical purposes
• Sulfonamides (medicines), sulphur sticks (disinfectants)

What is not classified under trademark class 5

There are some goods which are not covered under trademark class 5, despite being similar to the other goods which are included under it. 

Sanitary products are covered under class 5, but sanitary preparations such as toiletries (goods that are used for sanitation and cleaning, but not particularly for any medical purpose) are not included under class 5. Instead, they are classified under class 3 of trademark classes. The next product that is not classified under class 5, is deodorant, which is meant for personal use or for animals. This also falls under the ambit of class 3. Supportive bandages are also not covered under class 5. Many dietary supplements are categorised under class 5, but meal replacements which are not meant for medical or dietary use, are not. 

Landmark judgement related to goods under trademark class 5

Cadila Healthcare Limited vs. Cadila Pharmaceuticals Limited (2001)

In this landmark case, the court particularly laid down standards with respect to trademarks in the pharmaceutical industry, which is what class 5 mainly deals with. The court rightly stated “drugs are poisons, not sweets”. The products and services in this field hold the potential to have lasting negative impacts and hence, must be addressed with caution. Class 5 enables us to focus on and specifically deal with matters relating to the same. Standards applicable to medical products and other products, cannot be the same.

Both the appellant and the respondent in this case, were engaged in the same business (manufacturing  pharmaceutical products) and they had the same name as well. The right to use ‘Cadila’ was held by both the companies after the restructuring of the Cadila group took place. The appellant’s drug ‘FALCIGO’ was registered under the Trade and Merchandise Marks Act, 1958. The defendant was also using a very similar trademark- ‘FALCITAB’, which would have easily caused confusion. An appeal was filed by the appellant in the High Court, which was dismissed on the ground that both the drugs had no similarity when it comes to price, appearance, or formulation. 

The appellant further appealed before the Supreme Court, which laid down some factors in this case which can be used to decide whether the marks are deceptively similar or not. The factors to be considered are:

• The resemblance between the two marks along with their phonetic similarity.
• The nature of the marks.
• The nature of goods.
• The performance, similarity, and character of the rival’s goods.
• The class of people who are purchasers- whether they are educated enough to tell the difference, and take care when purchasing the goods.
• The purchasing mode of the goods, and how the order is placed for them.
• Other relevant circumstances surrounding the marks in question.

The Supreme Court disposed of the appeal and directed the Trial Court to decide the case by considering the factors laid down. It is very important to note that as both the products belong to the same trademark class, it is very easy for the consumers to get confused. Hence, deciding whether the marks are deceptively similar or not plays a very important role. 

To learn more about this case, click here.

Mankind Pharma Limited vs. Novakind Bio Sciences Private Limited (2023)

In this case, the plaintiff was the owner of ‘MANKIND’, with 78 registrations under 45 different trademark classes, out of which class 5 was one. Under trademark class 5, the plaintiff held 120 registrations, wherein ‘KIND’ was used as a suffix in various marks, such as ‘METROKIND’, ‘DEXAKIND’, and ‘MOXIKIND’. The trademark of the plaintiff was also given the status of a well-known one. The plaintiff wanted to stop the defendant from using this suffix, which clearly held importance for the plaintiff, and hence sought a temporary injunction. 

The Delhi High Court, referring to the landmark case of Cadila HealthCare Limited vs. Cadila Pharmaceuticals Limited (2001), stated that it can be dangerous to have similarity in two pharmaceutical items. As per the court, the suffix ‘KIND’ had already become distinctive, and its use by the defendant would infringe upon the right of the plaintiff. It could lead to misrepresentation. As both the plaintiff and defendant’s product belonged to the same trademark class, which is class 5, it would lead to confusion among the consumers in the market. 

Merck Kgaa vs. Galaxy Hompro And Anr (2012)

In this case, the decision of the Intellectual Property Appellate Board (IPAB) was challenged by a writ petition under Article 226 (power of High Courts to issue certain writs) of the Constitution. The respondent’s trademark, ‘RECIBION’, was approved by the Assistant Registrar of Trademark. The petitioner, owner of a manufacturing company that manufactures pharmaceutical formulations falling under trademark class 5, was already holding a trademark for the marks ‘BETABION, POLYBION, and CEBION.’ 

The petitioner argued that the mark ‘RECIBION’ was very similar in nature to his already registered mark ‘CEBION’, as they both had ‘BION’ as a suffix. as per the Assistant Registrar, there was no similarity, either visually or phonetically. This decision was also supported by IPAB. Further, the Delhi High Court also held the same view, stating that the mark should always be observed as a whole. The consumers in the markets will differentiate on the basis of more than just the prefixes that are used in both marks. Hence, it was stated that there was no deceptive similarity. 

Conclusion

Trademark classes play a key role at the time of applying for trademarks. The primary purpose of classifications in trademarks, is to enable standardisation and simplification in the process of registration of trademarks. This method of categorisation helps reduce ambiguity and conflicts and brings in some much needed clarity in this confusing field.

Trademark class 5 is of great importance, since it is primarily concerned with the pharmaceutical and medical industry, which must be dealt with in a careful manner due to the repercussions it could have on humans, in case of errors. The pharma industry is huge in India. Registering a trademark in a highly competitive market, increases the chances of brand protection, legal protection and increasing consumer trust.

However, this system could also be seen as a disadvantage, in terms of rigidity. With new products and services emerging every day in this age of advanced technology, at times, it would become difficult to properly categorise them. Hence, it is vital and this system is modified and updated accordingly with the passage of time.

Frequently asked questions

What is the total number of trademark classes present in India?

In total, there are 45 trademark classes in India. Classes 1 – 34 consist of goods and classes 34 – 45 consist of services. 

Why is it important to know the trademark class under which your product or service belongs?

One of the main requirements at the time of applying for a trademark is trademark class. The applicant must specify the class under which their goods or services fall, to register and deal with them accordingly.

Can a trademark be registered under more than one class?

In India, a trademark can be registered under more than one trademark class. If a product or service offered by a business or individual falls under the scope of more than one trademark class, then the trademark can be registered under all those classes. The applicant can also register their trademark under class 99, which stands for all classes. Under this, a trademark can be registered under multiple classes through one application.

References

• https://www.ijfans.org/uploads/paper/f4ea752430097792d349fb5f1f66b13d.pdf 
• https://www.jetir.org/papers/JETIR1904P29.pdf
• Nice Classification (wipo.int)
• https://spicyip.com/2022/11/pharmaceutical-trademark-confusion-poison-pill-or-public-health.html