Multiclass Trademark Registration

Updated on : Feb. 17, 2023 - 5 p.m. 17 min read.

What is Multiclass Trademark?

A Multi-class trademark is a trademark registration that covers multiple classes of goods or services. According to Indian law the Indian Trade Marks Act 1999, and the Trade Marks Rules 2017, the International Classification of Goods and Services (Nice Classification) is followed for the classification of goods and services.

There are 45 classes in total 34 classes for goods and 11 classes for services. A trademark application can be filed in multiple classes with each class representing a different category of goods or services. This allows an applicant to register the same trademark for different goods or services under a single application. This can be useful for businesses that offer a wide range of products or services as it allows them to protect their brand across multiple categories.

Example of Multiclass Trademark

An example of a multi-class trademark is A company that sells clothing and accessories under the brand name "Fashion Street". They may file a multi-class trademark application for the brand name "Fashion Street" in the following classes:

Class 25: Clothing, footwear, headgear
Class 14: Jewelry, watches, and precious stones
Class 18: Leather goods, such as bags and wallets
Class 35: Retail and online sale of clothing, footwear, jewelry, and accessories
Class 42: Technology and Software Services

In this example, the company is able to protect the brand name "Fashion Street" across multiple classes of goods and services which includes clothing, footwear, jewelry, leather goods and fashion design services. This allows the company to prevent others from using the same or similar brand name for similar goods and services and it also allows them to have a legal recourse to prevent any infringement.

Documents needed for multiclass Trademark Registration

To file a multiclass trademark application in India, the following documents are required:

Applicant's name, address, and nationality
Proof of identity and address of the applicant
List of goods and services to be covered under each class
Logo or trademark representation (if applicable)
Power of Attorney (if filing through an agent)
Trademark declaration form
Evidence of use of the trademark (if the trademark has already been used)
Priority document (if claiming convention priority)
Trade classification
Any other relevant documents as requested by the trademark office.

Multiclass Trademark Registration Process In India

The process for registering a multi-class trademark in India is similar to the process for registering a single-class trademark with a few additional steps. The process includes the following steps:

Trademark Search

A trademark search is a process of researching existing trademarks to determine if a proposed trademark is available for use and registration. The process typically includes searching existing trademark databases such as the Indian Trade Marks Registry to identify any trademarks that are similar or identical to the proposed trademark.

The search process is generally conducted before a trademark application is filed in order to avoid any potential legal issues that may arise from using or registering a trademark that is already in use.

Filing Trademark Application

Next, the applicant must file an application for registration with the Indian Trade Marks Office. The application must include the proposed trademark a list of goods or services for which the trademark will be used and the classes in which the trademark will be registered.

Examination of Application

After the application is filed it will be examined by the Trade Marks Office to ensure that it meets all the requirements of the Act and Rules.

Publication

If the application is accepted it will be published in the Trade Marks Journal. This gives other parties an opportunity to oppose the registration of the trademark.

Opposition to Application

Opposition to a multi-class trademark application can occur when a third party believes that the registration of the trademark would be detrimental to their own interests. They may file an opposition with the Indian Trade Marks Registry (ITMR) within a certain time frame after the trademark application is published in the official gazette

An opposition can be filed on various grounds such as the trademark is identical or similar to an existing registered trademark the trademark is not distinctive it's not capable of distinguishing the goods or services or the trademark is likely to deceive the public or cause confusion.

The opposition process typically involves the following steps:

A notice of opposition is filed by the third party with the ITMR.
The applicant has an opportunity to file a counter-statement in response to the notice of opposition.
The ITMR will review the evidence and arguments presented by both parties and make a decision.
If the opposition is successful, the trademark application will be refused or withdrawn. If it's unsuccessful, the trademark registration will proceed.

Registration Certificate

If there are no objections or the objections are overcome, the trademark will be registered and a certificate of registration will be issued.

Advantages of Multiclass Trademark Registration

There are several advantages of registering a multi-class trademark in India:

Wider protection: By registering a trademark in multiple classes, businesses can protect their brand across a wider range of goods or services. This can help prevent others from using similar marks for similar goods or services.
Cost-effective: Registering a multi-class trademark can be more cost-effective than registering multiple single-class trademarks. This is because the applicant only needs to pay one set of fees and go through one registration process.
Convenience: With multi-class trademark registration, businesses can register their trademark for multiple goods or services under a single application, making the process more convenient.
Stronger enforcement: Having a multi-class trademark registration can make it easier to enforce trademark rights against infringement or dilution in multiple classes of goods or services.
Global protection: Registering a trademark in multiple classes can provide global protection by allowing the applicant to claim priority in other countries based on Indian registration.
Competitive advantage: Having a registered trademark in multiple classes can give businesses a competitive advantage by distinguishing their goods or services from those of their competitors.

Disadvantages of Multiclass Trademark Registration

While multi-class trademark registration has many advantages, there are also some potential disadvantages to consider:

Maintenance: After registration, the trademark owner needs to use the trademark for each class of goods and services, otherwise, the registration may be cancelled for non-use.
Limited flexibility: Once a trademark is registered in multiple classes, the owner cannot limit the scope of protection to specific goods or services within those classes.
Objection to Application: Because multi-class trademark registrations cover a wide range of goods or services, they may be more likely to face opposition from third parties who believe the mark is similar to their existing marks
Greater risk of infringement: A multi-class trademark registration may be more likely to be infringed upon by others using similar marks for similar goods or services, which can lead to legal action and financial costs.
Risk of cancellation of registration: If the trademark is not used for a period of 5 years or more and if someone files for cancellation of the registration, the registration may be cancelled.
Risk of confusion: If the class of goods or services is not clearly defined, it may lead to confusion among the public and may lead to a legal dispute.

By Amit Pawar

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