Authored By – Dr. Mohan Dewan
In India, it is possible to file a multi-class application as well as individual applications for the registration of a trademark in different classes. However, it is recommended that one must file separate applications in each class. Unlike in other jurisdictions, such as Europe, there is no advantage in terms of official fees. Irrespective of the type of application, the government fee is calculated on a per mark per class basis.
When a mark filed in a multiclass mode is accepted for publication in the Indian Trademark Journal and subsequently for registration when a certificate is issued for an application filed in the multi-class mode, the publication as well as the certificate shows that the mark has been accepted and the Certificate has been issued in class 99.
This method was adopted by the Trademark Registry in India for the digital process because when the original IT module of the Trade Marks Registry was created and designed, it was designed when the multi-class application filing mode did not exist in India.
The software module would have required considerable overhauling to accommodate this mode and this device of using class 99 for multiclass application at the time of publication and at the time of issuance of certificate was used as a compromise. However, the actual classes in which the application was filed and ultimately the mark is registered appear both in the publication as well as in the Certificate of Registration. Therefore, for all practical purposes the class 99 noting may be ignored.
However, when it comes to litigation, it becomes difficult to explain to the Court what is the meaning of the application registered in Class 99.
Lastly, in the software module of several clients’ companies, which do not have any provisions for accommodating in Class 99, changes are required to be made to accommodate this variation and the actual class details need to be physically and manually entered.
In India, we recommend to our clients that instead of filing a multi-class application individual application should be filed in each class, particularly because there is no cost benefit either in respect of official fees or in professional fees.