Trademark Class | What is it all about?

Trademark means a mark or a symbol which is used in trade or business which distinguishes the goods or services of one person (manufacturer /trader or service provider) from those of others. Manufacturers, traders and or service providers adopt various marks which helps their respective customers to identify the source of the mark (from which manufacturer or trader or service provider the goods or services, the goods are, or services are being provided). A trademark class was adopted by the Indian Trademarks Registry where the different goods and services are being classified in order to identify a particular product or service.
The International Class of Goods and Services for the Purposes of the Registration of Marks was established by an Agreement concluded at the Nice Diplomatic Conference, on June 15, 1957.
The Nice Agreement concerning the International Class of goods and services for the purposes of the registration of marks is an international agreement under the aegis of the World Intellectual Property Organisation. Its purpose, as the name suggests, is to provide an internationally recognized class system of goods and services in respect of which trademarks may be registered. India is a member of the Nice Union of countries and the Indian Trade Marks Registry applies this class system.
Under the Nice Classification of goods and services are categorized in classes, each of which relate to a particular field or fields of commercial activity, for example, food and drink, pharmaceuticals, financial services, etc. The classification consists of 34 classes of goods (classes 1 – 34 inclusive) and 11 classes of services (35 – 45 inclusive).
When a trademark is registered, it may be registered in respect of a particular product or service within a class or for several of the goods or services within a class or, indeed, for goods and services in several different classes depending completely on the nature of business. The registration of a mark in respect of specific products or services serves to define the extent of the protection afforded by that registration.
Therefore, before filing a trademark application, it is necessary to identify the classes in which you wish to seek protection for your trademark.

 FinTech is a new industry that uses technology to improve activities in finance and according to the nature of the business can be classified under
Class 36 Insurance; financial affairs; monetary affairs; real estate affairs and
Class 42 Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
 B2B e-commerce (also written as e-Commerce, eCommerce or similar variants),
short for business-to-business, electronic commerce, is selling products or services between businesses through the internet via an online sales portal. In general, it is used to improve efficiency for companies. Instead of processing orders manually – by telephone or e-mail – with e-commerce orders can be processed digitally.
Class 35 Advertising; business management; business administration; office functions.

Class 42 Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
 Finance Company
Class 36 Insurance; financial affairs; monetary affairs; real estate affairs

 Bakery
Class 30 bakery items including biscuits / cookies; bread; buns; burritos; cakes;
Class 43 Services for providing food and drink;

 E-commerce Lifestyle Company
Class 24 Textiles and substitutes for textiles; household linen; curtains of textile or plastic.
Class 25 Clothing, footwear, headgear.
Class 35 Advertising; business management; business administration; office functions.
Class 38 Providing Telecommunication Channels for Teleshopping Services Including Online Shopping Services
Class 45 clothing rental, evening dress rental, kimono dressing assistance,
personal wardrobe styling consultancy

 Online Business to trade in retail precious stones, jewellery, digital gold
Class 14 Precious metals and their alloys; jewellery, precious and semi-precious stones; horological and chronometric instruments.
Class 16 Printed matter in connection with the scheme for deposit of money against the purchase of gold for a specific period.
Class 40 gold plating, nickel plating
Class 42 Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

 CleanTech
Class 9 Scientific And Technological Services And Research And Design Relating Thereto; Design And Development Of Computer Hardware And Software, Nautical, Surveying,Electric, Photographic, Cinematographic, Optical, Weighing, Measuring, Signalling,Checking (Supervision), Life Saving And Teaching Apparatus And Instruments; Apparatus For Recording, Transmission Or Reproduction Of Sound Or Images; Magnetic Data Carriers,Recording Discs; Automatic Vending Machines And Mechanisms For Coin-Operated Apparatus; Cash Registers, Calculating Machines, Data Processing Equipment And Computers; Fire Extinguishing Apparatus.

Class 35 Business Management Services, Consultancy Services in Wind Resources And Marketing Studies, Power Trading, Trade In Certified Emission Reductions/ Energy Efficiency Etc.
Class 37 Installation of Power Projects, Transmission Lines and Repair Services; Services Relating to Installation & Maintenance of Power Projects, Transmission Lines and Repair Services of Roof-Top Solar Solutions for Industrial, Commercial and Residential Consumers.
Class 39 Service Relating to Energy Distribution, Developing and Distributing Energy Generated by Way of Source of Energy Generation.
Class 42 Scientific and Technological Services and Research and Design Relating Thereto; Design and Development of Computer Hardware And Software For Energy Generation And Transmission, Renewable Energy, Wind Energy, Hydel Energy, Solar Energy, Geothermal Energy, Gas Based Projects, Energy Efficiency, Power Projects, Power Plants And Services Relating To Energy.
 Packaging Industry
Class 06 packaging containers of metals; metallic foils for packaging
Class 07 Packaging machines
Class 16 plastic materials for packaging, plastic sheets, sacks and bags for wrapping and packaging; non-absorbent sheets of plastic for foodstuff packaging, plastic film for wrapping and drying; gift packaging; bubble packs for packaging
Class 17 Polyester Film, Metalized Film, Solar Films, Stamping Foil, Plastic Packaging Materials Including Plastic Hand Bags, Plastic Liners and Plastic New Packaging Materials.; plastics in extruded form for use in manufacture, packing, stopping, stopping and insulating materials, flexible pipes, waterproof packing, plastic sheeting for agricultural purposes; rubber packaging
Class 18 Envelopes, of leather, for packaging; pouches of leather for packaging
Class 20 containers of plastic; packaging containers of plastic
Class 21 Industrial packaging containers of glass, Industrial packaging containers of porcelain
Class 22 Woven Polymer Products Viz, Sacks & Bags, Bulk Bags Jumbo Bags, Fibc Bags, Container Liner, Leno Bags, Bopp Bags
Class 23 Polyester Filament Yarn (Pfy)
Class 39 Transport; packaging and storage of goods; travel arrangement.
 Logistics
Class 39 Transportation logistics
Class 41 Training services relating to logistics
Class 42 Design and development of computer software for logistics; Development of computer software for logistics, supply chain management and e-business portals

 Educational Technology
Class 09 Computer Operating Programs Recorded, Computer Peripheral Devices,Computer Programmers Recorded, Computer Programs downloadable Software], Computer Software [Recorded], Computer Software Product.
Class 16 Books and Periodicals, Magazine, Printed Matters, Printed Publications, Printed Time Tables, Brochure Newspaper Periodicals and Stationery
Class 35 Advertising, Dissemination of Advertising Matter, Outdoor Advertising
Class 41 Educational training
Class 42 Scientific and Technological Services and Research and Design Relating Thereto, Industrial Analysis and Research Services, Design And Development Of Computer Hardware And Software; Computer Programming, Computer Software Consultancy,Computer Software Design
 Manufacturing, designing and selling clothes on online portals
Class 23 Yarns and threads, for textile use
Class 24 Textiles and substitutes for textiles; household linen; curtains of textile or plastic.
Class 25 Clothing, footwear, headgear

Class40 cloth edging,cloth cutting,cloth waterproofing / fabric waterproofing,cloth fireproofing / fabric fireproofing/ textile fireproofing, cloth dyeing, cloth pre-shrinking,clothing alteration, colour separation services, crease-resistant treatment for clothing ,custom fashioning of fur, custom tailoring, custom assembling of materials for others,dressmaking, dyeing services, fabric bleaching, fulling of cloth, fur conditioning,fur moth proofing, fur glossing, fur staining, fur dyeing, leather staining, leather working,permanent-press treatment of fabrics, quilting, sawing of materials, shoe staining,textile dyeing, textile treating / cloth treating, textile mothproofing, wool treating

Class 45 clothing rental, evening dress rental, kimono dressing assistance,
personal wardrobe styling consultancy

PS: Please note the above-mentioned classes is only a reference. Each company will have a different classes solely depending upon the nature of business of that individual company.
For detail list of class of goods and services, you can also check the NICE classes website

Difference between logo mark and word mark

Indian trademark law saw its origin way back in the 1940s with the advent of the Trade and Merchandise Act, 1958, subsequently increasing the need for protecting the trademarks. This upsurge can be attributed to the rise in growth of trade and commerce in the country over the years. Ever since then, the trademark law in India has been amended quite a few times to adapt with the standard of the growth of trade and commerce. Intellectual Property is an intangible property, yet one of the most important assets of a business and hence, businesses looking at the Indian market are the most in need of a trademark protection to safeguard their intellectual property rights.
However, one of the primary questions that arise when a business or a startup decides to protect their brand or trademark is – whether a business should protect its trademark as a word or a logo?

Trademarks in India can be registered in different forms namely word mark, label, logo and device mark and deciding whether to register the mark as a word mark or as a logo as a trademark is the toughest decisions to make for one before applying for registration of a trademark. Although, there isn’t a definite answer for the question, there are many factors which lead to deciding whether a business should register the brand name or trademark, as a logo or a word mark or a combination of both which is termed as a composite mark.

Trademark application as a word mark:

A word mark registers the word a person would want to use and renders stronger and wider protection to that person’s business. Once registration is granted for a word trademark, the applicant has the right to use and represent the word in any format or font which grants it extensive protection including exclusive rights to the word as a whole and also allows the applicant to depict it in various formats regardless of its style for all the goods and services in respect of the mark. In other words, by filing a word mark, one would prevent third parties from using one’s brand name in any regard.

Trademark application as a logo:

A logo or a composite mark on the other hand gives a person the rights in the combination of images, design and words taken together. Therefore, the protection given to the words encompassed in the logo are limited in comparison with the standard word marks since the rights in a logo are entitled only to the logo as a whole. If one wishes to register a particular stylized appearance or a combination of stylized wording, orientation, shape, colour and design, filing a trademark as a logo would be appropriate. In other words, by filing a logo, one would prevent third parties from using the said logo or any other logo deceptively similar, rather than the words incorporated in the logo.
Quite often, the brand name of businesses constitutes both of words and logos rather than just a logo. The safest way to protect the intellectual property in such instances would be to file the trade mark as both as a word mark and as a logo. However, since filing multiple trade mark applications would be an expensive affair, the next safest pick for businesses who are looking at cost efficiency would be to register the trade mark as a word mark.
An ideal example for such a scenario would be that of the well-known brand PEPSI. Since 1962 till date, PEPSI has changed its logo a significant number of times. Had it registered its initial trade mark application as a logo in 1962 and ceased usage of the same each time a new logo was created, then it would have to file a new trademark application for every such new logo created. The initial
trademark application would not protect any of the subsequently created logos. However, since PEPSI registered their trade mark as a word mark, they were able to do away with such redundant hassles. Ideally, separate trademark applications for word as well as logo should be filed to attain the broadest
protection for any business. While big companies might have the budget to justify such multiple applications, this may not seem economical for startup businesses. Hence, it is advisable to file the trademark as a word mark, giving one the next broadest protection against unwarranted infringers.
But again, if a business will apply for word mark registration or logo registration will completely depend on the business strategy since if a logo mark is distinctive enough then the business can go
ahead with the logo registration only. The crux of the story is mainly your client should be able to recognize you as in recognize your brand among all the other competitive brands. Your brand should stand out in the pool of thousands of other brands or competitors. Your brand should be unique or distinctive, whether as a word or a logo or a combination of both.

LexGyaan Startup Series

Series 1 – Co-Founders’ Agreement and other legalities when starting up

Have an idea? Thinking of Starting Up? Or just testing the waters? You might be reaching out to consultants, developers, manufacturers etc. to improve upon your idea. Have you ensured that your idea is protected and you are not losing ownership of your idea or your brand for that matter? Further, as your founding team comes together, it is important to put down expectations on contribution and ownership in a Co-Founder’s Agreement. You then need to decide what kind of entity you want to house your team in. Its also important you take certain precautions. What if the idea materializes into something big? You don’t want to regret not having your developer bound by obligations to hand over the cool product that you conceptualized! This workshop helps you navigate each of these crucial decisions.

This workshop will cover the key issues an entrepreneur needs to tackle at the very outset, including:

– Co-Founders’ Agreement

– NDAs

– Hiring a web developer

– Deciding on incorporating an entity for the business,

– When to quit your current job

– Protecting your idea and your brand through trademark

Coming up:
Series 2: Starting Up
Once you have decided to proceed with you startup idea? What next? Just setting up an entity is not enough. There is hiring to do, NDAs to be signed, IP to be protected, and so on. In this second workshop in the LexStart Startup series, we will be discussing:
– Legal Cheat Sheet – Basic compliances required under the law

– Startup India – How to register? What are the benefits?

–  Hiring: HR agreements, policies and processes,

– Terms of Service and Privacy Policy

– Protecting your intellectual property

Series 3: Legalities of Structuring Incentive Plan for Employees and Advisors

 

ESOPs, Advisor Equity, Mentor Stock, these are the terms you hear a lot these days. But do you understand how each one of these work?In our third workshop of the LexStart Startup Series, we will be discussing legalities of Structuring Incentive Plan for Employees, Advisors and Mentors, including:– What exactly do each of these terms mean – ESOP, Advisory Equity, Mentor Stock

– How do they work and answer questions like – Does the employee have to pay money? Can they get shares upfront? What happens if they leave the company?

– Most commonly used structures, mechanisms and terms

– Tax consequences

Series 4: Fundraising for your Startup
In the last and most important workshop of the LexStart series, we will be discussing the various nuances of the fundraising process, including:

– Overview of process of fundraise

– Structures for fundraise – Convertible Note, Loan, Equity, CCPS!

– Term sheet and the various terms of investment – how to effectively handle negotiations with investors

– Due diligence – what does it mean and what does the process entail

– Share purchase agreement, share subscription agreement, Shareholders’ agreement – understanding the various documents

– What all do you need to do to get money in bank!

Your Brand | Your Strongest Asset

Your brand is the image that differentiates you from your competitors. It identifies your product, your service, your company! It may be represented by a sign, a symbol, a design, a word, a colour, or a combination thereof. It conveys a sense of quality, credibility, customer satisfaction. It plays a crucial role in your marketing strategy and is at the core of your business competitiveness. It generates customer loyalty and has a value. It may become your strongest asset

1.1      Branding Strategies And Business Success

Branding aims at building a distinctive and attractive presence in the market that helps gain and retain loyal customers. Effective branding involves creating an image in the consumers’ minds about the quality of a product or a service, mainly through advertising campaigns centred on the brand. It also requires ensuring the legal protection of the brand against competitors in the relevant markets. Branding strategies are at the core of sustained market competitiveness and business success.

1.2      Brand Creation, Management And Commercialization

Creating a brand implies choosing the signs that will distinguish your products or services from those of your competitors and getting them legally protected. The legal expression of your brand is a trademark. A trademark confers on you the exclusive right to prevent third parties from using the signs that distinguish your brand in the course of trade for identical or similar goods or services. You can register your trademark in India by filing an application at the Trademarks Registry (TMR) within the Office of the Controller General for Patents, Designs and Trademarks (CGPDTM). The registration of your trademark in India will be valid for a period of 10 years from the date of the trademark registration and can be renewed time and again for similar duration of 10 years. Managing your brand implies regularly renewing your trademarks and enforcing your rights against infringers and counterfeiters. The assignment and licensing of trademark rights may play a significant role in brand commercialization through partnership, merger and franchising initiatives.

1.3      Choosing Your Trademark – Best Practices

Creating a brand implies choosing the sign (trademark) that will distinguish your products or services form those of your competitors. In principle, any sign capable of distinguishing your goods or services from those of other undertakings in the market can constitute a trademark. Thus, your trademark may be constituted by a sign, a symbol, a design, a word, a colour, or a combination thereof. However, when choosing your trademark, there are certain requirements or limitations that you need to consider.

The trademark must be distinctive. In other words, it should consist of a sign or a symbol that serves to identify your products or services and distinguishes them from those of other companies/startups. For example, the symbol of Mercedes Benz or a BMW will distinguish the quality of the cars from any other cars in the automobile industry.

  • The trademark should not be descriptive of the specific goods or services that you wish to commercialize. Generic terms used to identify those goods or services, or terms that describe their characteristics, would not be accepted. For example, ALANKAR cannot be an ideal trademark for jewellery since directly or indirectly it is describing the source of the goods or service.
  • The trademark should be capable of being represented. Most trademark offices require graphical representation, even though some also accept other means of representation for special types of marks (e.g., MP3 audio recordings for sound marks). The Indian Trademarks Registry requires that your trademark be graphically represented.
  • The trademark should not be functional, which means that the sign that constitutes your trademark should not consist exclusively of a characteristic that results from the nature of the goods themselves or that is necessary to obtain a technical result. This is especially relevant in the case of three-dimensional marks. For example, A1 or Best.
  • The trademark should not be deceptive. A sign conveying a false origin or false characteristics of a product would be refused for protection on grounds of being deceptive.
  • Most countries would refuse protection as a trademark for signs that are contrary to public order or morality.
  • State flags, State emblems and names and emblems of intergovernmental organizations are excluded from protection as trade marks in most countries around the world.

1.4      Conclusion

Finally, most importantly, you must make sure that the sign you wish to use as your trademark is still available in the market and is not the same as or similar to a well-known mark or a trademark already registered by someone else for the same goods or services. Therefore, it is very important that you make an exhaustive search for the availability of your trademark in those markets where you would like to get it protected.

Also Read – Applying for a Trademark? Here is how you can get a proprietor code.

Applying for Trademark? Here is how you can get a proprietor code

Before creating a Proprietor Code you need to ensure that you have a valid Class III Digital Signature Certificate and the same is installed on your computer.

Proprietor Code can be created online on the Trademarks Registry’s Website. To create a Proprietor Code you need follow the below steps.

  1. Go to http://www.ipindia.nic.in/
  2. Click on Trademarks;
  3. On the next page, click on Comprehensive eFiling Services for Trade Marks;
  4. On the next page, click on No Account? Sign Up;
  5. On the page, click on Proceed for Registration;
  6. The Next Page will display the New User Registration Form; on this page, select “Proprietor” in the type of Applicant and in the Enter Code box, type your (applicant’s) name and click on Search;
  7. On the next page, type your (applicant’s) name in the box and click on Submit;
  8. On the next page, click on Add New;
  9. On the next page, select the Proprietor Category and fill up the form, the form requires basic details like:
    • Name;
    • Address;
    • Nationality;
    • Service Address (where you want all notices to be served);
    • Telephone:
    • Fax;
    • E-mail;
    • Trade Description (Brief description of your business);
    • Trading As (Business Name);
    • Legal Status (Company, LLP, Partnership Firm, Trust, etc.).
  10. Once you have filled the form, click on Submit and a Proprietor Code will be generated.

You need to mention the same Proprietor Code, for all applications made under the same name.

Designing your Stationary? Ensure you include these.

Under the Companies Act in India, every company is required to mention certain items on its letterhead and visiting cards. It is therefore pertinent that you include these items while designing your startup’s letterhead and visiting card.

Protecting your Brand

brand label

Like most companies, when we came up with our name, we were convinced that it is an unique name and getting a trademark registration for the same should be a cakewalk! But this was not to be. When we applied for a trademark, the registry raised an objection stating that the name was not unique enough! But how, I wondered! We don’t have generic terms in our name like “bharat” or “coastal”. And we had also conducted a trademark search before applying for the same. Everything was clear. Then how come this objection?

Well, the Trademark Registry can, on its own raise an objection if the name sounds generic. Does that mean, you cannot protect such a name?

Get a Name Availability Search done for Free!

Not exactly! You can always get a little creative. One way to still protect your brand is by clubbing your name and logo and registering the two as a single label. Do make sure your logo is unique. Also, if your logo is a coloured one, then you may consider registering the logo in black and white. How does it help? Well, registering a label in black and white protects the logo and the label from being replicated in any colour as opposed to registering the logo/label in one particular colour, in which case the logo in that colour gets protected, thus exposing it to the risk of being replicated in a different colour.

Therefore, before applying for registration of trademark, check with your trademark consultant on whether you should apply only for registration of the name of your company or logo or both. It is important you take this call before making applications, and spending on registration fees. After all when you are bootstrapping, every penny counts!

What’s in a name? A lot!

What is in a Name

The first thing I did once we had finalized the name for our start-up was to check if the name was available or if someone had already come up with (what we thought) a brilliant name. When convinced that we actually had come up with a unique name, we proceeded to register it.

We did not wait to register our entity or start the business.

Why in such a hurry? Well your brand/entity name is like your personal name, it’s the identity of your start up. You don’t want to be in a situation where you start with a name, work hard to create a brand and then suddenly midway you have to change it because someone else claims to have the right to use it.

Get a Name Availability Search done for Free!

Heaven forbid, if by that time, your company is profitable and you cannot afford to change your brand name, you may have to shell out a lot of money to get rights to the name. Rights to a name, which became valuable, courtesy your business! I know of a start-up that set up its business, even got enrolled with a prestigious accelerator. At the time of fundraise, the investors insisted on registration of the brand name. That’s when the start-up realized that the brand name they were trading under was already registered to another company. Imagine the pain of rebranding…How do you justify it to your customers, you are anyway in a phase where you are trying to gain their trust and now you have to change your name because of a technicality! Ignorance is not always bliss, you see!

Remember “Intellectual Property” does not mean only a technology or an invention. It also is your brand name or your company’s name. And your priority should be to protect it.

 

Trademark registration cost – INR 6000 – INR 10,000

How to go about it? As soon as you have finalized your name, check on the MCA and IP Registry website, if the name is available. Don’t want to go through the pain of doing it yourself? No problem, just click on this link and leave your details, we will check for availability of your name for free!

Once you have confirmed that the name is available, you can proceed to apply for registration of trademark. Trademark registration can be done online or through a lawyer/law firm or any trademark agent. Registering trademark is not expensive, it will cost you in the range of INR 6000/- to INR 10,000/- per trademark registration (including the statutory fees of INR 4000/-). It is a painless process and requires probably just a couple of hours of your time once you have identified the right consultant!

In my next post, I will share with you some valuable considerations for trademark registrations. Till then, I hope you all have double checked and ensured that you “own” your names!