Unanswered Questions
One of our esteemed readers, Dr. Sudhir Ravindran (the founding partner of Altacit Global, a Chennai based firm specialising in Intellectual Property Laws) sent us electronic communication with some very valid examples of these unaddressed concerns, which I reproduce for our readers below:
“1. What happens to those marks which were filed before the notification? for example, earlier service marks for hotel industry were covered under Class 42 now the same is covered under Class 43.
a. If an application is pending registration would an applicant have to reclassify the class?
b. Would he have to pay any additional fees?
c. If the trademark application is published, would the same have to be republished after re-classification?
2. What would happen when the mark comes up for renewal? Would the renewal be granted under the Class 42 or the new Class 44?
3. Since, class 43 is a new class would the registered or pending registered marks under Class 42 for the same services, take priority in the new Class 43. For example, last week a search was conducted on behalf of a client in class 42, who was subsequently advised that the proposed mark was similar to prior/pending registration marks. Now a search in Class 43 would not reveal the same and hence there would be not Sec 11 objections [It is another matter that the prior registered proprietor would likely file an opposition]“
Possible answers
Having read these questions, it seemed (at least to me) that the the notification itself may not be the most perfect example of good drafting! There are no specifics given to provide any clarity on the questions posed- questions that are probably encountered daily, and the answers of which therefore are extremely important to the applicant.
I believe that it is not possible unless specifically stated that the notification of this nature will have retrospective effect i.e. that it will apply to pending applications, or applications already registered.
However, to avoid any future confusion, (again hypothetically) it may be advisable for the applicant to amend his application and re-apply in the new classes that have come into effect on May 20th. In this situation, it is probable that the Registry to facilitate a smooth introduction should allow only for a difference of the fees to be paid, and definitely must advertise the application once again (or cause the same to be done by way of notification which is allowed as per the TM Rules).
Majmudar & Co., an extremely well known firm based in Mumbai and specializing in Intellectual Property Laws (amongst others) has however, in echoing similar opinions as mine above, has also in their weekly newsletter stated that “until the Registry re-classifies the existing registrations and pending applications in class 42, as a precautionary measure, the applicants of service marks in the newly introduced classes will have to carry out the availability search in the class 42 as well, in addition to the specific class.”
If all of this is done, then it is probable that there will be no problem caused in the future with regard to renewal of the mark.
Existing legal structure
To support this theory, I did a quick look into the TM Act and Rules, and (dear readers) am somewhat baffled after I read all of these:
a. Rule 45 read with Sections 20 and 22.
b. Rule 90 read with Section 50
c. Rule 91 read with Sections 58 and 59
d. Section 60.
Having zero practical experience with the Trademark Registry, I am at the moment unsure by what an interpretation of all of these provisions and and others (that our well informed readers have pointed out in the comments section to this post) will imply.
As I understand it, technically the Registrar can take suo moto action and vary the application and/or make corrections in the application (after or before the same is advertised) and/or make the Applicant pay separate fees if he believes that the Class of goods/services applied for can be divided.
And I also understand that all of this action can be taken, with no need for advertisement of the mark again, but only a notification to this effect by the Registrar in the Gazette.
HELP!!!
However, this still leaves unanswered questions about the renewal of marks registered previously, as well as the retrospective effect the notification has (if at all).
Readers, help! Is there any clarity on this yet?
Post Script: This post inadvertently wrongly attributed to another firm, a quote (above) made by Majmudar & Co. (based in Bombay), the correct source. Sincere apologies.
The worst part is that the Asst./ Dpty Registrars themselves are unsure about the procedures though they have strict instructions to follow the new rules brought to effect by way of the subject notification.
Its not difficult to gradually amend the classes; as and when cases come for scrutiny in case for pending cases, it can be at the time of accpetance and for regsitered cases it can be at the time of renewal. There appears no need for filing seperate application, as there is no proble with description only the class needs to be changed. For search, they must allow the filter/ spiders to crawl into the class 42 (for search made in classes 43, 44 and 45 in the transient period)which is not difficult. The application filed in class 42before MAy 20, 2010 can be considered as multiclass application if their desciption falls in more than one class (without paying any additional fee) and pending application can be corrected at the time of examiantion.
Sudheer, Thanks for your efforts!!!
Registry will soon publish a notification saying that all applications filed before the notification will automatically converted in to the new classes with out filing any request/fee.
Arpita,the notification itself is unclear. Then how AR/DR able to react on that?
Hi Sudhir Non of the provisions in TM Act or TM Rules are confusing. What is your confusion.???