In response to what has presumably been a never-ending series of complaints from practitioners, the Controller General of the Intellectual Property Office has issued a notice to supercede all previous notifications on the reclassification of services in the TM Schedule front, which we have covered here before.
Following a meeting with stakeholders on 21 August 2010, the CGPTDM issued this notice (downloadable file), which suggests that the Trademarks Registry has seriously been rethinking about its previous advice to TM registrants, applicants, and practitioners.
The present notice, dated 23 August 2010, makes some critical observations on pre-existing registrations and advertised marks in class 42,. I summarise what I understand from the notification below —
- Marks already registered in class 42 as on date will remain registered in class 42, irrespective of which services their classes now fall in.
- However, this will not preclude proprietors in class 42 to voluntarily apply for conversion into separate classes under Rule 101 of the TM Rules.
- Renewal of such registered marks (in class 42) will also be made in the same class.
- Marks already advertised in the journal in class 42 shall proceed to be registered in the same class, and upon registration, shall be treated in the same manner for the purpose of registration, classification and renewal, as the existing registered trademarks.
In re pending applications, the notice makes the following observations –
- With regards those marks awaiting examination, the Examiner is expected to inform the applicant of the appropriate class/es into which their goods fall, and make amendments or restrictions accordingly.
- Where the application is to be split into multiple classes, the priority date of the application shall stay.
- Where applications have been examined and responded to already, there will be a reexamination to check for classification of services, which the Examiner will inform the applicant about.
In addition, the notice also informs about pending oppositions to marks in class 42, which will remain valid. New applications in classes 43 to 45 will now be examined with respect to class 42 as well.
Arguably, this appears to be a much more rational/reasoned notice than the one issued previously, and keeps in mind particularly the concerns of applicants as also the workload of those at the Registry.
With reclassification of pre-existing registrations no longer appearing to be mandatory, costs for applicants will be lower or nil. There remains some work for the Examiner though, who will have to examine each application in any of the new classes in light of registrations in class 42 as well.
