Classification of Goods and Services

The Nice Classification

It comes from the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, a special agreement under Article 19 of the Paris Convention, administered by WIPO and revised periodically.

Forty five classes. Classes 1 to 34 are goods; classes 35 to 45 are services. That division is worth learning, because a candidate who says a hotel's mark goes in class 30 has confused food with the service of providing it.

Each class has a heading and an alphabetical list. The heading is a general indication; the alphabetical list assigns particular items. A specification is drawn from the list, or in terms the Registrar accepts.

Broken down

Four rules follow from sections 7 and 8, and they answer most problems.

1. The applicant proposes, the Registrar decides. An applicant states the class; if there is a dispute, section 7(2) makes the Registrar's decision final.
2. "As far as may be" leaves room. Section 7(1) does not bind the Registrar to the international classification absolutely, and rule 20(2) contemplates Indian goods and services being indexed.
3. The index is a guide, not the source of the power. Section 8(1) is permissive, and section 8(2) sends anything not in the index back to section 7(2).
4. Finality under section 7(2) is finality on classification only. It does not make the Registrar's decision on registrability final, and it does not oust an appeal against a refusal under section 91.

Multi class applications

Section 18(2) allows a single application for different classes of goods and services, and requires the fee payable to be in respect of each class. This is one of the changes the 1999 Act made, and chapter 380 works it with the rules.

Rule 20 read with the fee schedule means that a multi class application is a convenience of paperwork rather than of money: the class fee is payable for each class.

Worked example

Aisha Qureshi makes leather bags and also runs a shop selling other makers' bags and a repair service.

The bags. Class 18, which covers leather and imitations of leather and goods made of these materials, including bags. That is a goods class.

The shop. Retail is a service. It falls in class 35, which covers advertising and business services, and a retail specification is drawn in terms that describe the bringing together of goods for the convenience of customers.

The repair service. Class 37, which covers repair services.

So one trader, one mark, three classes. She may file a single application under section 18(2) naming classes 18, 35 and 37, paying the class fee three times, or three separate applications. Either way she gets, in effect, three registrations, and if she abandons class 37 the others are unaffected.

Now the trap. She registers only in class 18. A competitor opens a bag shop under a similar name but sells only other makers' bags. Can she stop him? Her registration is for goods and his use is a retail service.

She is not without a remedy, and this is where students go wrong. Section 29(2) does not ask whether the classes are the same; it asks whether the goods or services are similar, and section 2(3) says goods and services are associated with each other if the same business might trade in the one and provide the other. A bag maker very plausibly also retails bags. So the class does not decide the case; it merely tells you where the file is.

Class and similarity distinguished

What it does NOT mean

Registration in a class does not give a monopoly over the whole class. The right under section 28 is in relation to the goods or services in respect of which the mark is registered, that is the specification, which is usually narrower than the class heading.

Different classes do not mean no conflict. Goods in class 29 and services in class 43 may be closely associated in trade, and section 2(3) exists to say so.

And the same class does not mean conflict. Class 9 holds spectacles, fire extinguishers and computer software. Nobody confuses them.

The Supreme Court's decision in Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142 makes the practical point. Facts. The appellant had registered Glucovita in class 30 for dextrose powder mixed with vitamins; the respondent applied to register Gluvita for biscuits, also in class 30. Held. Registration was refused, on the overall similarity of the marks and on the connection in the mind of the trade between glucose products and biscuits, the Court also holding that marks on the register prove nothing about what is common to the trade unless their use is proved. Why it matters here. Both marks were in one class, and the class did not decide the case: what decided it was the relation between the goods and the effect on a purchaser. Chapter 740 works the case in full.

Quick revision

s.7(1): the Registrar shall classify goods and services as far as may be in accordance with the International classification. s.7(2): any question as to class is determined by the Registrar, whose decision shall be final.

s.8(1): the Registrar may publish an alphabetical index. s.8(2): anything not in the index is classified under s.7(2).

Rule 20: the NICE Classification, current edition, published by WIPO; the Registrar publishes a class wise and alphabetical index including goods and services of Indian origin.

Forty five classes: 1 to 34 goods, 35 to 45 services. The Nice Agreement is a special agreement under Paris Art.19.

s.18(2): a single application for several classes, with the fee payable for each class.

Classification is administrative. It does not decide similarity of goods; ss.11, 29 and 2(3) do.

Test yourself

1. Which classification does the Registrar use, and under which rule? The current edition of the International Classification of Goods and Services, the NICE Classification, published by WIPO, under rule 20(1) of the Trade Marks Rules, 2017, read with section 7(1) of the Act.

2. Who decides which class goods fall into, and is that decision open to challenge? The Registrar, under section 7(2), whose decision on that question shall be final. The finality attaches to classification only; it does not affect the right of appeal against a refusal of registration.

3. How many classes are there and how are they divided? Forty five. Classes 1 to 34 are for goods and classes 35 to 45 for services.

4. Does registration in class 25 give a monopoly over everything in class 25? No. Section 28 gives the exclusive right in relation to the goods or services in respect of which the mark is registered, that is the specification actually granted, which is usually narrower than the class heading.

5. Two marks are in different classes. Does that settle a conflict between them? No. Sections 11 and 29 ask whether the goods or services are similar, and section 2(3) provides that goods and services are associated with each other if it is likely that the same business might trade in the goods and provide the services. Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142 shows the converse point, that being in one class does not by itself create a conflict either.