Multi Class Applications and Division
Chapter Thirty-Eight
Syllabus topic 1.4, "Conditions and Procedure for Registration of Trademarks."
Pages 168 to 170 of 742
In one line
One application may cover several classes, and it can be split later without losing its date, so the real question is how wide to claim in the first place.
In the wording a student can write in an exam: section 18(2) permits a single application for registration of a trade mark for different classes of goods and services, the fee being payable in respect of each class; and the proviso to section 22 provides that where an amendment involves the division of such an application into two or more, the date of making of the initial application shall be deemed to be the date of making of the divided applications.
Why multi class filing was introduced
It was one of the changes the 1999 Act made, and the Controller General's own note lists it: the Act "provides for filing of a single application for goods or services falling in more than one class". Under the 1958 Act each class required its own application.
What it saves is administration, not money. Section 18(2) requires the fee in respect of each class, so the official cost is the same. What is saved is the paperwork of separate applications, separate files and separate renewals.
How wide to claim
The two pressures pull in opposite directions, and an answer should say so.
Claim widely, and you get reach. The exclusive right under section 28 is in relation to the goods or services in respect of which the mark is registered, so what is not claimed is not covered, except so far as section 29(2) reaches similar goods and section 29(4) reaches dissimilar goods for a mark with a reputation.
Claim widely, and you also get exposure. Three consequences follow, and each is a separate risk.
- More objections. Every class searched is a class in which an earlier mark may be cited under section 11.
- More opponents. Each class advertised is a class in which a trader may oppose under section 21.
- Non use. Section 47 permits removal for non use, and a specification covering goods the proprietor never sells is vulnerable in respect of those goods. A registration is only as strong as the use behind it.
The working answer. Claim what is used, what is genuinely proposed to be used, and the natural neighbours of both. Chapter 830 works section 47 and shows what happens to the rest.
Division
Two different powers, and students confuse them.
Division of a multi class application, under the proviso to section 22. Used where one class is clear and another is opposed or objected to. The clear class proceeds to registration and the contested one is fought separately, and both keep the original date.
Multi Class Applications and Division
Division of a series application, under rule 27(2). Used where the Registrar is not satisfied that all the marks constitute a series. The request is made on Form TM-M at any time before publication in the Journal, and divisional fees are payable.
Both preserve the date, which is what makes division worth doing at all.
Worked example
Kabir Sethi sells running shoes and has just begun selling sports drinks. He is planning a chain of gyms.
What he files. A single application under section 18(2) for class 25 for footwear, class 32 for non-alcoholic beverages, and class 41 for sporting and fitness services, paying the class fee three times.
What he claims in each. Class 25 on the basis of use since 2021, with the affidavit rule 25(2) requires. Class 32 on use since 2026. Class 41 as proposed to be used, since the gyms are not open, which section 18(1) permits.
What happens. Classes 25 and 32 are accepted and advertised. In class 41 an earlier mark is cited under section 11(1) and the objection cannot be answered quickly.
Division. Kabir applies under the proviso to section 22 to divide, so that classes 25 and 32 proceed to registration now. The divided applications keep the original filing date, so nothing is lost.
Three years later. The gyms never opened and no drinks were sold after the first year. A rival applies under section 47 to remove class 41 for non use and to cut down class 32. The class 41 registration is very vulnerable, because it was filed on proposed use and no use followed. Class 32 is vulnerable in respect of anything Kabir never sold.
The lesson. A wide specification is not free. It costs the class fee, it invites objections and oppositions, and it is exposed under section 47 once five years and three months have run.
Narrow and wide specifications compared
| Narrow | Wide | |
|---|---|---|
| Reach of s.28 | Limited to what is claimed | Wider |
| Objections under s.11 | Fewer | More |
| Oppositions under s.21 | Fewer | More |
| Exposure under s.47 | Low | High, for goods never used |
| Cost | One class fee | One per class, s.18(2) |
| Ability to expand later | A fresh application, with a fresh date | Already covered |
What it does NOT mean
A multi class application is not a single registration. It is one application covering several classes, and each class stands or falls on its own. Division under the proviso to section 22 exists precisely because they can diverge.
Filing in a class is not a substitute for use. Section 47 removes what is not used, and a registration covering goods a proprietor never sold gives him no real protection while inviting an application to rectify.
Multi Class Applications and Division
And the class does not decide similarity. Section 29(2) asks whether the goods or services are similar, and section 2(3) provides that goods and services are associated where the same business might trade in the one and provide the other. Chapter 170 works the point.
Quick revision
s.18(2): a single application for different classes, the fee payable in respect of each class. One of the changes the 1999 Act made.
Proviso to s.22: on an amendment involving division of a single application, the date of the initial application is deemed to be the date of the divided applications.
r.27(2): division of a series application, on Form TM-M, before publication, on payment of divisional fees.
The trade-off: reach against exposure. What is not claimed is not covered, but what is claimed and not used is removable under s.47 after five years and three months.
Test yourself
1. What does section 18(2) permit, and at what cost? A single application for registration of a trade mark for different classes of goods and services, the fee being payable in respect of each such class.
2. What is preserved on division of a multi class application? The date of making of the initial application, which is deemed to be the date of making of each of the divided applications, under the proviso to section 22.
3. Give two risks of an over-wide specification. Any two of: more earlier marks may be cited under section 11; more traders may oppose under section 21; and the registration is exposed to removal under section 47 in respect of goods the proprietor never uses.
4. Distinguish division under section 22 from division under rule 27(2). Section 22 divides a multi class application into separate applications, typically so that a clear class can proceed while another is contested. Rule 27(2) divides an application for marks filed as a series under section 15(3) into separate applications for one or more of those marks, and must be requested on Form TM-M before publication in the Journal.
5. Does registration in a class protect against use on goods in another class? Not by itself. Section 28 gives the exclusive right in relation to the goods or services for which the mark is registered. Section 29(2) may reach similar goods, and section 29(4) may reach dissimilar goods where the mark has a reputation in India, but the class as such decides nothing.
The rest of this subject
These notes are cut from the University's printed syllabus. Open the syllabus itself, or the past papers, for the same subject.