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How should I choose the class in which to apply for my trademark? [Legal Resource]

Vakil Search
13th Jul 2012
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Every young entrepreneur wants to apply for a trademark, and most often, the question at which he / she stumbles is as to the class in which they must apply for a trademark.

For instance, if a person is running a software company that builds software products for educational purposes, should they get a trademark in the field of education or in the field of software? There is no clear answer to this question.

Or a person who produces chemicals for textiles – Would it fall under the category of textiles or chemicals?

So we devised a test…

In order to solve this question, we advise our clients to apply this two point test:

Point No. 1: Is this trademark for a specific product or for your Company as a whole? Many, many people make this mistake. If I run a software Company which makes 10 products of which 1 is an educational services product, I am in effect a software company and not an educational services company.

So if you want to protect your Company logo or Company name, you need to apply under Class 42 (for software).

On the other hand, if you want to protect the logo of that specific educational services product, you need to file under Class 41, which is the specific class for educational services.

The same test can be applied for the other case where you make chemicals for the textile industry.

Point No. 2: Where is the maximum impact of your product being felt?

Let us take two software related products, Gmail and Tally. Gmail is a cloud based application which helps people send e-mail. Gmail has no affiliation with any one industry or sector. If Gmail stopped working tomorrow, it would disrupt life across sectors and industries, almost without exception. We would characterize Gmail as a classical software product (under Class 42)

However, Tally is a software tool focused on the accounting industry. The collapse of the software industry would not affect Tally much, but the collapse of the accounting industry certainly would. The purpose of the software is exclusively in the field of accounts and book keeping. Hence, we would characterize the product as an accounting product and not as a software product.

Still in doubt?

In most cases, if you have a valuable product or service which you want to protect, it makes sense to get both, the trademark for software and the trademark for educational services (or chemicals and textiles, in the second example).

The marginal cost of getting a trademark (around Rs. 5500, including taxes) is much lesser than the cost you would eventually incur in the event that a rival got a trademark that interfered with your brand.

Having said that, as a start-up when funds are hard to come by, you can start with applying for a trademark in one class and then apply for a trademark in the other classes as soon as funds permit you to do so; It is best not to wait too long however.

Drop in any questions you have in the comments section. 

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