Key considerations of Multi-Class Trademark Application

Introduction

For the purpose of having one's trademark/service mark licensed in fewer than two or more defined classes of products/services; a multi-class trademark application is submitted.

The registration of a trademark gives legal protection against unauthorized use of a licensed brand name. The registration of a trademark is based on the types of products and services. All kinds of goods and services are classified by the ministry into 45 classes. To register a brand under a trademark, the correct type of trademark must be known. It may also happen that more than one class falls under the product. Filing each of the requests separately would be a lengthy process. Also, it's a process that takes time.

Why it is important to file a Multi-class trademark application

• It may be more productive to file a single application containing more than one class in such instances. For a single application, the one preparing the application must enter the details of the applicant, the label, and the corresponding information only once. Also, it is important to docket only one international filing deadline.

• A multi-class application can also retain cash flow by allowing the applicant to pay at the initial filing for just one class. An Office Action will finally be issued forcing the applicant to either pay for the remaining classes or withdraw from the application the unpaid classes. The filing of a multi-class application helps the applicant to delete the denied classes without ever having to pay for the original filing in some situations in which a partial denial may possibly be extended only to a single class.

Key Consideration

1. Single Application

For all the classes submitted, the multi-class trademark application would be regarded as a single application. Both classes would then be processed jointly.

2. Quick to file

Filing each of the requests separately would be a tedious and time-consuming process. In filing a single application for different classes, the details would be specific. In a multi-class program, there would be less documentation.

3. Application fees for trademarks

The government fees for a trademark application would not make any difference. For both a separate application and a single multi-class submission, the fees would be the same. The fees will be Rs. 4500/- for the proprietor or MSME or Startup applicant per class and Rs. 9000/- for other applicants per class. There is also no advantage to the multi-class application relating to the payment for the application for a trademark.

4. Phase delay due to a single application

As it is a single application for all classes, if there is a problem in either class, the entire application would come to a haul. For instance, for 5 classes, an applicant files a multi-class application. If the Ministry sees some problem with one of the groups, the whole request may be kept. Only when a conflict with the other application is fixed can the ministry process the whole application. Therefore it is easier to file individual applications in all classes if there is a question about the brand's availability in one of the classes.

5. Rejection of a submission

If the ministry issues an objection or the third party has risen in one of the classes that are not cleared in the event of opposition, then the whole application will be denied even if the brand would file in other classes. Later on, there is an option to break the apps so that one can get enrollment in other groups. It will take extra time, however, and fees.

6. In each class, a trademark must be used

In each class in which registration is taken, the applicant must use the trademark. There is a chance that the applicant will be active in different classes, but will not be active in all classes. The ministry may cancel the registration in such a case. The applicant must give ample evidence that the use of a trademark in that class is continuous.

Pitfalls Associated with Multi-class trademark application

A multi-class trademark application can have some disadvantages. If an Intent-To-Use is the filing basis for one or more classes, if not all classes are in use, filing the Declaration of Use for each class can become difficult and costly. If the applicant is prepared to file a declaration of use in a trademark application for only one of the two classes, the applicant will have to file a request to divide the parent application and extend the time period for the class not yet in use. Alternatively, under both groups, the applicant may file time extensions. In this case, in order to demonstrate use in one class but not the other, the applicant may pay further fees.

It can take more time to record a multi-class mark. Suppose an Office Behavior receives an application comprising three classes, creating a problem with only one of the three classes. The biggest downside associated with the filing of a multi-class trademark application is the significant risk of the Trade Mark Registry blocking/rejecting the entire application if there is an objection to the registration of the proposed trademark in any of the multiple classes listed.

Multi-class applications are not approved by some foreign countries such as Mexico. Foreign registration of a multi-class US filing can also inevitably lead to a number of single-class foreign applications

Conclusion

If the product or service falls under several classes, the trademark must be licensed in all such classes by the applicant. Otherwise, a similar brand name may be registered in other groups by others. If the brand name is unique, it can be applied in a multi-class application. And if not then it is easier to extend it to all groups separately.

know more about registration of trademarks, see the video below -

BY-

Saumya Krishnani