Is a Trademark Class Bound?

Trademark classes as per Nice Classification

According to the Nice classification used for trademark registration in India, there are 45 total classes, specifying which goods and services fall under which classes. Class 1 -34 talks about the registration of a trademark for “goods”, and class 35 – 45 talks about the registration of a trademark for services.

So, if a company like Himalaya Wellness had registered its drug under Class 5 of the Nice classification, which pertains to Medicines, can it claim its rights over all the other 44 classes?

A common understanding, any mark similar or identical to that of yours would cause confusion amongst the customers. But can a company registered under 1 class claim its monopoly over all other classes? If a company really want to have a monopoly over all other classes, why didn’t it register its mark in all 45 classes in the first place?

It would be a very costly decision; renewals and dealing with all possible opposition would end up consuming more time. So it is advisable to register your mark in those classes where your goods or services might fall. For example, L’Oréal, which is famous for its Shampoos & Conditioners, decides to enter the salon industry. So, to have a registered trademark for their shampoos and conditioners, they’d file trademark registration under class 3 of the Nice classification, which talks about Cosmetics and class 44, which talks about beauty salon and other similar services.

The main reason to get your mark registered is to prevent it from unauthorised use by your competitors, so you are mainly concerned with your particular class. But the situation would not be the same in the case of invented words, like Zomato, Nike, Google, Kodak or Starbucks. As these words never existed, I believe usage of such words without the authorisation of the company using them to any other class shall be illegal and a suitable case for infringement.

The court in the case of N.Ranga Rao & Sons Private Ltd v. Sree Annapoorna Agro Foods, held that usage of the word “Cycle” for edible oil would not infringe the rights of the appellant who uses “Cycle” for agarbatthi & dhoop. The court noted that generic words like cycle wouldn’t be eligible for the kind of protection fanciful or joined words would enjoy in other unregistered classes, too. Similar was the case with NANDHINI DELUXE V. KARNATAKA CO-OPERATIVE MILK PRODUCERS FEDERATION LTD, where usage of the word “Nandhini, Nandini” was at contest, and the court declared that as the word is a generic term, both parties can continue their usage as one was in the milk and its related products and the other was in the restaurant business.

In HIMALAYA WELLNESS COMPANY & ORS. Vs WIPRO ENTERPRISES PRIVATE LIMITED, the court opined that registration of “EveCare” by both the appellant and the defendant in different classes would confuse the customers. Himalaya had registered the trademark “EVECARE” by 2nd December, 1997, under class 5 (medical), whereas the defendant WIPRO Enterprises got “EVECARE” registered as a trademark under class 3 (cosmetics) on 22nd November, 2022. As the class was different, WIPRO didn’t find an already existing EVECARE mark of Himalaya. But both the companies’ products were purposed for the same cause, “maintaining a healthy female reproductive system with uterine and vaginal care being the focus”. Hence, the court ordered in favour of Himalaya for its extensive prior use and the goodwill it had gained in all its years of existence and barred the defendant from further usage of EVECARE.

In Singer Manufacturing Co. v. Loog (18) Ch D 395, the lordships observed that there can obviously be no monopoly in the use of a trademark. A cigarette manufacturer cannot legally object to another cigarette manufacturer for using an identical mark on hats or soap.

In Banga Watch Co. v. N.V. Phillips MANU/PH/0145/1983, the acquisition of an exclusive right of trademark relating to a particular type of article doesn’t entitle the owner of the right to prohibit others from using such mark to totally different goods.

In Rustam Ali v. Bata Shoe Co. MANU/WB/0037/1957: AIR1957Cal120, the division bench has opined that the defendant’s use of the mark BATA on lungis, handkerchiefs would not be infringing the Plaintiff’s mark as the class of goods of the defendant’s deal is never the intended use of the Plaintiff. Goods of being different character would not confuse the customers with those of the plaintiff’s goods.

In Vishnudas Trading Company v. Vazir Sultan Tobacco Company Limited [(1997) 4 SCC 201], the Supreme Court opined that a monopoly under trademark is given to goods which fall in a particular class and not the entire class.

If we look carefully, a generic mark in different classes was allowed. Therefore, to determine whether a trademark protects the proprietor under all other classes where it has not been registered, the answer is no. No, when we talk about the generic marks, but an exception to such is coined or invented words.

But in Somany Ceramics Ltd. v. Shri Ganesh Electric Co.,2022 SCC OnLine Del 3270, the court opined that courts shall be mindful of the future expansion of trademarks of the business of a proprietor of a trademark. So, by considering the Somany Ceramics judgement, we can interpret that any brand registered in one or more classes which might expand into other “related” classes in future has better chances of getting trademark registration. For example, a brand registered under class 30(staple food, cereal, flour) or 31(natural agricultural products) wishes to expand into class 43 (after using their mark for few years in either class of 31 or 30), then such brand will have a better chance of getting registration under class 43 (restaurant and food service).

So, by considering all the above judgements, we can conclude that a generic mark is not subject to greater protection like WKTM or invented or coined words get across all the classes, and a trademark owner is not given the monopoly right across all classes over a trademark registration.

So, to answer the main question, is trademark class bound? Then the answer is yes! One can exercise his/her rights in the classes where they registered their mark.

But protection across all 45 classes is available for well-known trademarks. In the case of Bata India Limited vs Pyare Lal & Co, MANU/UP/0168/1985, the High Court of Allahabad opined that, although Bata was not manufacturing goods like “foam”, the common perception among customers would directly associate Bata, which operates in the footwear business. Bata is a very well-known company, and any similar use or adding its name as a prefix or suffix would make customers believe the product’s source as Bata Footwear. So, despite the company (plaintiff) not operating in foam making, any use of the name Bata per se would infringe the rights of Bata Footwear, as it is a well-known trademark. So the court restrained the defendants from using the term Bata from “Batafoam” and ordered them to use any other word.

Similar was the case of Mahendra and Mahendra vs Mahindra and Mahindra MANU/SC/ 0724/2001, where the court had to decide whether the usage of the words Mahendra and Mahendra by the defendants in classes that Mahindra doesn’t operate amounts to infringement. The court here opined that well-known trademarks are to be seen differently, and protection of well-known trademarks is higher. It further held, the goodwill and reputation earned by the Plaintiff would surely be affected if any deceptive use of its mark is made in classes where it didn’t operate. Hence defendants were restrained.

In my overall understanding of class boundness, I believe coined words or invented words enjoy higher protection despite being registered under one or a few classes. The reason is that these words never existed; they are an intellectual creation by the company that started using them. In a trademark dispute involving the use of a word mark consisting of Kumar, Sinha, Singh, Thakur, Iyer, or any other generic term, proving uniqueness or distinctiveness is difficult. But claiming to be the inventor of the wordmark Netflix for Entertainment Services would be easy to prove, as theword never existed prior and has a distinct and unique identity of itself. So either have a well- known trademark, coined word or an invented word, to have the greater protection across all the classes, despite registering in a few or one.