News from the Indian Patent Office (IPO)

Date: 23.8.2010
PUBLIC NOTICE
In super-session to the Public Notice issued in the Trade Marks Journal No. l443 dated l" July, 2010 to give effect to the division of class 42 into classes 43, 44 and 45 vide Notification № G.S.R. 428(E) dated 20.5.2010 in the Gazette of India Extraordinary, the following amended Public Notice is issued after receiving suggestions at a meeting of Stakeholders, Advocates and Trade Marks Attorneys held under the chairmanship of Controller General Patent, Designs and Trademarks on 21.8.2010 at Indian Patent Office, Mumbai.
There are at present 20,123 registered trade marks and 50,397 pending marks in class 42 as on date' The services as are covered by such registration may now fall either in class 42, 43, 44 and 45 under the new specification of services notified by the Government of India Gazette notification dated 20.5.2010. The said registration shall be deemed to have been validly made for all intents and purpose irrespective of the services covered by such registration falling in any of the classes 42 to 45. This would however not preclude such registered proprietor, if they so desire, to file a request in for TM-40 and apply for conversion into the appropriate class in terms of Rule 101 of the Trade Marks Rules, 2002.
The renewal of such marks will also be made in the same class and would provide same remedies under the Act, as if the said registration/ renewal is made in the corresponding class/classes.
The trade marks as are already published under the Trade Marks Journal for applications falling under Class 42 shall proceed to registration in accordance with the procedure prescribed under law. Such registration, if granted, would be treated in the same manner for the purposes of the registration, classification and renewal in which the existing registered trade marks are treated under terms hereinabove.
In so far as pending applications are concerned which are. awaiting examination the Examiner of Trade Marks will intimate to the applicant the service for which the mark as applied for registration would fall in appropriate class/ classes as per the
existing/ amended services and require the applicant to either restrict the services faring in a particular class for which the application has been made or to file a request in the prescribed manner along with the requisite fee for division in one or more classes as the case may be.
In case of such division the priority date of the application shall be maintained.
In cases where the application has been examined under crass 42 and have been objected and on consideration of reply to the objection or on hearing the matter, if the same found acceptable, such cases will be re-examined to determine the relevant class under which the service sought to be covered by the registration. On such re-examination, if the services covered by the application to fall under the same or other classes, the Examiner will notify the applicant either to restrict the services falling in a particular class for which the application has been made or to file a request in the prescribed manner along -with the requisite fee for division in one or more classes as the case may be.
All new applications for class 43 to 45 with effect from 1st July, 2010 would be accepted by the Registry in accordance with the new specification of services.
In the case of pending opposition to the marks advertised under class 42, the opposition in relation thereof would be deemed to have been validly filed irrespective of the services falling under that particular class or other class or classes under the new specification of services.
While examining new trade mark applications under class 43, 44 and 45, the Examiner will search Class 42 also.

(P.H.Kurian)

Controller General of Patents, Designs and Trade Marks