August 23 2010
Under powers conferred by Section 157 of the Trademarks Act 1999, the government, by way of a notification dated May 20 2010, has made two amendments to the Trademarks Rules 2002.
In Rule 62.3, the following proviso has been inserted:
"Provided that if the Registrar is satisfied with the claim of the registered proprietor supported by evidence that the certificate of registration issued under sub-rule(1) has not been received by the registered proprietor, he may issue duplicate or copy of the certificate of registration without any further payment of fee.
Provided further that, no such duplicate or copy of certificate of registration shall be issued where such request is received after the expiry of the time limit for renewal of registration and restoration of the registered trademark."
This amendment to Rule 62.3 is a welcome change, as there are several cases where the trademark certificate does not reach the applicant and the applicant has no other option but to request and pay for a duplicate. By way of this amendment, the registrar has been given the discretion to issue a copy of the trademark certificate to the applicant without any additional charges, where the certificate has not been received.
Under the new provision, in order to receive a copy of the registration certificate free of charge, the applicant will have to submit supporting evidence demonstrating that the original certificate was not received. The supporting evidence must be to the satisfaction of the registrar.
Further, the amendment provides that a duplicate certificate cannot be issued if a request is received after the time limit for renewal, registration or restoration of the registered trademark has expired.
In the Fourth Schedule to the rules, Class 42 and the entries relating thereto have been expanded and three additional classes added:
"42 Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
43 Services for providing food and drink; temporary accommodation.
44 Medical services, veterinary services, hygienic and beauty care for human beings or animals; agriculture; horticulture and forestry services.
45 Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals."
This amendment, which provides for the inclusion of Classes 43, 44 and 45 in the Fourth Schedule of the Trademarks Rules, is a long-awaited change. The Indian classification of goods and service was based on the eighth edition of the Nice Classification of goods and services which had only 42 classes, but now the classes have been updated to conform to the ninth edition, in which goods are organised in Classes 1 to 34, and services in Classes 35 to 45.
Previously, services falling under Nice Classes 43 to 45 were under the ambit of Class 42, so an application filed outside India under Classes 43 to 45 was filed in Class 42 in India, which led to confusion in claiming priority under these classes in India or vice versa. The amendment will help to remedy this problem. More importantly, major member states of the World Intellectual Property Organisation follow the ninth edition classifications, so it will now be easier to file and receive applications between India and other member states.
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Manoj Kumar Singh