India: "Nice" Amendment To The Indian Trade Marks Rules

Last Updated: 10 June 2019
Article by Gowree Gokhale, Prerak Hora and Aarushi Jain


In India, the Trade Marks Act, 1999 ("Act") for the first time introduced service marks so as to bring the Indian trademark law in line with TRIPS, which contemplates registration of service marks for services in addition to trademarks for goods.

India has been following the International classification of goods and services under the Nice Agreement ("NICE Classification"), and the same is incorporated in the Fourth Schedule to the erstwhile Trade and Merchandise Marks Rules, 1959 and now Trade Marks Rules, 2002 ("Rules").

Under the Rules, the Fourth Schedule is divided into 42 classes under which classes 1-34 relate to registration for goods and classes 35-42 cover various services for which a service mark can be registered.


The Fourth Schedule has recently been amended vide a notification dated May 20, 2010 ("Amendment") 1 to include three additional classes of services to the pre-existing ones, thereby raising the total number of classes to 45. The Amendment also modifies the existing class 42 and adds the following additional classes to the list of existing class of services:

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.


The Nice Classification which originally had 42 classes was amended by its 8th edition in January 1, 2002 to add 3 new classes i.e class 43, 44 and 45 to the existing ones. The recent Amendment has the same effect in India and brings the number of classes under which registration of trademark is permissible, in line with the Nice Classification. The language of class 42 has also been modified and adopts verbatim the language of class 42 of the Nice Classification.

The erstwhile class 42 was mainly in the nature of a residuary clause and inter alia covered services that cannot be classified in other classes. The amendment makes the services covered in class 42 more specific and distributes the services that usually came under the purview of the residuary provision of class 42 to the newly added classes 43 to 45.

There are certain open ended issues which the Government ought to have considered at the time of amending the Rules, which are discussed below:

Pending Trademark Applications

The Amendment does not clarify whether the amendment provisions will also be applicable to the trademark applications already filed but pending registration as on the effect date of Amendment. For example, a hotel owner would have filed for his service mark in class 42. However, as per the Amendment, hotel services now fall under class 43.

The pending applications ought to be given the benefit of the new classification, by calling upon the applicants to reclassify their application during the prosecution process. Although this may delay the registration process as well as increase the existing workload of the Trade Marks Registry, the Amendment is sure to benefit the applicants at large.

Further, the fate of existing Opposition proceedings would also be jeopardized. For example, consider two trademark proprietors being entangled in an opposition proceeding against each other with respect to their respective mark filed under class 42 (i.e. before Amendment). One of the proprietors has a well-known, global and registered trademark covering software development services whereas the other proprietor's trademark application is a new application covering security services. Post Amendment, the services of the former proprietor would remain under class 42 whereas the services of the latter would fall under class 45. Without going into the merits, it would be pertinent to see as to how the fate of such opposition proceedings would be decided.

US had applied the new requirements of the 8th edition of the Nice Agreement to applications filed on or after January 1, 2002. Applications filed before January 1, 2002 followed the requirements of the 7th edition of the Nice Agreement. However, the applicant could, of its own accord, submit an amendment to its pending application that brings it into compliance with the 8th edition of the Nice Agreement. Further, the Examining Attorney could at his discretion give the applicant the option of remaining in compliance with the 7th edition of the Nice Agreement or amending the application to comply with the classification requirements of the 8th edition.

Registered Trademarks

As regards marks already registered under class 42, as per the Amendment, some registered trademarks may actually fall under new classes. Hence, an exercise of reclassification should ideally be undertaken so as to give true identity to the services for which the mark is applied for.

Further, at the time of renewal of an existing class 42 registered trademark, it is not clear whether the renewal would have to be undertaken under the same class even if the said mark falls under a different class, say class 45, post Amendment.

In some countries after amendment in the Nice Classification in 2002, the Registrar introduced process requiring reclassifying services originally included in Class 42, at the time of their renewal. Similar process should be undertaken by the Indian Trade Marks Registry as well.

However, the United States Patents and Trademarks Office or USPTO did not reclassify existing registrations according to the 8th edition of the Nice Agreement upon renewal of those registrations. Registrations remained classified according to the Nice Agreement edition that was in force at the time of registration.


It is a common practice to conduct a trademark search to clear conflict before proceeding to file a mark in a particular class as this helps in minimizing the potential risk of opposition from infringement action by a proprietor of a similar mark. Post Amendment, a person proposing to register a mark in any of the newly added/modified classes will still have to run a conflict search in erstwhile class 42 to minimize the risks and avoid conflict situation in future. Further, the Registrar also will have to conduct search for both classes while examining the trademark application.

A clarification in the aforementioned aspects will fill in the lacunae in the Amendment and will be help in maintaining an accurate and Trade Marks Register. However, till the time such clarifications are issued, it is advisable for proprietors of pending and registered class 42 marks to also file for trademarks applications in the newly introduced three classes, if the description of their services falls in newly added classes.



The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions