Is it advisable to file trade mark applications in all the 45 classes for a single mark but only being used in a particular type of goods?

Normally, it is not advisable to file trade mark applications in all the 42 classes, when you are using the trade mark for a particular type of goods in a specific class. As it is rightly observed by the Supreme Court of India in a case Vishnudas-Vs-Vazir Tobacco Co Ltd, reported in AIR 1996 SC 2275:

  1. “………… if a trader or manufacturer actually trades in or manufactures only one or some of the articles coming under a board classification and such trader or manufacturer has no bonafide intention to trade in or manufacture other goods or aricles which also fall under the said broad classification, such trader or manufacturer should not be permitted to enjoy monopoly in respect of all th articles which many come under such broad classifications and by that process preclude the other traders or manufacturers to get registration of separate distinct goods which many also be grouped under the broad classification.

     

  2. If registration has been given generally in respect of all the articles coming under the broad classifications and if it is established that the trader or manufacturer who such registration had not intended to use any other article expect the articles beign used by such trader or manufacturer, the registration of such trader is liable to be rectified by limiting the ambit of registration and confining such registration to the specific article or articles which really concern the traders or manufacturer enjoying the registration made in his favour.
  3. In our view, if rectification in such circumstances is not allowed, the trader or manufacturer by virtue of earlier registration will be permitted to enjoy the mischief of trafficking in trade mark….”

Therefore with such observation made by the Apex Court, it is crystal clear that a trader or manufacturer cannot be permitted to enjoy monopoly rights in all the goods or services of services mentioned in a class or all goods in all the classes in Fourth Schedule under the Trade Marks Rules, 2002 for a particular mark. Under the new Trademarks Act, 1999, a “Well Known Trade Mark” seems to have been exempted from the said rule of law laid down by the Apex Court.

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