Should you file a Single Trademarks application for Multiple Trademark Classes? or File a Separate Trademarks application for each class?

What do you mean by Trademarks?

A trademark is a recognizable sign, design, or expression which identifies products or services of a particular source from those of others. It can be a word, phrase, symbol, design, or a combination of these elements. Essentially, trademarks serve as a form of intellectual property protection for brands, ensuring that consumers can easily distinguish one brand's goods or services from those of competitors.

Trademarks can be registered with government authorities to provide legal protection against unauthorized use by others. This protection allows trademark owners to take legal action against anyone who uses their trademark without permission, including counterfeiters and competitors who may try to confuse consumers by using similar marks.

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What do you mean by Trademarks application?

A trademark application refers to the formal process of applying to register a trademark with the appropriate government authority. This process involves submitting an application that includes information such as the trademark itself (word, logo, etc.), the goods or services it will be used in connection with, and details about the owner of the trademark .

The trademark application typically undergoes examination by the trademark office to ensure that it meets the legal requirements for registration, including distinctiveness and non-conflict with existing trademarks. If the application is approved, the trademark is registered, providing the owner with exclusive rights to use the mark in connection with the specified goods or services within the jurisdiction covered by the registration.

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What is the Trademarks class for Multiple class application?

A multiple class application allows for the filing of a single application to cover multiple classes of goods or services under trademark law. When filing a trademark application for multiple classes within a single application, it is categorized under Class 99. However, the application is organized and separated according to the specific classes relevant to the goods and services being protected. Each class is properly delineated within the Class 99 application, ensuring clarity and accuracy in the classification of goods and services.

Suppose , if a company offers both software development services (Class 42) and online retail services (Class 35), they could include both classes in a multiple class application.

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Now coming to the main question, whether you should file a single trademarks application for multiple classes or file a separate application for each class?

The answer to the same is, you should always file a separate application for each class. Because of the following reasons:

No difference in fee: There is no difference in government fees whether you file a multiple-class application or separate applications for each class.

Let's illustrate this with an example:

Suppose you need to file a trademark application for your brand in Class 30 and Class 31. Even if you file them together in a multiple-class application, the fee will still be charged on a per-class basis. This means that whether you file two separate applications, one in Class 30 and one in Class 31, or file them together in a multiple-class application, the fee will remain the same.

Chances of Acceptance: The chances of acceptance in case of Multiple class application are lower as compared to that of separate application for each class.

Let's illustrate this with an example:

Suppose you need to file a trademark application for your brand in Class 21, Class 25, and Class 28. In such a scenario, if there's a possibility of objection under any of these classes, let's say objections under section 11(1) arise in Class 25 and Class 28, then the trademark won't be accepted until all objections across all classes are addressed, either through replies or during hearings. For instance, if you respond to the objection for Class 25 and the examiner is satisfied, but not for Class 28, the mark's examination will proceed to a hearing. This process is time-consuming. Let’s say, If you filed the application in 2024, the formalities, including hearings, might not conclude until 2026 or later, leaving your mark objected for an extended period.

However, if you filed separate applications for each class, the outcomes would differ. For instance, your application in Class 21 could be accepted and advertised promptly, leading to the issuance of your registration certificate within four months. Similarly, if your reply for Class 25 is satisfactory, it could also be accepted and registered relatively quickly. Meanwhile, the decision for the Class 28 application might be delayed until 2026. Therefore, by filing separate applications for each class, there's a higher likelihood that your mark will be accepted in one or more classes, possibly resulting in faster registration overall.

Chances of Refusal: The chances of refusal in case of Multiple class application are higher as compared to that of separate application for each class.

Let's illustrate this with an example:

Suppose you need to file a trademark application for your brand in Class 03, Class 05, and Class 35. In such a scenario, if there's a possibility of objection under any of these classes, let's say objections arise under section 11(1) in Class 05 and Class 35, then the trademark won't be accepted until all objections across all classes are addressed, either through replies or during hearings. For instance, if you respond to the objection for Class 05 and the examiner is satisfied, but not for Class 35, the mark's examination will proceed to a hearing. Suppose at the hearing, the examiner isn't convinced by the merits and supporting documents, leading to a refusal order. This means that even if there were no objections in Class 03 and you satisfied the examiner for Class 05, if you couldn't prove the merits for Class 35, the entire application would be refused, including the other applied classes.

However, if you filed separate applications for each class, the outcomes would differ. For instance, your application in Class 03 could be accepted and advertised promptly, leading to the issuance of your registration certificate within four months. Similarly, if your reply for Class 05 is satisfactory, it could also be accepted and registered relatively quickly. Meanwhile, if your application under Class 35 gets refused at the hearing due to a lack of merits, you would still have registration certificates for Class 03 and Class 05. Thus, the refusal of your application in Class 35 wouldn't negatively impact the other classes.

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In conclusion:

• Fees: Whether you file a single trademark application for multiple classes or separate applications for each class, there is no difference in government fees.
• Chances of Acceptance: Multiple-class applications often have lower chances of acceptance due to objections affecting all classes, leading to potentially lengthy examination processes.
• Chances of Refusal: The likelihood of refusal is higher in multiple-class applications, as a refusal in one class can impact the entire application, causing delays and complications.
• ?Flexibility and Risk Mitigation: Separate applications offer greater flexibility and a higher likelihood of acceptance. They can lead to faster registration and minimize the risk of refusal by isolating potential objections to specific classes.

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Considering these points, it's generally advisable to file separate applications for each class to maximize the chances of successful trademark registration and mitigate potential risks.

When deciding whether to file a single trademark application for multiple classes or separate applications for each class, it's crucial to consider several factors. While there is no difference in government fees between the two options, multiple-class applications often face lower chances of acceptance and higher risks of refusal. Separate applications offer greater flexibility and risk mitigation, allowing for faster registration and minimizing the impact of objections on specific classes. Therefore, to maximize the likelihood of successful trademark registration, it's generally recommended to file separate applications for each class.

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In case you have any other queries regards Trademarks procedure, then please feel free to contact the author.

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About Author:

Harshdeep Singh Narula, a practicing Company Secretary (CS) and Fellow member (FCS) of ICSI, brings over 5.5 years of expertise to the field. Specializing in Intellectual Property, Corporate Laws and Startup advisory, and is said to be a trusted advisor for businesses, ensuring compliance and success through his commitment to excellence and ethical practices.

You may reach out CS Harshdeep on: WhatsApp / Phone No.: 98780 67337, 82876 02186 or at Email: [email protected] , [email protected]

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