How the Vienna Classification Assists in Registration of Trademarks

Recently, India became the 34th member of the Vienna Agreement (1985) by acceding to the three key International Classification treaties of the World Intellectual Property Organization’s (WIPO). India’s accession to the Agreement has majorly resulted from the fast-growing Intellectual Property regime in India, with the aim of fostering and strengthening the fast-growing domestic Intellectual Property regime in accordance with international norms. The Agreement consists of the Vienna Classification - an international classification of the figurative elements of marks. Although India officially joined the Vienna Agreement only in June 2019, it has been following the Vienna Classification for device marks since the enactment of the Trade Marks Act of 1999. This post will discuss the ease in registration of trademarks that this classification has been offering to India.

As is well known, trademarks are broadly categorized into either a wordmark or a logo/device mark that helps in distinguishing a particular company, product, or service from another. It is a category of intellectual property, representative of the brand value or goodwill, that if registered, not only ensures the authenticity of the quality of goods or services it offers but also prevents the unlawful use of the mark from other traders.

In India, the registration of trademarks is carried out under the Trade Marks Act of 1999 along with the Trade Marks Rules of 2017. However, before registration, one must fulfil the initial prerequisite of performing an extensive search to ensure that there are no similar marks in the same class with similar class specification, already in existence.

While this might seem to be a cinch, the issue arises when the mark is a device mark- ranging from different combinations of logo and words, pictures, or drawings, etc. (for instance- the letter ‘M’ of McDonalds is used as the logo for their brand name ‘McDonalds’). This leads to the arduous task of cross-checking the absence of a similar mark under each class. This is where the Vienna Classification comes into play: by facilitating the process of safeguarding the rights of brand owners and the right of entrepreneurs to propose novel brand marks.

What is the Vienna Classification?

In the year of 1975, India became a member of the WIPO to ensure the smooth functioning and administration of the registration of intellectual property, which required certain international standards to be abided by. Meanwhile, the predecessor of the WIPO, the United International Bureaux for the Protection of Intellectual Property (BIRPI), realizing the need for international classification of figurative elements, concluded the Vienna Agreement at the Vienna Diplomatic Conference in 1973. With this, members of the Agreement established the international classification, commonly known as “the Vienna Classification” or “the Vienna Code”.

This classification came bearing a twofold purpose-

1. To facilitate trademark anticipation searches along with obviating substantial reclassification work with the help of the document exchanges at the international level and,

2. To relieve the members from drawing up their own domestic classification or keeping an existing one updated.

How is the Classification utilized to assist in the registration of trademarks?

The Vienna Classification has a hierarchical system in which the figurative elements that a trademark may contain are classified from a general to a specific perspective through a uniform 29 category list, which is further sub-divided into 19 divisions and 30 sections. Regardless of the purpose for which they are used, they are placed according to their shape and assigned a specific number through the coding system.

The generation of this codification through the Vienna Classification is important during the preliminary clearance check for any similar device trademarks.

Let’s take an example to get a better understanding—suppose a trademark application is filed by a jeweller for a device mark containing an image of a lady wearing a necklace. The Vienna code for this would fall under Category 2 of ‘Human beings’, which would further be sub-divided into ‘women’ and ‘neck’. Since it also contains the element of a ‘Necklace’, it would also lay within the ambit of the Category 17 of ‘Horological Instruments, Jewellery, Weights, and measures’ and similarly, would be further subdivided under divisions and sections.

The generated code (either 2.3.1 or 17.2.13) would be used to search under the Indian Trademark database for the clearance check. This database contains three categories for search – Wordmark, Vienna Code and Phonetic. The generated code would be inserted under the category of ‘Vienna Code’. However, it is essential to note that to conduct such a search, the code needs to be entered in the way as it is read i.e., a 6-digit code (for instance- 020301 or 170213).

In furtherance to this, when the desired mark passes the clearance check in the specific class, it can be filed as an application before the Trade Marks Registry in India and eventually be “sent for Vienna codification”, once a formality check of the contents of the application is fulfilled. As soon as a code is assigned to ones’ device mark, it can be sent for examination and published in the Trade Marks Journal for exactly four months. Then, if no opposition is raised within this duration by a third party, the Trade Mark gets registered for a period of ten years under the Indian jurisdiction.

Hence, the Vienna Classification offers substantial assistance in registration of trademarks, as to the international norms. India’s official accession to the Vienna Agreement would not only further help in recognizing India’s trademarks to the global map of the international classification system but also instil confidence in the foreign investors and applicants towards protecting their trademarks in India.

This blog post is written by Sidra Dhawan, member of Legal Entrepeneurship Cell and law student at Jindal Global Law School.