This article has been written by Ms. Samriddhi Vishen, a 2^nd year LL.B. student of Shri Jai Narain Misra PG College (KKC), Lucknow.

Goods and services have been classified in the manner specified in the Fourth Schedule of the Trade Marks Rules, 2002 for the purposes of trademark registration. 

Trademarks may be registered under one class of products or services or under several classes, either as a single mark, a component of a larger mark, a series of marks, or associated marks, etc. They are crucial because, subject to certain rules and criteria, identical or almost identical marks registered for wholly unrelated classes, such as vehicles and washing powder, may be permitted. The general content of numbered international classes can be immediately identified as the goods and services listed in the Fourth Schedule provide a means for it. It doesn’t intend to be exhaustive and corresponds to the major content of each class.

There are 45 classes of goods and services that can be registered as trademarks. 34 of these classes are under the “TM Class for Goods” ambit, while the remaining classes are covered under the “TM Class for Services” ambit. This article attempts to explain the provisions related to goods and services under Class 2 of the Trademarks Act. 

Concept of Trademark Class 2

This particular trademark class covers all varieties of paints, lacquers, varnishes, etc. Even the preservatives required to prevent wood from rotting, being damaged, and corroding are included.

It also includes metal that is used in dyes, foils, colorants, and raw natural raisins, among other things. This means that Trademark Class 2 encompasses all varieties of Paint and associated products utilized by a Painter.

“Berger Paints” by Bergers Paint India Private Limited is one of the most well-known examples of Trademark Class 2.

Categories of Trademark Class 2

Paints, lacquers, varnishes, preventatives against rust and against deterioration of wood, colorants, mordants, raw natural resins, and metals in foil and powder form for decorators, printers, and painters are the subcategories of this particular class. Dyes for clothes and colorants for foods and beverages are also included in this class.

List of Good under Trademark Class 2 of the Act

• Alizarine Dyes
• Aluminium Powder For Painting
• Aluminium Paints
• Aniline Dyes
• Annotto [Dyestuff] / Annatto [Dyestuff]
• Anti-corrosive Bands
• Anti-corrosive Preparations
• Anti-fouling Paints
• Anti-rust Oils
• Anti-rust Greases
• Anti-rust Preparations For Preservation
• Anti-tarnishing Preparations For Metals
• Asbestos Paints
• Auramine
• Bactericidal Paints
• Badigeon
• Binding Preparations For Paints / Agglutinants For Paints
• Bitumen Varnish
• Black Japan
• Bronze Powder For Painting
• Bronzing Lacquers
• Canada Balsam
• Caramel [Food Colorant]
• Carbon Black [Pigment]
• Carbonyl [Wood Preservative]
• Ceramic Paints
• Coatings [Paints]
• Coatings For Roofing Felt [Paints] / Coatings For Tarred Felt [Paints]
• Cobalt Oxide [Colorant]
• Cochineal Carmine
• Colophony
• Colorants* / Dyestuffs
• Colorants For Liqueurs
• Colorants For Beer
• Colorants For Butter
• Colorants For Beverages
• Copal
• Copal Varnish
• Creosote For Wood Preservation
• Distempers
• Dyes*

• Dyewood Extracts / Wood Dyestuffs
• Dyewood / Coloring [Colouring] Wood / Dye-wood
• Enamels [Varnishes]
• Enamels For Painting / Enamel Paints
• Engraving Ink
• Fireproof Paints
• Fixatives For Watercolors [Watercolours] / Fixatives For Watercolors / Fixatives For Watercolors
• Fixatives [Varnishes]
• Metal Foil For Painters, Decorators, Printers And Artists
• Food Dyes / Food Colorants
• Gamboge For Painting
• Glazes [Paints, Lacquers]
• Gum Resins
• Gum-lac / Shellac
• Indigo [Colorant]
• Ink For Skin-dressing
• Ink For Leather
• Lacquers
• Lamp Black [Pigment]
• Lime Wash
• Malt Caramel [Food Colorant]
• Malt Colorants
• Marking Ink For Animals
• Mastic [Natural Resin]
• Metals In Powder Form For Painters, Decorators, Printers And Artists
• Mordants*

• Natural Resins, Raw
• Oils For The Preservation Of Wood / Preservative Oils For Wood
• Orange Lead / Litharge
• Repositionable Paint Patches
• Paints*
• Paper For Dyeing Easter Eggs
• Pigments
• Primers
• Printers’ Pastes [Ink] / Printing Compositions [Ink]
• Printing Ink
• Protective Preparations For Metals
• Red Lead / Minium
• Saffron [Colorant]
• Sandarac
• Shoe Dyes
• Siccatives [Drying Agents] For Paints
• Sienna Earth
• Silver Emulsions [Pigments]
• Silver Paste
• Silvering Powders
• Soot [Colorant]
• Stains For Leather / Mordants For Leather
• Sumac For Varnishes
• Thickeners For Paints
• Thinners For Lacquers
• Thinners For Paints
• Titanium Dioxide [Pigment]
• Toner Cartridges, Filled, For Printers And Photocopiers
• Toners [Ink] For Photocopiers / Ink [Toner] For Photocopiers

• Turmeric [Colorant]
• Turpentine [Thinner For Paints]
• Undercoating For Vehicle Chassis / Undersealing For Vehicle Chassis
• Varnishes*
• White Lead
• Whitewash
• Wood Stains
• Wood Mordants
• Wood Preservatives
• Wood Coatings [Paints]
• Yellowwood [Colorant]
• Zinc Oxide [Pigment]

Registration of Trademark Class 2 

• Search for trademarks- Find trademarks that are identical to or similar to those that are currently listed with the Trademark Registry. The only way to search for trademarks is via the Trademark Registry Online website. The owner of a file a trademark application upon finding a unique name that is distinctive from others. 

• Filing a trademark application- After the trademark search is finished, a trademark application will be submitted to the registrar. Applications for registration must include the following details: registration mark; information on the owner; a list of the goods and services the trademark must include; trademark classification.

The owner may file the trademark registration application online or offline once it has been completed and contains all necessary information. While offline applications must be mailed to the Trademark Registry office, online applications need a Digital Signature Certificate.

After the application is submitted, a Registrar will examine it to see if there are any discrepancies. The exclusivity of the name will then be determined by the Registrar after reviewing any pending trademark registration applications and previously registered marks.

• Allotment of a trademark application- 

After submitting an application to the Trademark Registrar, a Trademark Application Allotment Number will be provided in 2–3 business days. Applications for trademarks are trackable online. The Trademark Application Allocation Number can be used to add a TM symbol to a company’s logo.

• Examining trademarks- The Trademark Officer at the Trademark Registry Office is contacted to study the Trademark Application, verify its accuracy, and issue the Trademark Examination Report. An application for publication in the trademark journal may be accepted or rejected by the trademark officer, who may also file a complaint over an application for trademark registration.

• Trademarks Published in Trademark Journals- Anticipated trademarks are circulated in trademark journals. The Trademark Journal contains a list of the trademarks that the Trademark Registrar has accepted. Every week, the Journal is published. Those who think that the trademark’s registration will violate their rights may object. If no objections are raised within 90 days, the trademark will become permanent for the entity registering.

• Trademark registration- If the Registrar does not receive any opposition to the Trademark Application or Trademark Journal, a Trademark Certificate will be issued.

Requirements for Registration of Trademark Class 2 

• Information about the brand name, symbol, logo, or slogan that needs to be registered as a trademark
• Date of the trademark’s initial use
• Name and address of the owner of the trademark. If a trademark is being sought for the company name, the names of all the members of the company
• The TM-48 authorization form.

Goods not covered under Class 2 of Trademark Classification 

The following goods are not covered under Class 2 of Trademark Classification: 

• Unprocessed Artificial Resins, as defined under Trademark Class 1
• According to Trademark Class 3, cosmetic dyes
• As by Trademark Class 3, Laundry Bluing
• Paint Boxes As per by Trademark Class 16, Paint Boxes that are used in schools 
• As per by Trademark Class 17, Insulating Paints and Varnishes

Concept of Related Classes for Class 2 of Goods and Services under Trademarks Act 

When a good or service falls under the purview of two or more Trademark Classes, it is referred to as having “Related Classes” or “Coordinated Classes.” The following classes are closely related to the goods in Trademark Class 2:

• Lubricants and Industrial Oils (Trademark Class 4);
• Science and Technology Services (Trademark Class 42);
• Grains and Agriculture (Trademark Class 31);
• Beer and Beverages (Trademark Class 32); and
• Trademark Class 33: Alcoholic Beverages (Trademark Class 33).

Case Laws 

• Mohan Lal Proprietor Of Mourya … vs Sona Paint & Hardwares- In this case, the court distinguished between a claim of passing off and one of design infringement. It stated that the claim of monopoly based on registration, which is predicated on the uniqueness, newness, and originality of the design, would be the “fundamental edifice of a complaint for infringement under the Designs Act”. While an action for passing off is based on the use of the mark in trade for the purpose of selling goods or rendering services, as well as the development of reputation and goodwill as a result of the same. The court relied on the Supreme Court’s decision in Dabur India Limited v. K.R. to come to this conclusion, having relied on this case to rule that various causes of action cannot be combined in a single lawsuit. The ruling affirms the main justification for the joinder of causes of action, which is to prevent pointless proliferation of lawsuits. The ruling has also confirmed that a remedy for passing off for a registered design may be sought if the design is not being used as a trademark and if the remedy is being asserted for infringement of trade dress or any other similar infringement.

• Izuk Chemical Works v. Babu Ram Dharam Prakash- The plaintiff has shown a prima facie case of the defendant infringing on its registered brand, the court held after reviewing the arguments. An integral component of the plaintiff’s trademark that is used in trade was included in the trademark chosen by the defendant. The application was allowed, and the defendants were forbidden from manufacturing, selling, offering for sale, promoting, displaying, or using in any other way for its products or business any part of the plaintiff’s trademark “MOONSTAR” or any part thereof.

• Asian Paints Ltd. vs M.P. Paints & Ors- The plaintiff filed this lawsuit against the defendants for a permanent injunction, trademark and copyright infringement, passing off, damages, and delivery-up because they are allegedly engaged in the manufacturing, selling, offering for sale, advertising, distribution, and dealing of paints and other related products under the marks or labels “EUROASIAN ACRYLIC FINISH DISTEMPER” “SUPASIAN ACRYLIC FINISH DISTEMPER” and “SUPASIAN WATER THINNABLE CEMENT PRIMER” which contained marks deceptively similar to the plaintiff’s mark “ASIANPAINTS”. In favour of the plaintiff and against the defendants, a decree for damages in the amount of Rs. 1,000,000 was issued; the counsel’s fee was estimated at Rs. 50,000.

Conclusion 

In a nutshell, one of the most important steps in developing a business is registering a trademark. Both online and offline registration can be done. Additionally, before continuing with registration, one needs to make sure to choose the appropriate class. Paints and varnishes must be registered as trademarks under Class 2. 

References 

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