Raj M B M S (Managing Director & Trustee (Educational)) 24 April 2017

Usage of trademark of a particular class

Dear Esteemed Fraternity

I own a trademark which is registered under class 41. At the time of application in 2013, the object of the trademark was under Goods & Services descripttion : Playschools, Junior & Senior Schools. The trademark is now registered in 2017 under class 41 for the same goods and services descripttion. Please note that Class 41 also has other provisions such as Entertainment, Training etc and does not only pertain to schools.

Status	Registered
Used Since	Valid Upto : 05/12/2022
Goods & Services Descripttion	PLAYSCHOOlS, EARLY EDUCATION SCHOOLS, PRIMARY, SECONDARY & SENIOR SECONDARY SCHOOLS.

In the past 4 years my plans have changed towards Training (such as Personality Training, Outbound Training, Corporate Training) and Edutainment ( ie using of Entertainment /Gaming /Puzzles etc for Learning purposes ) . All of these services are also listed along with School Services in Class 41.

Considering the efforts that I have made and the long wait for Registration of the Logo from 2013 to 2017, am hoping that I would not have to go another long round of registration process for the same brand / logo for having expanded my services plans to other goods and descripttion of services albeit, under Class 41 itself

My query is whether I can use the logo / brand for many or all of the services listed in Class 41 or I will be constrained to use the brand/logo only for Schools. If I can use it for other services too listed in the same class without any risk of objections or rejection in future, I will be very happy.

However, if there is a pre-condition that I will have to use the logo only for the brief services that have been outlined at the time of application for the logo to be registered, then are there other avenues for rectification by adding more services portfolio to the brand or should I have to restart the process for the registration from ground zero

Requesting the esteemed fraternity to please share some valuable inputs as regards what I should do as next steps please

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1 Replies

BHAVYA SOM GARG 28 August 2021

Greetings of the day.

As per the facts laid out by you, I wish to tell you that you will have to get a new trademark and device (logo) registered for your diverse projects. As per the latest trends, the courts do not grant protection to a name with respect to all the goods of the class it is registered in, rather it only protects the mark with respect to the particular good for which the trademark is registered. For example, your name of schools can be protected when another school takes up a similar name, but if any other item takes up a similar name, it can be granted the right to use. While you are the proprietor and will surely not object your own use of the name, it is advisable to secure new trademarks for your new ventures. If you wish to encash the goodwill of your registered name, you can create a parent company by that name in which all the businesses would be working under the umbrella of the parent company.

Hope it helps.