Abstract
A trademark is one of the crucial intellectual property rights providing protection and distinguishing any brand from that of another. Statutory provision of trademark is dealt in section 2 (1)(zb) of Trademark Act, 1999. The increasing globalization of trade and commerce has necessitated uniform standards in intellectual property administration especially in trademark laws and here comes the significant international instrument, the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, 1973, commonly known as the Vienna Convention relating to trademark classification, providing an internationally recognized system for categorizing the visual elements of trademarks.
This article examines the historical development of the Vienna Convention, the need for its adoption, the structure of the Vienna Classification and Codes, the understanding of the status “send to Vienna codification” and their application in Indian trademark law.
Introduction:
Trade mark under Section 2(1)(zb) of Trade Mark Act, 1999 means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors.”
Trademark not only include the graphical marks but can also include figurative marks which may include sound, smell, taste and much more which cannot be touched. A figurative element refers to any non-verbal, visual component of a trademark, such as a logo, graphic, stylized font, or color, which distinguishes goods and services. Trademarks serve as essential indicators of origin and quality of goods and services. In simple words trademark includes logos, symbols, shapes and others which required comparison and thus came the need for Vienna convention.
With the increasing prevalence of device and logo-based marks, along with letters and words being used in trademark, authorities face challenges in ensuring effective examination. To address these challenges, international mechanism like the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, 1973, has been developed to standardize trademark classification. It is administered by the World Intellectual Property Organization (WIPO).
India was not a signatory to the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, 1973 till 2019. However, India followed and applied the Vienna Classification in practice by assigning Vienna codes to trademarks including figurative or device elements and including the examination status of “send to Vienna codification”.
Historical evolution and need of the Vienna Convention:
There were various conventions like the Madrid Agreement, 1891, Nice Agreement, 1957, and Paris Convention, 1883 prior to the Vienna convention for dealing with issues like national treatment, filling of a single international registration application and classification of goods and services into classes. Earlier to Vienna convention, trademark offices across countries used independent and inconsistent systems to classify figurative or device elements of trademarks, such as logos, symbols, animals, human figures, or geometric shapes. Unlike word marks, device marks required visual comparison, which made searches more complex and subjective. Therefore, this made it difficult to make trademark search, which is a key aspect of trademark registration.
With the growth of international trade and commerce and the increasing number of logo-based trademarks, it became difficult for national trademark offices to conduct systematic prior-mark searches and identify visually similar marks across jurisdictions and thus felt a need to make law to maintain uniform examination standards.
Although the Nice Agreement, 1957 had already standardized the classification of goods and services, there was no international system for comparison or classification of figurative elements of trademarks. This gap highlighted the need for a structured and harmonized classification system for figurative marks.
The need led to the introduction of the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, 1973 by the World Intellectual Property Organization (WIPO).The Agreement was adopted on June 12, 1973 and came into force on August 9, 1985. It was aimed to establish a standardized classification system for the figurative elements of trademarks as Nice Classification for goods and services. The duration of the Vienna Agreement, 1973 shall be same as the duration of the Paris Convention for the Protection of Industrial Property, as per Article 14 of the agreement.
Thus, we also understands that the Vienna convention was necessary to provide an universal and standardized classification of figurative marks which was till then lacked as the Nice agreement also provided for standardized classification of goods and services and not figurative or device marks, which needs comparative analysis.
Vienna classification and Vienna code:
The Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks was adopted in 1973 at Vienna, Austria, for providing universal classification of figurative elements. The Vienna Agreement establishes an international classification system known as Vienna Classification for classification of figurative or device elements. Vienna Agreement, 1973 consists of 17 Articles dealing with it’s entire framework. It ensures consistency, efficiency, and objectivity in the examination of figurative trademarks, thereby strengthening trademark protection and administrative accuracy.
As specified in Article 2 clause (1) of the Vienna Agreement, 1973, the “Classification of Figurative Elements” comprises a list of categories, divisions and sections in which the figurative elements of marks are classified, together with, as the case may be, explanatory notes.
The Vienna Classification is a hierarchical system used to categorize figurative or device elements of trademarks. It consists of categories, divisions, and sections, each represented by numerical values. The Vienna Code classifies the figurative elements of trade marks into 29 broad categories, 145 divisions and 816 main sections. While the categories deal with broad classification, divisions deal with narrower classification and then the sections deal with specific figurative details.
It is stated in Article 2 clause (2) of the Vienna Agreement, 1973 that the classification of figurative elements is contained in one authentic copy, in the English and French languages. Not only that but also this authentic copy is signed by the director general of the World Intellectual Property Organization. Also, as per Article 3 of the Vienna Agreement, 1973 both the English and French languages text are equally authentic.
The categories, divisions, and sections together form the Vienna Code, which further enable trademark examiners to classify and search figurative marks systematically. By using Vienna Codes, trademark authorities can identify visually similar marks. The primary purpose of Vienna code is to facilitate efficient searching and examination of trademarks containing visual elements.
The Vienna Code is a numerical code assigned to a trademark based on its figurative elements under the Vienna Classification. If a trademark contains multiple visual elements, multiple Vienna Codes may be assigned to it. Vienna Codes are administrative tools and not substantive legal determinants, this means that they only assist in examination and for efficient search. Thus, Vienna code is useful when trademark includes figurative marks rather than words or letters.
India as a part of Special Union :
India became a member and signatory of the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, 1973 on 7 September, 2019. India became 34th member country of Vienna agreement, 1973. The Trademark Registry assigns Vienna Codes to all trademarks containing figurative elements and these codes appear in the official database and journal. Also, the examiners use them during similarity searches.
Article 1 of Vienna Agreement, 1973 provided for the constitution of a Special Union consisting of the countries to which this agreement applies and for the adoption of classification of figurative elements. Thus, initially India though not a member of this union, followed the universal classification of figurative elements and ultimately became a member of this Special Union in 2019. According to the Article 8 clause (1)(a) of the Vienna Agreement, 1973, the Director General shall be the chief executive of the Special Union and he shall represent the Special Union.
India has fully adopted the classification system of the Vienna Agreement but with limitations regarding Article 4 clause (5) and Article 16 clause (2). Article 4 clause (5) of the Vienna Agreement,1973 states that “any country may, at the time of its signature or of the deposit of its instrument of ratification or accession, declare that it does not undertake to include the numbers of all or some of the sections in official documents and publications relating to registrations and renewals of marks”. And in accordance with Article 4(5) of the Vienna Agreement,1973, India does not undertake to include the numbers of all or some of the sections in official documents and publications relating to registrations and renewal of marks.
According to Article 16 clause (1), if any dispute arises between two or more countries of the Special Union and it cannot be settled by negotiation then any country can file application for bringing the dispute to International Court of Justice by informing International Bureau and hence, make it come to the knowledge of all other countries of the Special Union.
But India used the clause (2) of Article 16 which states that, “Each country may, at the time it signs this Agreement or deposits its instrument of ratification or accession, declare that it does not consider itself bound by the provisions of paragraph (1). With regard to any dispute between any country having made such a declaration and any other country of the Special Union, the provisions of paragraph (1) shall not apply”. Thus in accordance with Article 16(2) of the Vienna Agreement, 1973, India does not consider itself bound by the provisions of paragraph (1) of Article 16 relating to the settlement of any dispute before the International Court of Justice.
Statuts: “send to Vienna codification”
When an application for registration of trademark that includes a graphical or device element, is filed under Section 18 of the Trademarks Act, 1999, the Registry must classify its figurative components and thus the system generates the status of “send to Vienna codification”.
The purpose of this stage is to classify the visual elements of the trademark using global standards which is Vienna classification. This status signifies that the trademark application contains a device or logo and it has been forwarded for classification under the Vienna classification, which provides a universal classification.
It usually takes 3-5 working days but in the recent times delays last to 2 to 9 months. This status does not mean an objection or rejection of trademark, it’s just a classification step. The status of “send to vienna codification” is only for trademarks containing figurative elements and not for others.
Article 4 clause (3) states that, “the competent Offices of the countries of the Special Union shall include in the official documents and publications relating to registrations and renewals of marks the numbers of the categories, divisions and sections in which the figurative elements of those marks are to be placed”. Thus,once the formality check of the contents of the application is fulfilled after “send for Vienna codification” status and as soon as a code is assigned to the device mark, it can be sent for examination and published in the Trade marks Journal for four months.
Conclusion:
The evolution of trademark law encounters the growing complexity of commercial identity in a globalized marketplace. As proprietors increasingly incorporate logos, symbols, and other non-verbal features, the need for a uniform and systematic method of classification became indispensable. The Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, 1973 successfully addressed this requirement by introducing an internationally harmonized system for categorizing figurative elements. The Vienna agreement, 1973 complements the Nice Classification, 1957, by one providing for classification of goods and services while another classify figurative elements and ensures that both the of trademarks could be examined with clarity and precision.
India’s membership to the Vienna Agreement in 2019 marked an important step in strengthening its intellectual property framework and aligning it with global standards. Even prior to becoming a member, the Indian Trade Marks Registry had been applying Vienna Classification in practice. The Vienna Codes and the status of “send to vienna codification” reflect a technical and examination stage in the registration process, aimed at facilitating accurate similarity searches and structured examination under the Trade Marks Act, 1999.
Ultimately the integration of Vienna classification and Vienna code into Indian trademark practice reinforces legal certainty, supports effective enforcement, and contributes to the broader objective of harmonized international intellectual property protection especially for figurative or device elements of trademark. The ultimate conclusion would state that Vienna conventions played a turning point in understanding to trademark and what cas be included in a trademark and what cannot.
-Shreshtha Shukla, Ductus Legal
DUCTUS EDGE 