One Product, Two Technologies: How Trademark Protect Hardware and Software
Introduction
When consumers purchase a smartphone from a retailer, they typically perceive their purchase to be for a tangible item, the smartphone itself. However, monetary compensation is typically paid for the following: facial recognition, voice assisted technology, app-based networks, and cloud-based connectivity; these elements outlast the smartphone itself. Hybrid devices (technologically speaking) are created using a combination of hardware (the physical body) and software which provide the data collection, learning capability, connectivity to other services, and commercial identity defining the brand in the market. From a trademark perspective, the hybrid nature creates confusion. Under U.S. Trademark Law, unless the goods/service distinction is clear in determining the protection for a trademark, the same product may get two different types of protection under U.S. trademark law. Using a smart speaker as an example, this speaker is typically marketed classed as an electronic good.
However, the smart speaker’s commercial marketplace is integrated with the voice assisted technology which enables the smart speaker to learn the preferences of users and interface with other digital services. The tension between goods/service classification and product use is continually encountered by applicants before the Indian Trademark Office. For example, oftentimes, trademark applicants will receive objections to trademark applications filed with respect to classifying the mark under a good class only and not a service class, when it is clearly evident from the manner in which the smart speaker is used commercially that the smart speaker provides software-based services as well.
As noted above, courts in various nations have consistently held that the manner in which protection for a trademark is determined should reflect the manner in which the trademark is used in trade as opposed to solely on the basis of the theoretical classification of the good or service associated with the trademark.
Tata Sons Ltd. v. Manoj Dodia highlighted the importance of a trademark’s commercial impression and consumer view as opposed to its technical definition. Businesses are at risk of under-protecting their trademarks. For instance, registering for a hardware trademark while failing to register for a software trademark leaves the software identity open to potential infringement by a third party (e.g., licensing risk or brand dilution in adjacent technology markets).
This issue is particularly true of AI-enabled products where software components continue to evolve via software updates, machine learning and/or cloud-based systems; whereas the physical aspects of the device do not change. Thus, modern technology companies increasingly use multi-class trademark strategy to obtain trademarks to protect both their hardware and their software so that their brand is maintained legally even as their product evolves. As the line between electronic devices and digital services diminishes, trademark law must adapt to reflect commercial realities, rather than strictly adhere to rigid classifications.
This blog discusses how trademarks are used to protect both hardware and software of integrated technology products after they converged, as well as the legal issues associated with this process, and why a business must use a strategic trademark plan in the modern technology marketplace.
Class 9 vs Class 42: Where Most Technology Brands Get It Wrong
Class 9 of the Trademark Classification system registers all types of electronic products that use or fall under the category of Electronic Devices. Class 42 of the Trademark Classification System encompasses all Software-Related Services that enable businesses, individuals, and industries to conduct business online by providing or offering Software as a Service (SaaS), hosting Software on Cloud Computing Platforms, offering Artificial Intelligence Services as Software, and creating and playing with non-downloadable Software on/from the Internet.
As a result, many applicants overlook that their Trademark Application for Class 9 may only cover the physical aspects of their product or service, while at the same time assuming the Software that is included or embedded with/within the device, product or service will automatically be included as a part of the Trademark registration in Class 9 without having to register the actual Software as a separate Trademark in Class 42.
Most Trademark Offices and Courts examine trademark protection in terms of use in the marketplace as opposed to whether or not the trademarks are dependent on technology. As such, because Software is typically provided or offered to customers via a Cloud Computing Platform or is regularly updated when provided via a Cloud Computing Platform, it is often registered in Class 42 regardless of what Hardware it is coupled with or associated with, regardless of whether the Hardware actually resides in the customer’s home or office or is stored via a Digital Medium or other Digital Storage Devices.
The distinction between the two types of goods becomes increasingly important when it comes to AI-based products and smart devices, as the software component of a smart device is often an independent component from the physical device, and it is common for software’s development and updates to occur separately from the physical product. From an IP protection perspective, without filing for protection in both a software class and the class for the underlying technology, there may be an enforcement gap that permits third parties to legitimately use similar trademarks for software used in conjunction with similar technologies.
When Trademark Filing Fail: Common Mistake in Technology Brands
Generally, technology companies think of trademark applications as “one-and-done” forms that go into the company’s files and not as developing a long-term brand strategy. Using this approach, the scope of the actual use in marketplace is not broad enough. In other words, there are gaps between what the trademark protects and the way the product is used in commerce. For example, software embedded into the hardware typically is treated as if it is protected by the same trademarks as the hardware. However, trademark guidelines clearly separate the goods or items from the service-based software.
When submitting products, applicants often describe them using very broad and vague language. While the broad and vague descriptions may be sufficient to get past the initial examination, they create problems when disputes arise as to what is actually contained within the description of the product and the actual use of the product. Sometimes the hardware and the software develop into products that are completely separate. Oftentimes, the software evolves from being simply an added function of the hardware into a separate, stand-alone product. Unfortunately, the trademark registration still is limited to the original hardware description and does not include the software.
When examining the trademark application, the examining attorney will look to see if the products are being used in connection with the claimed class of products. When there is a mismatch between the product description and the actual commercial use of the product, the examining attorney will establish an objection or provide a partial refusal.
Unfortunately, there is typically not an opportunity to remedy these filing gaps until such time as enforcement is needed, such as during opposition, when sending cease and desist letters, or when negotiating a licensing deal. By the time a correction is needed, the corrective filings become more expensive and do not provide the same effectiveness. The absence of a forward-looking filing strategy can expose technology brands to imitation, dilution, or parallel use by competitors operating in adjacent software or service markets.
Practical Significance: Why Trademark Strategy Matters for Technology Brands
The protection of trademarks for Technology Products is assessed in a practical sense after disputes occur, not at the time of filing. It is often too late to fill gaps in protection until enforcement, opposition or infringement litigation occurs.
The Trade Marks Act of 1999 is a use-based scheme, and this is made clear in Sections 28 & 29, which determine the exclusive rights and infringement of a trademark in accordance with use of the product in commerce. Therefore, the protection of Technology Brands should represent the commercial reality of actual use in both physical Devices and Software Services.
The Courts have repeatedly recognised that consumers view and experience a Technology Product, and that Consumer perception and Commercial Reality pre-date any rigid technical definitions. For example, the Supreme Court of India in the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. stressed that trademark assessments must take into account consumer perception as to the source of Goods and Services, and the same principle applies to hybrid technology products.
With respect to Software Driven Devices, Consumers relate the Brand not only to Hardware but also to the software experience of Reliability, Responsiveness and Digital Functionality. Thus, the software identity ultimately drives a significant amount of Brand Goodwill through its association with Reliability, Responsiveness, and Digital Functionality. Under most circumstances, failing to properly class designate and register a trademark will allow third parties to register and use marks that are confusing similar to the original mark and characterised as a service (software) when the original recognised mark is still attached to a product. These cases are difficult to enforce, as Section 29 of the (Indian) Act is susceptible to technical defence based on a gap in class designating.
However, in India courts have held that trademark protection will evolve as business models evolve. The case of Tata Sons Ltd. v. Manoj Dodia demonstrates the courts’ focus on the broad reputation and commercial association of a particular mark, rather than the narrow class designation of the mark, leading to a greater need for comprehensive trademark protection for a brand. From a business perspective, if an organisation does not secure adequate coverage of its trademark (due to a lack of class designating), it may have difficulty securing licensing agreements, franchising opportunities or negotiating with investors. Both potential licensees and investors will increasingly be looking for evidence that a particular brand has a comprehensive portfolio of intellectual property covering all forms of operation, including software and digital services.
On a practical basis, technology companies that hold dual-class filings for Class 9 (computer hardware) and Class 42 (computer and software services) will be best positioned to enforce their rights, prevent misuse and accommodate the continued evolution of their product offerings from hardware-related to software-related. Ultimately, aligning trademark strategy with technological reality is of utmost importance.
Conclusion
Today, technology products cannot simply be treated as traditional trademarks! Instead, today’s technology product is comprised of both physical hardware and changing software that is involved in providing services to the consumer as one product.
As technology continues to innovate, the lines between goods and services will continue to blur. To provide trademark protection to a brand’s product, it must be based on what a brand actually does, rather than on a set of defined categories based on what it can’t do. If an organization only protects a device’s trademark and disregards the software that drives the device, the organization is exposing the essential components of its brand to risks.
Indian law offers adequate flexibility for hybrid technology products when the law is applied through a consumer-centric and use-based approach to Indian trademark law and the organization’s filings are planned with foresight. A technology brand’s true value lies not in simply meeting the minimum requirements to receive a trademark but rather in establishing a strategic means to ensure that trademarks evolve along with the product they represent.
Author:–Tanishq Chaudhary, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing.
Endnotes:
- Trade Marks Act 1999, ss 28–29 (India).
- Cadila Health Care Ltd v Cadila Pharmaceuticals Ltd (2001) 5 SCC 73 (Supreme Court of India).
- Tata Sons Ltd v Manoj Dodia 2011 SCC OnLine Del 1520 (Delhi High Court).
- World Intellectual Property Organization (WIPO), Nice Classification of Goods and Services, 12th edn (WIPO 2023).
- World Intellectual Property Organization, ‘Class 9 – Electrical and Scientific Apparatus’ https://www.wipo.int/classifications/nice/en/ accessed 2026.
- World Intellectual Property Organization, ‘Class 42 – Scientific and Technological Services; Software as a Service’ https://www.wipo.int/classifications/nice/en/ accessed 2026.
- Office of the Controller General of Patents, Designs and Trade Marks, Trade Marks Manual (Government of India).
