IPAB Puts Stay On Use Of Trademark N95

On 4th December 2020, the IPAB, Delhi passed an interim stay of operation on the trademark registration of the word “N95”- with registration number 4487559 in class 10.

The rectification application was filed under section 57 of the Trade mark Act, 1000 for the removal of the “N95” label.

The court held that N95 mark prima facie offends under Section 9 of the Trade marks Act as it is descriptive of the goods. They held that N95 is a prima facie generic term that is used to establish the quality of the mask. They analysed the concept of the N95 mask, by tracing its timeline and observed that the historically, the “N” stands for “not resistant to oil” and it has the capability of filtering our 95% of airborne particles.

The Petitioner claims that they are a company incorporated under the Indian Companies Act, 1913, incorporated in the year 2004 and has been engaged in the business of manufacture and sale of a variety of goods including towels, bath linen, bed sheets, carpets, etc. ever since then under its well-known and well established trade mark SASSOON. They further submit that in the month og May 2020, they expanded into the business of protective masks for protection against dust, anti-pollution masks for respiratory protection, infra-red thermometers, clean room face masks, surgical masks, respiratory masks for medical use, sanitary masks for germ and virus isolation purpose, protective face mask for medical use, masks for use by medical personnel, PPE kits for use by medical personnel, digital thermometer for medical use, medical devices and instruments. They also state that the impugned mark had been used extensively and continuously by them. They further stated that on 20-11-2020, the petitioner received an email from www.amazon.in informing that the petitioner’s listing of its N95 masks under ASIN No. B0898N72RN had been removed by the platform apparently on the complaint filed on behalf of Respondent No.1 . The contents of the complaint were not made available to the petitioner but the e-mail dated 20-11-2020 did mention the trade mark no. 4487559 as the trade mark claimed to be infringed.

The Petitioner claims that on enquiry they found that the Respondent No. 1 had frivolously and fraudulently obtained an unlawful registration of the generic term N95 in 4 | P a g e class 10. The Application for the said registration was filed on 14-4-2020 on a “proposed to be used basis” in respect of Surgical, medical, dental and veterinary apparatus and instruments; Artificial limbs, eyes and teeth; Orthopedic articles; Suture materials; Therapeutic and assistive devices adapted for persons with disabilities; Massage apparatus; Apparatus, devices and articles for nursing infants; Sexual activity apparatus, devices and articles and the same was registered by Respondent No.2 on 11-11-2020.

The Petitioner also submitted that on 25-11-2020, they received a message from the Respondent No.1 on the amazon seller platform as an “Enquiry from amazon customer…”. The said message reads as “We are trademark holder for word mark N95. We request you to alter your product image/product title/or take Brand Licensing. Our Brand Licensing starts from 10K per month only. Kindly look into it and help us.”

The Court held that the term N95 is in use world over ever since early 1970 have to refer to single respirator face masks which were designed to filter 95% of dust particles to enter the nose or mouth and was initially designed by famous 3M Company for industrial uses and announced the same as an industry standard. The same is on the face of record a generic and/or a descriptive mark which is used extensively not only by members of the trade but by various government authorities, institutions to refer to a particular type of the respiratory mask, which are in huge demands by hospital authorities, healthcare workers, and even general public due to ongoing COVID-19 pandemic and due to government mandate to especially the mark are related to Healthcare. The term N95 further serves as an indicator in the trade to designate the kind, quality, intended purpose and other characteristics of the particular product which is nonproprietary in nature. The registration of the impugned mark is thus barred under the absolute grounds of refusal under Section 9 (1) (b) of the Trade Marks Act, 1999.

They further explained that Generic terms cannot be registered under trademark law and no protection to proprietor is provided. If any word is to be adopted as a trademark it cannot be a term that is primarily understood by people as referring to a ‘product category’. The governing principle in cancellation/Rectification of registration Applications, “what is the primary significance of the registered mark to the relevant public” shall be the test for determining whether the registered mark has become the generic name of goods or services and in the present case not just the relevant public but various government authorities and institutions to refer to a particular type/standard of the respiratory mask as N95 and thus it is generic to the goods. They held that from the record placed before them it is clear that the relevant public also does not identify the goods as emanating just from Respondent No.1.

They held that the Respondent No.1 is a squatter and has got registered the generic term N95 as a trade mark to blackmail the bona-fide users of the said term and to extract illegal monies, and hence, stayed the registration of the impugned mark.

Author:  Suvangana Agarwal, Litigation Associate and Talin Bharadwaj (intern) a student of Rajiv Gandhi National University of Law at Khurana & Khurana, Advocates and IP Attorneys.  In case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.

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