India – registration of ‘n95’ as a trademark to ‘hide’ dishonest intent?

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Due to the COVID-19 pandemic, the use of N95 masks has proliferated exponentially. Researchers from the Indian Space Research Organization (ISRO) conducted studies and found that N95 masks were the most effective in reducing the horizontal spread of infectious diseases, including COVID-19. Indeed, the term N95 has now become commonplace. In this context, the following interesting case (Sassoon Fab International Pvt. Ltd. v. Sanjay Garg) has been considered by the Intellectual Property Appeal Board (IPAB).

A person named Sanjay Garg (the respondent) had filed a trade mark application for the mark N95 in class 10 (relating to “surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopedic articles; suture material; therapeutic and assistive devices adapted for the disabled; massage devices; infants’ apparatus, devices and articles; sexual activity apparatus, devices and articles”) on April 14, 2020. surprisingly, said application was registered and the certificate of registration was issued on November 11, 2020.

An entity named Sassoon Fab International Pvt. ltd. (the Petitioner) has filed a Request for Rectification for deletion of the registration from the Trademark Register, as well as a Miscellaneous Petition with the IPAB requesting suspension of the registration until said Request for Rectification is satisfied. finally settled. With the broader public interest in mind, said miscellaneous request for suspension was considered first, on an expedited basis. In this regard, the IPAB observed and judged the following:

(a) It is an established principle that a generic expression can never be registered and/or protected as a mark under trademark laws, except in limited circumstances where it has acquired distinctiveness in the minds of relevant members of the target audience.

(b) The term N95 has been used since the early 1970s and refers to a unique respirator mask designed to prevent 95% of dust particles from entering the nose or mouth and originally designed by the well-known company 3M. for industrial use. Indeed, the term N95 serves as an indicator in trade to designate the type, quality, destination and other characteristics of the particular product which is non-exclusive in nature.

As the term N95 is prima facie a generic term in the mask industry, it cannot be registered or protected as a trademark (based on inherent distinctiveness) nor can it be appropriated by a single entity. .

Registration of the contested mark should therefore be barred under the absolute grounds for refusal provided for in section 9(1)(b) of the Trade Marks Act 1999 (as amended). Moreover, the respondent cannot monopolize the use of the said mark.

(c) The IPAB concluded that the Respondent is a squatter and obtained the registration of the mark N95 as a mark with dishonest intent.

(d) For, among others, the said reasons, in view of the current public sentiment during this global public health crisis and in view of the factor of dishonesty on the part of the defendant, the IPAB has suspended the exploitation of the recording of trademark No. 4487559, pending final disposition of said action for rectification.

This article was first published in the Pharmaceutical Trade Marks Group (PTMG) Law Lore & Practice, May 2021 edition.

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