Cultivating New Business Strategies for Brand Owners via Associated Trademarks in India
18 April 2017
At the pace at which trends are changing, contemporary business demands slight modifications/additions to a company's trademarks with every new service or product that traders and businessmen aspire to introduce in the market – or even for the purpose of introducing similar and identical commodities under same or similar trademarks.
The concept of associated trademarks allows brand owners who wish to expand the scope of their business, or even create sub-brands in addition to or deriving from the existing primary brand, to file new trademark applications as associated with the prior trademark, with different specifications sometimes also overlapping with the earlier trademark.
Further, the associated trademarks also ensure that the connection between the various brands which originate from the same source is clearly established.
The Law of ‘Associated Trademarks’ in India
An associated trademark has been defined under Section 2(1)(c) of the Indian Trademarks Act, 1999 as “trademarks deemed to be or required to be, registered as associated trademarks under this Act.”
Under Section 16 of the Indian Trademarks Act, 1999, for trademarks to be registered as associated trademarks, the following conditions have to be fulfilled:
(a) The trademark which is registered or is subject of trademark application for any goods/services should be identical to another trademark which is registered or subject of a trademark application; and
(b) The trademarks should be in the name of the same proprietor; and
(c) The trademarks should be used in respect of same goods or description of goods or same services or description of services; or
(d) The trademarks should so nearly resemble as to be likely to deceive or cause confusion if used by a person other than the proprietor.
On an application before the Registrar, on an application by the registered proprietor, the association may be dissolved under Section 16(5) of the Trademarks Act, 1999.
Establishing Use in the Case of Associated Trademarks
Under Section 55 of the Trademarks Act, 1999, to establish use of a trademark, the tribunal may accept the use of an associated trademark or use of a trade mark with additions or alteration not substantially affecting its identity.
In the case of P. Kamala Devi Chordia v. P. Ganeshan and others, 2004 (29) PTC 578 (IPAB), it was held that the use of a device mark hexagon frame along with the associated mark label “144” and also with registered word mark “PMT” amounted to use of a hexagon frame. Similarly, in the case of M/s Rajasthan Snuff Factory v. M/s Gordhan Co. and others, 1982 PTC 185, the court rejected the appellant’s contention was that the respondents have not used their registered trademark by using a circle around the device of a parrot with leaves in somewhat different coloring and the words ‘parrot brand’ outside the circle etc., as the same does not amount to additions and alterations as the registration is not restricted to any colour and that even with the addition of circle, the label uses the essential of the registered trademark of the respondents.
In the matter of Morny Ld.’S Trade Marks, (1951) 68 RPC 131, where the trademark was registered in block capital letters, but the use was made in a number of contexts and against a background of differing floral and other decorations, it was held that the labels were not different from the mark ‘Morny’ and the conventional floral embellishments did not substantially affect the identity of the mark.
In September 2015, the Intellectual Property Appellate Board (IPAB), India rectified the trademark FECONTIN from the register on account of nonuse despite unimpeachable evidence pertaining to use of its associated trademark, FECONTIN-F. The rectification also failed to take into account the second limb of Section 55, i.e. accepting use of a trademark with additions or alteration not substantially affecting its identity. The addition of F, for ‘ferrous,’ to the word ‘FECONTIN’ did not add any distinctiveness to FECONTIN. The proprietors also have a trademark application for an associated mark FECONTIN- Z where ‘Z’ denotes zinc. There was an interim stay of the order in a writ petition before the Delhi High Court, which is pending adjudication.
Aside from protecting and aiding the brand owners, the requirement of association of trademarks also protects the public from being confused or misled if two identical/similar trademarks are allowed to be registered in the name of different proprietors. In fact, under Section 44 of the Indian Trademarks Act, 1999, associated trademarks shall be assignable or transmissible only as a whole and not separately, so that the source is common.
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