Phrase “N-95” is a generic term says IPAB

MP.NO.143/2020 in ORA/171/2020/TM/DEL

 

SASSOON FAB INTERNATIONAL PVT. LTD.
NO.2, UPPER GROUND FLOOR,
GUJRANWALA PART-2, DELHI -110009 –   PETITIONER

Vs

SANJAY GARG
804-A, MANJUSHA BUILDING,
57 NEHRU PLACE,
NEW DELHI-110019

and

REGISTRAR OF TRADE MARKS
BAUDHIK SAMPADA BHAVAN
PLOT NO. 32, SECTOR-14,
DWARKA,
NEW DELHI-110078                                   – RESPONDENTS

 

On 4th December 2020, the Intellectual Property Appellate Board (“IPAB”), while considering a Rectification Application, passed and order staying the operation of registration of ‘N95’ for masks as trademark. A look at the case which assumes significance in the pandemic times we are living in:

Facts of the case

  1. The petitioner (”Sassoon”) is a company incorporated in 2004 under the Companies Act, 2013 and has been engaging in the business of manufacture and sale of a variety of linen – towels, bath linen, bed sheets, carpets etc.
  2. In May 2020, the company Sassoon expanded it business and began manufacturing protective masks, infra-red thermometers, cleanroom face masks, surgical masks, respiratory masks for medical use, sanitary masks for germ and virus isolation purpose, protective face mask for use by medical personnel, PPE kits, digital thermometers and devices / instruments.
  3. For effective marketing of its respiratory masks, the Sassoon bonafidely started to describe the respiratory masks manufactured by it as “N95” masks. The same was described on the product packaging to denote the genus or type of the product.
  4. Sassoon registered itself as a seller on ecommerce platform i.e. www.amazon.in and had been inter alia selling its products including N95 masks from the said platform.
  5. In November 2020, Sassoon received an email from Amazon India stating that the “N95” masks being retailed online under the “Sassoon” brand has been removed due to a complaint received from the Respondent 1 (“Sanjay Garg”).
  6. Sassoon instituted a suit under section 142 of the Trademarks Act, 1999 (groundless threats trademark infringement) against respondent Sanjay Garg. He was to submit written statement and reply to the injunction application and sought interim relief.

Contention(s)

Respondent – Sanjay Garg

The respondent Sanjay Garg objected to the use of the phrase “N95” for the masks on the grounds that he had procured a Trademark registration for the phrase “N95” vide trade mark no. 4487559 and that trade mark infringed was infringed by Sassoon.

Petitioner – Sassoon

  1. Sassoon contended that on receipt of the email from Amazon, it had checked on the website of the respondent and found that Sanjay Garg was running a business of Audio & Video accessories like cables, connectors, smart watches, speakers etc. though he procured registration of the Trademark of “N95”, on a “proposed to be used basis” in respect of Surgical, medical, dental and veterinary, orthopedic apparatus. He was not remotely associated with “N95” masks / products.
  2. When Sassoon contacted the respondent Sanjay Garg, he made it very clear that he shall only allow those businesses to use “N95” as a term on their products who share their profits with him. Else he will totally block the business of Sassoon amd others who use the “N95” phrase. It was then that Sassoon instituted a suit u/s 142 of the TM, 1992 Act.
  3. Sassoon further received a message on the e- commerce portal from Sanjay asking for sum of Rs. 10,000 towards brand licensing be paid for usage of the phrase “N95”.

The Judgment

In deciding on the issue, the IPAB observed and analyzed the following:

1. It is an established principle that a generic expression can never be granted registration and or protection as a trade mark.

Whether it is the use of the phrase “Instea” for instant tea (in Nestle’S Products (India) Ltd. vs P. Thankaraja and Anr. AIR 1978 Mad 336) or “Magic Masala” (in ITC Limited vs Nestle India Limited C.S.No.231 of 2013, 2020 SCC Online Mad 115), the Appellate Board held that usage of generic phrases or common phrases cannot be given monopoly or protection in the form of a trade mark registration. Common phrases and generic phrases can be used by all manufacturers / retailers and to restrict such usage to only one person or party would amount to a monopolistic practice.

2. The U.S based company 3M was the first in the world to develop masks as early as the 60’s. Initially designed for industrial use, the masks slowly moved to other industries including the medical industry treating communicable diseases – influenza, SARS, TB etc.

The masks had the capability of preventing / filtering 95% of particles – dust, viruses etc from reaching the nose or mouth of the person wearing it. They and were not resistant to oil.

Therefore the masks came to be known as “N95”. The “N” stands for “Not resistant to oil,” and it has the capability of filtering out 95% of airborne particles. The Appellate Board further reiterated that a generic term is one that refers to the genus of which the particular product is a species. An “N95” is an industry standard, due to the renown of the certifying standard. Hence the generic mark / phrase “N95” cannot be monopolized by any one person.

In the present day, in the midst of a global pandemic Covid19 (SARS Covid19), people across the world from various walks of life are using these masks to mitigate the risk of contracting infection. Years of usage has made the N95 an industry standard and hence a generic term. 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 non-proprietary in nature.

3. In the Judgment in the case of M/s Three – N-Products Pvt Ltd vs M/s Kairali Exports & Anr, the Delhi HC noted that protection of a generic word as a trademark requires greater degree of proof and lot more effort from the person claiming the TM rights. It will have to be proved that because of the extensive use of the mark by such person, it   has acquired a distinctness and can be identifiable only with the goods of such person.

In the present case, the respondent Sanjay Garg has not displayed any such effort as even on date of the case he had not produced masks or related products. The registration continued to remain on “proposed to be used” basis.

The governing principle in cancellation/Rectification of registration Application(s):  “What is the primary significance of the registered mark to the relevant public”? That shall be the test for determining whether the registered mark has become the generic name of goods or services. 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.

The Appellate Board further observed that the Respondent Sanjay Garg got the “N95” mark registered with the intention to exploit money from other manufacturers. Sanjay was not even dealing with masks. The intention seems to be make illegally profit especially during the Covid19 pandemic time by restricting sales of masks depriving the general public of such essential commodities.

In light of the above, the IPAB ruled that until the Rectification Petition is finally decided the operation of the registration of Trademark for use of “N95” phrase (No. 4487559 in class 10 Registered under Certificate No. 1633656 is stayed.

 

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