IPAB Stays Operation of Registration of N95 Trademark – Eshwars
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IPAB Stays Operation of Registration of N95 Trademark

Authored by Padma Akila

The Intellectual Property Appellate Board (IPAB) has stayed the operation of registration of ‘N95’ as trademark. The IPAB while considering a Rectification application filed by SASSOON FAB International Pvt. Ltd., (“Sassoon” / “Company”) held that N95 is a generic term in the mask industry and the same cannot be registered or protected as trade mark nor can it can be appropriated by any one person.

Sassoon which is engaged in the business of selling masks, had filed a rectification application under Section 57 of Trademark Act, 1999, for Removal of the “N95” label under Reg. No. 4487559 in class 10 registered in favour of one Mr. Sanjay Garg (“Respondent”). The Company submitted that it checked through the Respondent’s website, www.maya123.com and found that he was running a business of various Audio & Video accessories like cables, connectors, smart watches, speakers etc. On being contacted the Respondent claimed that he shall only allow those business houses to use N95 as a term on their products who share their profits with him. He further claimed that he was in the process to totally block the business of the Petitioner and other traders and threatened the petitioner’s representatives that they should advise the directors of the petitioner to contact him for a “business deal” within 2 days, else he will totally destroy the business of the Company. The Company submitted that Sanjay Garg had frivolously and fraudulently obtained an unlawful registration of the generic term N95 in class 10. As a result, the Company’s N95 masks were removed from www.amazon.in on the basis of complaints lodged by Sanjay Garg.

The IPAB observed that a generic expression can never be granted registration as a trade mark and/or no protection to the proprietor is provided under the trademark law. It opined that the wording N95 in the registered mark is descriptive of a characteristic of the masks, specifically that they filter at least 95% of airborne particles and are not strongly resistant to oil, is a standard and is a class of respiratory devices and thus a generic term. The IPAB further observed that the term N95 is in use worldwide ever since early 1970 having reference 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 the famous 3M Company for industrial uses and announced the same as an industry standard. It was held that 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 also by various government authorities, institutions to refer to a particular type of the respiratory mask, which are in huge demand by hospital authorities, healthcare workers, and even general public due to ongoing COVID-19 pandemic.

The IPAB further stated that the term N95 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. Hence the IPAB held that the registration of the mark was thus barred under the absolute grounds of refusal under Section 9 (1) (b) of the Trade Marks Act, 1999. In this regard, the IPAB referred to recent Madras High Court judgment in which it was observed that the terms ‘Magic’ and ‘Masala’ are commonly used terms by different manufacturers in the packaged food industry and it would be unfair to confer monopoly over the same expression. IPAB further observed that Sanjay Garg is a squatter and has got registered the generic term N95 as a trade mark to blackmail the bonafide users of the said term and to extract illegal monies. It was observed that he is not even using the said term nor was he dealing in the masks or any goods for that matter for which he had applied the said mark. The IPAB while staying the operation of the registration of the “N95” trademark registered under application 4487559 in class 10 stated that given the current public sentiment during this global public health crisis, and since the dishonesty factor holds the cardinal principle it is justified in staying the operation of the registration of the trademark until the Rectification Petition is finally decided. The application is now posted for further consideration on 5/3/2021.

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