Recently on 4th December, 2020, the IPAB put an interim stay on the use of the Trademark N-95 applied with application Number 4487559 in class 10.
Later the rectification application was filed by the applicant under section 57 of the Trademarks Act, 1000 for the removal of the N-95 Label.
The court held that the N-95 mark is a descriptive mark according to section 9 of the Act. they further held that the N-95 mark is a generic mark which is used to describe the quality of the mask. They analysed the concept of N-5 mask and observed historically that N stands for “Not resistant to oil” and has 95% capability of filtering the airborne particles.
Petitioner company claims that they are a company incorporated in the year 2004 and are engaged in the business of manufacturing and sales of a variety of goods including towel, bath linen, bedsheets, carpets etc. under their well known trademark SASSOON. They further submitted that in the month of May, 2020 they expanded their business of selling masks for the protection from dust, pollution, surgical masks, respiratory masks, PPE kits etc. they were selling their masks, but in the month of November, 2020 they got an email from the amazon that petitioner’s listing of N-95 masks have been removed as some complaint is filed by the Respondent against the petitioners for the infringement of the trademark.
After the proper enquiry conducted by the petitioners, they found that respondent no 1 have fraudulently and frivolously obtained an unlawful registration of the generic term N-95 in class 10 for 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 Petitioners submit that on 25.11.2020 they received a message from Respondent No. 1 on the amazon seller platform saying that “ Enquiry from amazon customer…”. The said message reads as “We are trademark holders 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 after observing the above situation has held that the N-95 term is a generic term and was first developed in the year 1970 by the 3M company for industrial uses and the term is used for the face mask which helps in filtering of the dust particles and in pollution purposes. Therefore, one company cannot claim to have exclusive usage over the name N-95 and therefore cannot restrain other companies from using the term N-95 over their masks. Based on the situation court sees that at the time of covid-1 pandemic situation Face masks (N-95) are huge in demand and therefore refrained respondents from using the term N-95 exclusively over their masks and thus the registration of the impugned mark is barred on the absolute ground of refusal under section 9 (1)(b) of the Trademark Act, 1999.
The court further explained that generic terms cannot be registered as Trademark and no protection to proprietors is provided over the use of generic terms. It is clear that the N-95 mask term is used by the government authorities to describe the particular category of mask and customers or people also do not identify N-95 name by the name of Respondent No-1 masks only. Therefore, this term falls under the generic mark and one cannot claim its exclusive right to use over that mark.
They held that Respondent No.1 is a squatter and has registered the generic term N-95 as a trademark to blackmail the bona-fide users of the said term and to extract illegal monies and hence stayed the registration of the impugned mark.