Removal of registration of trademark “N95” for masks

Removal of registration of trademark “N95” for masks 

Held by the Intellectual Property Appellate Board (IPAB):

stayed the operation of registration of ‘N95’ as trademark, as 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 FAB International Pvt. Ltd v Mr. Sanjay Garg (Rectification application in IPAB) 

Facts of the matter:

SASSOON FAB International Pvt. Ltd (“Sassoon” / “Company”) is engaged in the business of selling masks.

“N95” label under Reg. No. 4487559 in class 10 registered in favour of one Mr. Sanjay Garg (“Respondent”);

the Company’s N95 masks were removed from www.amazon.in on the basis of complaints lodged by Sanjay Garg;

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;

Rectification application under Section 57 of Trademark Act, 1999 for Removal of the “N95” label filed by SASSOON FAB International Pvt. Ltd.;

 Grounds

N95 – a public word and may not be appropriated by any one person

generic expression - absolute grounds of refusal under Section 9 (1) (b) of the Trade Marks Act, 1999

a generic expression can never be granted registration as a trade mark;

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 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;

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

descriptive of a characteristic of the goods under the mark - absolute grounds of refusal under Section 9 (1) (b) of the Trade Marks Act, 1999

that the wording N95 in the registered mark is descriptive of a characteristic of the masks;

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.

Dishonesty: it was 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 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.

 Reference:

 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.