INDIA: No Protection for Generic N95 Mark

The Intellectual Property Appellate Board (IPAB) has reaffirmed its stance on generic marks, holding that a generic word cannot be registered under trademark law.

IPAB’s decision came on December 4, 2020, in the case of Sassoon Fab International Pvt. Ltd. (petitioner) v. Sanjay Garg (respondent), no. ORA/171/2020/TM/DEL.

The case concerned N95 masks used for preventing the transmission of airborne infectious particles for combating viruses including the novel coronavirus. The petitioner, under its brand name SASSOON, is a manufacturer of such N95 masks and sold its products via the e-commerce website Amazon.in.

The cause of action arose when the petitioner received an email from Amazon stating that its listing of N95 masks had been removed following a complaint filed by the respondent, which claimed to be the registered proprietor of the N95 trademark under no. 4487559.

In response, the petitioner filed two petitions: a rectification petition for removal of the respondent’s mark on the basis that the mark consists of a generic term, and a miscellaneous petition barring the respondent from enforcing the rights derived from the trademark.

Having considered the petitioner’s evidence, IPAB noted that the respondent’s N95 mark prima facie does not comply with Section 9 of the Act, being descriptive of the goods for which it is registered. Further, it found that the respondent’s primary business was the sale of audio and video accessories, and that the respondent was neither using the term N95 nor offering any masks or other goods in Class 10 as applied for. The term N95 was held to be generic in nature on the basis of evidence outlining the term’s history and concept, available in the public domain, dating back to early 1970s.

Relying on precedents, the IPAB noted that “[d]uring the Pandemic COVID-19 crisis, the shameless acts of the Respondent No. 1 in restricting the sales of the N95 Standard masks based on the Registration obtained by him would deprive the general public from accessing the N95 Masks that are declared as essential commodity by the Government.”

In view of the above, IPAB held that until the rectification petition is finally decided, the respondent shall be barred from enforcing the rights derived from the trademark.

In the past months, various courts in India have come down heavily on parties seeking to register and monopolize rights in generic marks. This order helps establish a precedent against the registration and use of such marks.

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