Family Of Marks: A Parallel Between the US And Indian Perspectives
Introduction:
A family of trade marks can be defined as a series or a group of marks that constitute a common feature or characteristic which the relevant public associates with a common source. Recognition as a family of trade marks allows the owner of such a family to assert that the adoption or use of the common feature in the family of marks by another party as a trade mark might give rise to a likelihood of confusion in the mind of the relevant public, that, the latter mark is a part of the family of marks belonging to the owner.
“A trademark owner may use a plurality of marks with a common prefix, suffix or syllable. It has the opportunity to establish that it has a family of marks, all of which have a common “surname”. It relies on this to argue that defendant’s mark, which incorporates the “family surname” is confusingly similar to the total “family group”. In effect, the family “surname” or distinguishing element is recognised by customers as an identifying trademark in and of itself when it appears in a composite....” [para 23.6.1. “McCarthy on Trademarks and Unfair Competition” 4th Edition, written by J. Thomas McCarthy]
The concept of family of marks is an extension of one of the basic tenets of trade mark laws viz. protecting earlier marks from subsequent marks which may cause a likelihood of confusion in the mind of the consumers. The only difference being that the protection afforded to the earlier trade mark/s is as a group or series of marks. So, how does that help a trade mark owner? Through this principle, courts will protect the owner’s rights in not just the trade mark directly contesting with the subsequent mark but the entire family it belongs to. Thus, recognition as a family of marks offers a broader and, arguably, a stronger scope of protection than the one conferred by the statute or the common law.
The fundamental requirements for a series of marks to qualify for protection as a family of marks, that follow from the definition itself, are: a) all the marks in the series should comprise the common element on the basis of which the ‘family’ is asserted; and b) all the marks in the series must belong to the claimant. It is pertinent to mention that these requirements are not exhaustive.
POSITION IN INDIA
In Amar Singh Chawal Wala v. Shree Vardhman Rice and Genl. Mills [FAO (O) No. 138 of 1996 & C.M.No. 842 of 2001], before the High Court of Delhi, the Plaintiff claimed that it had a family of ‘QILLA’ marks – “QILLA (DEVICE)”, “GOLDEN QILLA”, “LAL QILLA” and “NEELA QILLA”. The Court in paragraph 18 observed: “It is plain from the pleadings that the Plaintiff has been using the words QILLA consistently in connection with the rice being sold by them with only the first word indicating the colour viz., GOLDEN, LAL or NEELA. It must be held that the Plaintiff has been able to prima facie show that it has developed a “family of marks”.
The Court did not venture into a detailed discussion of what constitutes a family of marks and only relied upon the use of the series of marks by the Plaintiff to conclude that the Plaintiff has a family of ‘QILLA’ marks.
Similarly, in Modi-Mundipharma Pvt. Ltd. v. Preet International Pvt. Ltd. & Ors.; [I.A. No. 12593/2007 in CS (OS) NO.2176/2007], the Court referred to the registrations of the series of marks comprising the common feature i.e., ‘CONTIN’ and held that the Plaintiff has a family of marks. Specifically in paragraph 38, the Court observed: “I agree with the submission of the learned counsel for the plaintiff that CONTIN is the family/series mark of the plaintiff. It appears from para 3 of the plaint that there are a series of trademarks which are registered containing the suffix CONTIN.”
In another case titled Mankind Pharma Ltd. v. Ultrakind Health Care and Ors.; [CS (COMM.) 834/2016], the Court referred to the registrations of “KIND” suffix marks in the name of the Plaintiff and held that the Plaintiff has a family of marks.
POSITION IN THE US:
Last year, the United States Court of Appeals for the Federal Circuit had the opportunity to discuss the concept of ‘family of marks’ in the case of Pure & Simple Concepts, Inc. v. I H W Mgmt, 857 F. Appx. 652 (Fed. Cir. 2021). The Court while giving its observations referred to J&J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460 (Fed. Cir. 1991) as a seminal case defining a family of marks. In particular, the Court made a reference to the following paragraph:
“A family of marks is a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks but the common characteristic of the family, with the trademark owner. Simply using a series of similar marks does not of itself establish the existence of a family. There must be a recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods . . . . Recognition of the family is achieved when the pattern of usage of the common element is sufficient to be indicative of the origin of the family. It is thus necessary to consider the use, advertisement, and distinctiveness of the marks, including assessment of the contribution of the common feature to the recognition of the marks as of common origin.” [J&J Snack Foods, 932 F.2d at 1463-64]
In Pure & Simple Concepts, Inc., the Appellant contended that eight[1] of its marks comprising the term ‘INDUSTRY’ were its family of “INDUSTRY” marks to oppose the registration of the Respondent’s mark “BLUE INDUSTRY”. All of the Appellant’s eight marks were being used in connection with apparel such as shirts, pants, swimsuits, outerwear and accessories. The Court noted numerous third-party registrations comprising the word ‘INDUSTRY’ and the lack of evidence of an association between the word ‘INDUSTRY’ and the Appellant in the mind of the public, held that the Appellant did not have a family of marks and, accordingly, dismissed the Appeal. The Court took a synonymous stand with the one taken in J&J Snack Foods, 932 F.2d, holding that whether an entity owns a family of marks is a question of evidence before the Courts, including evidence of the common characteristic having achieved distinctiveness.
From the foregoing, it is evident that the position in the US is stricter in comparison with the one in India, when it comes to the factors taken into consideration by courts regarding the qualification of a series of marks as a family of marks. The US courts have stated and reiterated that simply using a series of similar marks does not establish the existence of a family of marks and that there must be a recognition amongst the purchasing public that the common characteristic itself is indicative of a common origin of the goods. On the other hand, the courts in India take account of the use and/or registrations of the series of marks without requiring evidence of the common feature in the marks having acquired recognition in the mind of the relevant public as belonging to the claimant. Thus, Courts in India appear to be relatively lenient in granting the status of family of marks to the owner as compared to their US counterparts.
CONCLUSION
The Indian perspective on family of marks is favourable to trade mark owners and protects their rights and interests strictly against any unauthorised use of similar marks incorporating the common feature of the family. Such an interpretation also conforms with another cornerstone of the Trade Marks Act, 1999 — protection of the public interest by preventing the use/registration of marks that have a likelihood of deceiving the public with respect to the origin of goods and services.
To summarise the parallel of the concept of family of marks in India vis-à-vis the US position: Indian Courts take into account the use and/or registrations of the marks having a common element in the determination of family of marks. Whereas, the US position dictates that something more is required i.e., the recognition among the public that the common element is associated with the common origin of goods/services. Thus, in the US, just the use/ registrations would not be sufficient for recognition as a family of marks but a definitive proof that, in the mind of the relevant public, the common element itself is associated with the source, which is different from the current position prevailing in India.
[1] INDUSTRY BY WORK WEAR, Registration No. 2118102 (granted Dec. 2, 1997 with a first use date of October 1996); INDUSTRY UNION MADE PRODUCT and Design, Registration No. 2326074 (granted Mar. 7, 2000 with a first use date of October 1998); INDUSTRY GIRL, Registration No. 2403592 (granted Nov. 14, 2000 for with a first use date of January 1999); INDUSTRY SUPPLY CO. and Design, Registration No. 2446522 (granted Apr. 24, 2001with a first use date of March 1996); INDUSTRY and Design, Registration No. 2723120 (granted Jun. 10, 2003 with a first use date of March 1996); INDUSTRY and Design, Registration No. 2859863 (granted Jun. 10, 2003 with a first use date of January 2003); INDUSTRY and Design, Registration No. 3407934 (granted Apr. 8, 2008 with a first use date of December 19, 2006); and INDUSTRY and Design, Registration No. 5052618 (granted October 4, 2016 with a first use date of February 27, 2015). J.A. 2-6.
