• Vrinda Sehgal

IPAB Holds: N95 Is A Generic Term, Stays Operation of Registration Against Trademark Squatter



Introduction


The Hon’ble Intellectual Property Appellate Board (the “IPAB”) recently in the case of Sassoon Fab International Pvt. Ltd. v. Sanjay Garg, ordered a stay of operation of registration of the mark “N95”, stating that N95 is a generic term. The petition for order of stay of operation was filed by Sassoon Fab Pvt. Ltd. (the “Applicant”), in addition to a Rectification Application made in accordance with section 57 of the Trademark Act, 1999 (the “Act”) for the removal of the “N95” label in class 10 registered in favour of Mr. Sanjay Garg (the “Respondent”) under Registration No. 4487559 .


The dispute:


Earlier this year, Mr. Sanjay Garg had filed a complaint with the e-commerce website www.amazon.com, regarding the Applicant’s sale of N95 masks on their website alleging trademark infringement. Consequently, Amazon reported the matter to the Applicant via email and removed their products from the website.


In response to Amazon’s removal of the Applicant's products, the Applicant filed petitions with the IPAB requesting stay of order of operations with regards to the Respondent’s ‘unlawfully obtained’ trademark registration and removal of the “N95” label from the Register.


The decision:


Thus, the IPAB ordered a stay of operation of registration until the final hearing on the matter regarding the Rectification Application, which has been set for 5th March, 2021.


In granting the stay of operation of registration order, the IPAB stated that the mark is descriptive and that “N95 is prima facie a generic term that is used to indicate the quality of the masks hence it is hit by Section 9 of the Act.” In fact, the history and concept of N95 was also delved into and it was explained by the Board that N95 is a term used to explain that the mask can expel 95% of airborne particles, hence it is a generic term and the mark is descriptive of a characteristic of the masks. Further, the IPAB clearly stated that, “Generic terms cannot be registered under trademark law and no protection to proprietor is provided.”


The IPAB also explained the principle behind cancellation/ rectification of registration applications and stated that the test in determining whether the registered mark has become the generic name of goods or services is “what is the primary significance of the registered mark to the relevant public”.


Finally, the IPAB explained that, “It is clear to us that the Respondent No.1 is a squatter and has registered the generic term N95 as a trade mark to blackmail the bonafide users of the said term and to extract illegal monies…. During 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 an essential commodity by the Government. In light of the COVID-19 global pandemic and the harm that could occur should fraudulent acts of the Respondent No.1 are allowed to restrict the sales of masks would impair the general public and consumers from purchasing the said protective N95 masks in the market.


Conclusion:


Time and again, the IPAB and the courts have reiterated that generic terms and descriptive words shall not be granted trademark protection unless they have acquired some level of distinctiveness. This case is another example which shows that the courts are not willing to support owners of descriptive marks and especially to those who attempt to register their marks with malafide intentions. The impact of the issue in hand was amplified by the fact that the goods in question relate to public health and during the Pandemic, such trademark “squatters” can at no costs be permitted to conduct activities that may deprive the public of necessary goods.










For any questions, you may write to the author, Ms. Vrinda Sehgal, Associate, at vrinda@iprattorneys.com.

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