Trademark
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This article has been written by Vasundhara Thakur, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.

Introduction

Face masks are popularly in use for decades and now in trend, given the current COVID-19 situation. Among all the face masks available in the market, ‘N95’ masks have been in the news ever since the countries were hit by the Coronavirus pandemic. Although it is a common practice to wear face masks these days, Asians and several other people across the world used to wear face masks even before the Coronavirus pandemic. Generally, people wear those masks to cover their faces and to prevent themselves from harmful dust particles and other airborne germs to enter the mouth.

There are several kinds of masks available in the market and among them, N95 is in high demand because of its ability to cover the face properly and reducing particles from entering into the mouth and keeping the virus at bay.

The ‘N’ stands for “Not-resistant to oil’ and the respirator blocks 95 percent of very small test particles. It is said that ‘the longer one wears an N95 respirator, the more efficient it becomes at filtering out particles’. More particles help in filtering more particles. However, breathing becomes more difficult over time as those gaping holes between the fibres get clogged up with particles which is why N95 masks cannot be worn for more than eight hours in an extremely dusty environment. It doesn’t stop filtering, but it prevents a person from breathing comfortably. 

The N95 mask was developed in 1972 by the USA based company ‘3M’, however, its origin holds an interesting story that made the development of N95 one of the most popular face masks in recent times.

The story behind the N95 mask

Sara Little Turnbull, a former decor editor for House Beautiful magazine, began consulting with the gift wrap division of 3M where she was assigned to create a moulded bra, but due to her family members medical condition, she spent most of her time visiting them to the hospital. During her frequent visits, she realised the medical practitioners (doctors and nurses) carrying flat tie-on masks and got an idea to create a cupped shaped mask that can cover the nose and mouth providing enough space to breathe, a design that will be for the end-users and not for the distributors. After losing her three loved ones, she came up with this design idea that led her to the invention of a “bubble” surgical mask which was released by 3M in 1961.

3M rebranded the mask as a ‘dust’ mask because it couldn’t block pathogens. However, in the 1970s, a single-use N95 dust respirator was developed by 3M which we use even today. 

Earlier, it was used for industrial work. However, after the spread of tuberculosis in 1990, it became common to be used by doctors, other medical practitioners and now due to the spread of COVID-19 during the year 2019-2020, it is being worn by the common citizens also. 

Considering the above story of the N95 mask, let’s first discuss the concept of trademark and see whether the N95 mask is capable of being trademarked, given its regular and generic use on the market, which has made it a life-saving device in the Coronavirus pandemic with an increase in demand and limited supply. Before we delve further, let’s look at:

What is a trademark? 

A trademark is a visual symbol usually comes in the form of a word, a device or a label by a manufacturer of good and/or by service providers to indicate to the public that the said goods/services belong to a particular proprietor or business entity as distinguished from similar goods/ services manufacture or dealt in by other proprietors. 

A person who sells his goods or provides services under a particular trademark acquires the exclusive right to use the mark in relation to those goods/services. Such a right acquired by use is recognised as a form of property in the trademark and is protected under common law and the Indian Trade Marks Act, 1999.

As per Section 9 of the Trade Marks Act, 1999, a mark is capable of registration if it has acquired distinctiveness, defines characteristics of a product/services and can be distinguished from that of other similar goods or services. (Check here: https://indiankanoon.org/doc/1158841/)

Recently, in Sassoon Fab International Pvt. Ltd. v. Sanjay Garg and Anr. the court put a stay on the registration of Respondent’s mark, stating that the Respondent is a squatter and has registered dishonestly, the generic term N95 as a trademark so that he can make a profit by acquiring monopoly over the trademark N95. Especially in the current Pandemic situation, where people need the N95 more than ever, it will deprive the general public and end-users of access to the N95 Mask that is declared as an essential commodity by the Government.

Case analysis on N95 as a trademark

A rectification petition was filed under Section 52 of the Trade Marks Act, 1999 for removal of the “N95” label registered under class 10 in favour of Respondent no. 1 by the Petitioner, after receiving an email from the e-commerce platform www.amazon.in that the listing of its respiratory mask N95 had been removed by the platform on receiving a complaint by the Respondent. On inquiry, it was found that Respondent has obtained unlawful registration on the generic term N95 in Class 10 on “proposed to be used basis” in Surgical, medical, dental, veterinary apparatus and instruments. 

On being contacted, he responded that he shall only allow using the term N95 on their product with the entities who share their profit with him stating “his company is the owner of the said trademark and any other entity using trademark should alter their product packaging, name, image or label and take License from the holder which starts from  Rs. 10,000/- per month”.

In the Miscellaneous Petition for a stay, it was held by the court that the Respondent has applied for the mark on the proposed to be the used basis, which prima facie offends Section 9 of the Trade Marks Act, as N 95 is descriptive of the product available on the market. It is a generic term, meant to provide the quality of the masks and it is one of the oldest masks being used by the people for decades.

It is a life-saving device that is huge in demand by hospital authorities, healthcare workers, and even the general public due to the ongoing COVID-19 pandemic and due to government mandates, especially the mark related to healthcare products. Further, the term N95 indicates the nature, kind, quality, purpose and other characteristics of the particular product which is nonproprietary in nature. The registration of such impugned marks is barred under Section 9(1)(b) of the Trade Marks Act, 1999 under the absolute ground. 

In this case, the wording N95 in the registered mark is descriptive of a characteristic of the masks, specifically that they filter at least 95% of airborne particles and are non-resistant to oil to describe the type of product which makes it a generic term. Generic as it originates and belongs to identify a particular product because of its quality and usage over a long period. Thus, the term N95 is an industry-standard, holding a certifying standard named in the generic mark, Respondent no.1 cannot monopolize the said N95 mark in trade practices. Generic terms cannot be registered under trademark law and it provides no such protection to the proprietor. In the present case, the relevant public does not identify the goods as emanating just from Respondent No.1.

Let’s look at further case laws

Nestle’S Products Ltd. vs P. Thankaraja And Anr.

It was held by the Hon’ble Madras High Court that “INSTEA” tends to monopolise the tea market as the said mark is a general description of ‘instant tea’ or ‘instantaneous tea’ and granting registration to such word-mark, would make its owner a monopolist of a part of the commonly used term by the customer and sellers for something that is prepared instantly or on a go.

Cadila Healthcare Ltd. v Gujarat Cooperative Milk Marketing Federation Ltd. and Ors, 2009

It was held that generic term is only entitled to protection on the ground that it had acquired a distinctive character in the minds of the general public and had acquired a well-known status, however, it depends upon case to case. Hence, in general, the generic mark is not entitled to protection under the Act.

Jain Riceland Pvt. Ltd. v. Sagar Overseas, 2016

The Hon’ble Delhi High Court held that the generic word cannot acquire distinctiveness.

ITC Ltd v. Nestle India Limited, 2013

It was held by the High Court of Madras that the mark ‘Magic Masala’ is not a description of the product but, rather a laudatory expression, and cannot be monopolised by a single entity. Further, it was held that the terms ‘Magic’ and ‘Masala’ are commonly used terms by different manufacturers in the food industry and it would be unfair to confer monopoly over the same expression.

Conclusion 

It is concluded that N95 is a generic term in the mask industry and is not protected or likely to be registered as a trade-mark by a single entity. It is a descriptive mark that is used extensively by most industries, hospitals, government institutions and the common public in the current COVID-19 pandemic. N95 is an indicator in the trade to describe the quality, kind, purpose and various other characteristics of a particular product which is non-proprietary in nature and is barred by Section 9(1)(b) of the Trade Marks Act, 1999.

So, the essential products such as N95 masks, are not capable of being registered as a trademark, given their quality, which can be identified easily by the public in general and especially after the increase in pollution and current pandemic crisis which made it essential gear for survival and to fight against the airborne diseases or the polluted environment.  

References 

  1. The Trade Marks Act, 1999
  2. SSC online 
  3. Indian Kanoon 

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