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Due to the COVID-19 pandemic, the use of N95 masks has proliferated exponentially. Research scientists from the Indian Space Research Organisation (ISRO) carried out studies and found the N95 masks to be the most effective at reducing the horizontal spread of infectious diseases, including COVID-19. Indeed, the term N95 has now become commonplace. In that context, the following interesting case (Sassoon Fab International Pvt. Ltd. v Sanjay Garg) came up for consideration before the Intellectual Property Appellate Board (IPAB).

A person named Sanjay Garg (the Respondent) had filed a trade mark application for the mark N95 in class 10 (in relation to ‘surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopedic articles; suture materials; therapeutic and assistive devices adapted for persons with disabilities; massage apparatus; apparatus, devices and articles for nursing infants; sexual activity apparatus, devices and articles’) on 14 April 2020. Rather surprisingly, the said application proceeded to registration and the certificate of registration was issued on 11 November 2020.

An entity named Sassoon Fab International Pvt. Ltd. (the Petitioner) filed a Rectification Application for removal of the registration from the Trade Marks Register, along with a Miscellaneous Petition before the IPAB seeking stay of operation of the registration until the said Rectification Application is finally decided. Bearing in mind the larger public interest, the said Miscellaneous Petition for stay was considered first, on an expedited basis. In that regard, the IPAB observed and held as follows:

(a) It is an established principle that a generic expression can never be granted registration and/or protection as a trade mark under the trade mark laws, except under limited circumstances when it is has acquired a distinctive character in the minds of the relevant members of the target audience.

(b) The term N95 has been in use since the early 1970s, and refers to a single respirator face mask which was designed to filter 95% of the dust particles from entering the nose or mouth, and was initially designed by the famous 3M Company for industrial use. Indeed, 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.

As the term N95 is prima facie a generic term in the mask industry, the same is neither capable of being registered or protected as trade mark (on the basis of inherent distinctiveness) nor can the same be appropriated by any one entity.

Registration of the impugned mark ought to therefore be barred under the absolute grounds of refusal under Section 9(1)(b) of the Trade Marks Act, 1999 (as amended). Further, the Respondent cannot monopolize the use of the said mark.

(c) The IPAB found that the Respondent is a squatter and has obtained registration for the mark N95 as a trade mark with malafide intent.

(d) For inter alia the said reasons, given the current public sentiment during this global public health crisis and bearing in mind the dishonesty factor on the part of the Respondent, the IPAB stayed the operation of the trade mark registration No. 4487559, pending final disposal of the said Rectification action.

By: Denise Mirandah

This article was first published in the Pharmaceutical Trade Marks Group (PTMG) Law Lore & Practice, May 2021 Edition.