Associated trademarks allow a business to brand new products and services with its primary mark or use derivative forms of its primary trademark. This type of trademark also allows a business to register a mark similar to one belonging to another business. The reason for granting such a trademark can be well explained through an illustration.
For example, a trademark “T” was registered for ready-made garments under class 25 in the year 1994. Say, in the year 1999, the same proprietor started a footwear business under the same brand and applied for registration of it in class 25. If registration is allowed for footwear, he will have two trademark registrations for the same trademark in class 25. Later on, if he assigns one footwear trademark to another person, two entities will have the same trademark in one class. This will create a lot of confusion in the market. Therefore, associated trademarks are given to overcome such situations.
Associated Trademarks – Definition:
The Trademarks Act 1999 provides for various provisions dealing with associated trademarks. The definition of an associated trademark is given in section 2(1)(c) of the Trademarks Act 1999, which reads as follows-
“associated trademarks” means trademarks deemed to be, or required to be, registered as associated trademarks under this Act.”
Further, Section 2 (3) provides that.
“for the purpose of this Act, goods and services are associated with each other if it is likely that those goods might be sold or otherwise traded in and those services might be provided by the same business and so with description of goods and description of services.”
Apart from this, section 16 of the act provides that-
“where a trademark which is registered, or is the subject of an application for registration, in respect of any goods or services is identical with another trademark which is registered, or is subject of an application for registration, in the name of same proprietor in respect of the same goods or description of goods or same services or description of services or so nearly resembles it as to be likely to deceive or cause confusion if used by a person other than the proprietor, the Registrar may, at any time, require that the trademarks shall be entered on the register as associated trademark marks.“
Associated Trademarks – Purpose:
The trademarks are registered as associated trademarks in India in cases where two marks registered under the same class are identical or so nearly resemble each other as to likely deceive or cause confusion if used by a person other than the proprietor in respect of the same goods or description of goods or services. The primary trademark granted covers a business’s primary intellectual property. But the business may also apply for associated trademarks for dissimilar goods and services.
For example, a distiller named Jack can register a trademark for “Jack’s wines.” But he must register associated trademarks for “Jack’s beer” and “Jack’s whiskey.” Therefore, if a company wants to expand its business and wants to file an application associating it with its earlier mark and has thus filed an application with broader specifications, it can do so provided the application also contains specifications of the earlier application.
Trademark Act for Associated Marks:
Under section 55, where the use of a registered trademark is required to be proved for any purpose, the tribunal may accept the use of one of the associated trademarks to prove use of the associated registered trademark in question. So, where a person has been granted an associated trademark for different trademark classes of goods, his sincere usage of the trademark in one class would automatically mean that he has been using it in the remaining classes as well.
In the case of P. Kamala Devi Chordia Vs. P. Ganeshan and Ors[1], the hon’ble Intellectual Property Appellate board held that “Section 55 of Trademark Act, 1999 enables the authority to accept the use of a registered associated Trade Mark or of a Trade Mark with addition or alterations, not substantially affecting its identity.”
Thus, anyone can file associated applications provided the change, addition, or alteration does not substantially affect their identity. Moreover, if the mark is withdrawn or is not valid, the applicants can request the Registry to “dissolve the association” by filing a particular form.
Under section 44 it is provided that the two associated trademarks shall be assigned or transmitted together, and there would not be a separate assignment of two associated trademarks. This provision aims at removing any sort of confusion in the market. In case the owner can prove to the satisfaction of the Registrar that the two associated trademark has attained a separate distinctiveness in the market, then the owner can apply for the dissolution of the association under section 16 (5) of the Trademark Act, 1999.
Benefits:
To sum up, associated trademarks in India shall have the following benefits:
i. Prevents the existence of multiple rights in the market.
ii. Prevents the existence of multiple rights in the market. Keeps in check defensive registration as only those marks with the same/similar business are required to be associated.
iii. Keeps defensive registration in check as only those marks with the same/similar business are required to be associated.
iv. For businesses that keep expanding their services and including newer goods, the associated trademark is a good option for them.
v. Also, in a cancellation proceeding, if one of the two associated trademarks is in use, then the use of one can be considered as use for cancellation proceedings against the second associated trademark.
vi. Under section 44, no two associated trademarks can be assigned or transmitted separately. It can be done so only after the dissolution of the association. This helps in removing confusion in the market.
vii. If only one of the associated trademarks was continuously being used and not the others, the renewal of the trademark registration cannot be rejected solely because the remaining trademarks were not in use.
Drawbacks:
Many people take advantage of the benefits of the associated trademark system concerning cancellation and renewal and use the provisions to obtain an excessive number of so-called “stock trademarks.” This might result in an increase in unused trademarks. Moreover, under associated trademarks, the primary trademark has an impact on the subsequent trademarks as well. Hence, the subsequent trademarks shall be affected if the primary trademark is not renewed or stands invalid for any reason.
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