INTRODUCTION

The idea of associated and series trademarks is crucial as it aids in defending the rights and interests of trademark owners and acts as a source identifier. The legal framework of linked trademarks in India helps to avoid market confusion. By classifying connected trademarks as a single entity, it assures that identical or closely related trademarks do not mislead or confuse customers. This encourages fair competition and protects both trademark owners’ and customers’ interests.

RELEVANT PROVISIONS UNDER THE TRADE MARKS ACT, 1999 FOR ASSOCIATED AND SERIES TRADEMARKS

Associated Trademarks are marks which are owned by the same proprietor in respect of similar / identical goods and/ or services ; they are associated so that there is no confusion regarding the source of the goods and/ services. These marks are entered on the register as associated with the earlier registered trademarks in order to prevent the existence of multiple rights in the market. Associated trademarks are generally used by businesses that use the same or similar trademark to expand their operations to newer goods and services.

Section 16 of Trade Marks Act, 1999 (hereinafter referred to as the Act), makes it very clear that in respect of any goods or services which are identical with another trademark, which is registered in the name of same proprietor or so nearly resembles it as to be likely to be deceive or cause confusion if used by a person other than the proprietor, such trademark shall be registered as associated trademark. 

Series trademarks refer to more than one mark, having resemblance with each other as they share a common family denoting as a family of marks, which have either a common suffix or prefix. They differ only in non-distinctive character such as colour, quality, location, place, etc, or even sometimes in goods or services. For example, “Swiggy Genie and “Swiggy Instamart” are both different kinds of services being provided by Swiggy, however, the main word ‘Swiggy’ is present in both the services and it’s an example of a series mark as trademarks resemble each other in the core distinctive particulars. Series trademarks can be registered within one application whereby certain particular characters can be granted additional protection.

Section 15 of the Trade Marks Act, 1999 covers the registration of parts of trademarks and of trademarks as a series, where a trademark applied for registration consist of more than one feature, and the proprietor claims exclusive right of all such features separately, he is required to seek registration for each such part as a separate trademark, through a series trademark registration. Each mark in the series must have the same goods/services description.  The registration is at the Registrar’s discretion; if the Registrar believes that the provisions mentioned under Section 15 of the Trade Marks Act, 1999, are not met, he may ask the applicant to delete any of the marks in the series application. The Act states that each such separate trademark shall fulfill all the conditions of an independent trademark and shall be examined independently to determine whether it can be registered or not and will be subject to all the subsequent procedures.

All trademarks registered in accordance with the provisions of sub-section (3) of section 15 of the Act as a series in one registration ,shall also be registered as associated trademarks.

ASSIGNMENT AND TRANSFER OF ASSOCIATED MARKS

Section 44 of the Trade Marks Act, 1999 mandates that the associated trademarks have to be assigned or transferred as a whole and not separately. There cannot be separate assignment or transfer of associated trademarks. The logic behind the assignment or transfer of associated trademark together is that no separate rights should be created for a trademark in the name of two different entities.  The purpose is the same to avoid any confusion in the market.

 In case the assignor/transferor or the assignee/transferee is not willing in buying/selling all the associated marks, dissolution of associated marks be requested before the Registrar; allowing such dissolution of marks is based on the discretion of the Registrar of the Trade Marks Registry.  If the Registrar is satisfied that there would be no likelihood of deception or confusion, he would allow the dissolution.  

 JUDICIAL REFERENCE 

 In Foodlink F And B Holdings India Private Ltd vs Wow Momo Foods Private Limited, it was held that in fact, if there is a disclaimer for any of the associated mark there is no reason why the certificate of registration of the later marks would not expressly include such disclaimers, if such was the intent of the registering authority. 

For the purpose of taxation, it was held in Nirma Chemical Works Ltd.,, … vs Assessee that  “NIMA” brand being associate trademark, cannot be separated from main brand “NIRMA”. The attempt by the assessee through valuation report, to disassociate the associate trademark from the main brand is in violation of provisions of Trade Marks Act, 1999 and such act on the part of the assessee as well as the valuer is unlawful and hence is not permissible at all.

Author(s):

Sonu Shaji
Linkedin : https://www.linkedin.com/in/sonu-shaji-b41b4716b/

Paramita Nandy Gupta
Linkedin : https://www.linkedin.com/in/paramita-nandy-gupta-36a18420/

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