Our Associate, Abdul Hannan discusses “Associate and Series Trade Marks — Explained”
Developing a successful brand takes considerable effort, both in terms of the time and money expended. Thus, when a brand becomes reputed or known to consumers in the relevant market, brand owners try to capitalize on such reputation, by creating sub-brands or a family of brands under the umbrella of the popular parent brand. This allows successful parent brands to build a stronger relationship with a segment of its existing customer base, attract new customers, and expand into new profitable revenue streams. Indian trademark law recognizes the importance of sub-branding/creating a family of brands, and to this extent incorporates specific provisions with respect to associated and series trademarks, for the benefit of owners of house/parent brands.
Under Indian trademark law, associated trademarks refer to those trademarks which are owned by the same proprietor in respect of identical or similar goods and services, which would otherwise be likely to deceive or cause confusion if used by a person other than the proprietor. 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. For two or more marks to be deemed to be associated, the marks, in addition to being identical/ substantially similar and in respect of the same goods/ services, must also be in the name of the same proprietor.
Once two or more trademarks are associated together, Indian trademark law mandates that the marks must be assigned or transmitted together. Separate assignment of associated trademarks is not allowed. Such a mandate is in consonance with the reason behind the concept of associated trademarks, i.e., no separate right should be created for identical/ similar trademarks, in the name of different proprietors, for same or similar goods/ services.
One major benefit of having associated trademarks is that under Indian trademark law, use of one of the associated trademarks would be sufficient to prove use of all the associated trademarks. Although it is mandatory to use the trademark after registration and non-use can lead to the removal of trademark from the Register of Trade Marks, in cases of associated trademark, use of one of the associated trademarks would be sufficient to prove use of all the associated trademarks. This is helpful in the event of a non-use cancellation proceeding being initiated against one of the associated trademarks. In such a scenario, a non-use cancellation proceeding can be successfully defended against, if use of an associated mark can be evidenced.
Another benefit of associating a trademark with an earlier trade mark on the Register, is that the prosecution of the second trade mark will be easier owing to recognition of prior rights emanating from the first trade mark.
Another species of trademarks governed under Indian trademark law are series trademarks. Series trademarks act as a variation to the general rule that separate applications must be mandatorily filed for each trademark. As per Indian law, variations of a trademark can be registered as a series trademark under one registration. In order to secure a registration of a series trademark, it is essential that all the marks in the series must resemble each other as to their material particulars. The only differences allowed between the proposed series trademarks can be in respect of non-distinctive features, such as statements as to number, size, price, quality, quantity, geographical origin, color etc. The test that will be employed would be that the dissimilar features when considered as separate trademarks would not be regarded as having distinctive character, and that these features do not substantially affect the identity of the trademark.
Further, it is necessary that each of the trademarks in the series must be in respect of the same goods or description of goods or services. A series registration is not possible where all the goods/ services, although of the same description, are not in the same Nice Classification. On the other hand, where the goods, although falling in the same Nice Classification, are not of the same description, even then a series registration can not be granted. Accordingly, the expression “of the same description of goods” refers only to those cases where each of the marks comprising the series is claimed in respect of goods which are of the same description, and which also fall in the same Nice Classification.
Give the nature of series trademarks, Indian trademark law also imposes a condition that all marks registered as series in one registration are to be deemed to be associated trademarks. This is done to ensure that the marks can only be assigned together, and also help the proprietor in evidencing use of the series trademarks, since as discussed above, use of any one of the series marks would be accepted as use of all the marks.
From a review of these provisions of Indian trademarks law, it is evident that the legislature has, by granting certain statutory benefits to owners of parent brands, recognized the commercial importance of sub-branding/creating a family of brands. The benefits result from the less onerous documentary and evidentiary requirements during the prosecution of associated and series trademark applications, the non-requirement of showing use for each trademark in a non-use cancellation action etc.