Trademark Series, Concept and Position in India
The concept of trademark series is relatively new in the arena of Intellectual Property Law. The development of this species of trademark has recently gained pace, and is expected to provide a whole new level of trademark protection for the world’s big and small industrial houses. Though most nations have a provision or two regarding the registration of trademark series, in the trademark law operating within their respective territorial limits, including India,Bridge/Bainbridge decision of the Court of Justice of European Union is the most cited one with respect to definitive guidelines on the issues on trademark series.
What is trademark series?
The trademark series or family of marks comprises a string of marks with an intention of having a particular distinctive ingredient function as a point of identification for the pertinent public. In this manner, certain mark elements can be afforded higher level of protection by registering them all within one application and using several marks containing a common element, thus acquiring exclusive right over them, and distinctiveness through prior use.
A number of marks contained in a series application, are essentially identical and where trivial differences are insignificant (for instance the same word mark represented in italics, in capitals and in plain lower case lettering). ‘McDonald’s has established a series of ‘Mc’ word marks. Examples of the McDonald’s family of trademarks include ‘McDonald’s,’ McDonalds Hamburgers,’ ‘Egg McMuffin,’ ‘McChicken,’ ‘McDonuts,’ ‘Big Mac,’ ‘McPizza,’ ‘McCafe,’ ‘Chicken McNuggets,’ ‘McDouble’ ‘Chicken McBites’ and many others’ .
A proprietor may very well make use of the same trademark on many classes of goods or services and append an added mark, name, or number to signify the species, without compromising on the assurance of the quality that the trademark may require to provide for each such product otherwise. The trademark law may prove rewarding for the trademark family possessor when promoting his trademark family by preventing everyone else from making use of a mark having surname for similar goods or services, even when the mark may not be deceptively similar to any specific member of the trade mark family.
Concept of a trademark series or family of marks
As to the existence of a series of marks, it is a question of fact founded on the common determining component’s distinctiveness, promotion, advertising, the family’s use, and inclusion within the set’s other marks or their usage in day to day sales activities in fashion, as to generate common publicity and subsequently acknowledgment of common ownership founded upon a component common to each mark . The paramount requisite is that their identity does not get substantially affected by the differences between the marks.
Constitutional features within all the members of a trademark family is that, each of them share a word, syllable, prefix, suffix, or other characteristic that identifies each of them as a member of that family.
In the words of McCarthy “A trademark owner may use a plurality of marks with a common prefix, suffix or syllable. It has the opportunity to establish that it has a family of marks, all of which have a common “surname”. It relies on this to argue that defendant’s mark, which incorporates the “family surname”, is confusingly similar to the total “family group”. In effect, the family “surname” or distinguishing element is recognized by customers as an identifying trademark in and of itself when it appears in a composite…..“
The requirement for assumption that a specific mark forms part of a family of marks is the common element. This requirement furthermore applies to its appearance and position in the signs, though trivial graphical dissimilarities in the common element may not reject an assumption of existence of a series of marks. On the other hand, altered or added letters regarding the common element usually prohibit a supposition of a family of marks
With regards to the use of the trademarks as series, the substantiation of the existence of a trademark series requires proof of registration in respect of every mark, along with the proof of their long ‘prior use of each of the member marks of a family’ . When the existence of a trademark family is established, the reproduction in the opposing trademark application which contains universal ingredient of the family of marks can be sufficient to assert odds of confusion and to counterbalance the phonetic and visual differences of the marks when taken altogether .The overall test not simply being, if used by unrelated undertakings whether the marks in the series would be regarded as confusingly similar to each other. Any distinction in the non-distinctive character in the marks must put down the conceptual, aural and visual individuality of each of the trademarks substantially similar. It may be added here that logos and device marks are no stranger to the occurrence of a series trade mark.
Consumer perception with respect to trademark as series, lies in the supposition of family marks by the public which requires that the universal ingredient of the marks at question by virtue of use has the crucial distinctiveness, competent to provide, as the prime indicator of a product line, in the eyes of the target community of public and also that the public concerned recognizes the common part of these marks as originating from one undertaking. Such recognition by the public can be only inferred through submitting evidence of use of the family of trade marks.
The concept and position of trademark series in India
Fact that the concept originated in the United Kingdom is an undisputed one. In respect Trade Mark Act 1994 the reference of the Beck Koller application , continues to be frequently made, in which it was observed that an objection taking the defense of the existence of a family or series of trademarks must be founded on use of those marks, although this case is more than half a century old now. Like other laws, Indian Trademark Law is also largely based on English Trademark laws, The Indian Trade Mark Act, 1999 is hence, a facsimile of the UK Trade Mark Act, 1994 and consists of similar provisions regarding family of marks to those in UK Trade Mark Act 1938. However Indian Trade Mark Registry has adopted several practices different from those in UK. Registration of a number of trademarks can be applied for as a series within one application under this section. This is stands as an exception whereas the general rule being that separate applications should be made for every trade mark. Every trademark in the series must fall within the category or description of the same goods or services; this is a fundamental requirement of a trademark series application. It is likely that two sets of goods may be of the same depiction, even if such fall in different classes, but in this case also, all the marks shall not be granted registration as a series in one application.
The language of Section 15 is such that, it imposes a limitation on the acceptable differences between the trademarks seeking registration as series. Differences allowed are only with respect to the matters but not a combination of them. Therefore it may be inferred that when two trademarks are different with regards to statements of quality, price, number, or names of places along with colour, they may not be admitted within the scope of the section as a series of mark. Although of a non-distinctive nature this may be understood as too many differences, and may significantly affect the character of the trade mark. Section 15(3) (d) of 1999 Act deals with the registration of series trademarks, where colour is only dissimilarity among the member marks. Section 10(2) enacts that in such cases, it shall be deemed that trade mark is registered for all colours, this leads us to the implication that, by the virtue of the definition of ‘trade mark’ given in Section 2(2)(zb) of the Act, the term ‘combination of colours’ could mean to constitute a trade mark eligible for registration. Section 16(4) of the 1999 Act, seeks to register marks as series in one registration as associated marks. By virtue of the provisions of Section 44 of 1999 Act, associated marks can be transmitted or assigned only in entirety and not individually. Normally, the employment of one associated trademark is seen as equivalent to use of all the other marks, associated to it.
The case of Glaxo Group Limited v Union of India, Voltas Limited and Others was an appeal filed against the decision of the Intellectual Property Appellate Board, where the petitioner filed for registration of a trade mark Volmax in Class 5 of the Schedule I of the Trade Mark Act 1999. The Respondent Voltas Limited established that it has been using a family of marks having the common element ‘Vol’ namely, Voltas, Volfruit, Volfarm, Volpump, Voldrill, Volita, Voltrion, Voldrum, Vollam, Volram, Volbit, Vol-Seafood, Volfan And Volphor.The Assistant Registrar concluded that keeping in view of the series of trademarks owned by the opponents consisting of common prefix VOL, if the trade mark in dispute is grated registration, it is likely to confuse or cause deception in the mind of a customer who is already familiar with the opponent’s trademarks bearing the prefix VOL, The Delhi High Court observed that impugned order of the IPAB does not seem to have conducted any such detailed assessment of the two competing marks at all. Thus set aside order of IPAB and ordered the tribunal to decide the matter afresh.
In a case before Delhi High Court, Modi-Mundipharma Pvt. Limited vs. Preet International Pvt. Ltd. and others , the plaintiff who owned the registered trademarks of series having “Cotin” as suffix and was in prior use of his trademark “Fecotin”, filed infringement and passing off action, against the respondent. The respondent using “Femicotin” as his trademark for a product belonging to the same Class of the governing Act as the plaintiff’s “Fecotin” was registered. The Honorable Court not only passed the order of restraint against the use of “Femicotin” by the respondent on the ground of deceptive similarity, and attempt to pass off as plaintiff’s product on the part of respondent, but also accepted that plaintiff had a family /series of trademarks, having “cotin” as suffix.
The two most important features of trademark series is that firstly all the members of a particular series is owned by single proprietor and that each of such member share a common syllable, prefix or suffix and secondly the differences within the marks of a series do not affect substantially their identity. While establishing a trade mark series, registration of each and their prior use is the key. For public to identify the product line, common component and distinctive character of the trademarks alone will be necessary. A trademark owner, relying upon the family of marks doctrine, must establish that the purchasing public associates the common element, as well as the whole trade mark, with the owner of the family of marks; this common element must be distinctive.
The Trade Mark 1999 puts several conditions for the registration of trademarks as series, prime of which being that there should not be combination of differences so mentioned.
There are not many reported judgments in India, exclusively explaining the position of trademark series, and hardly any which lays down the rules, guidelines, requirements, requisites, and terms of registration or scope of protection of trademark series or family of marks within the territory of India. It seems like Supreme Court has yet to make its stand on the given concept. So it can easily be said that the concept of trademark series or family of marks is still young and under development within the territorial limits of India.
This article has been authored by Ritika Agarwal who is pursuing law at Faculty of Law- University of Allahabad.