‘The Associated mark’, as the name suggests, is a mark that can be ‘associated’ or ‘joined’ to another mark. The marks can be associated provided the marks to be associated are similar and are owned by the same proprietor in respect of identical or similar goods and services.
Under Indian trademark law, all the below-mentioned criteria should be fulfilled for the mark to be associated trademarks:
(a) that the mark should be similar AND
(b) Owned by the same proprietor AND
(c) In respect of identical or similar goods and services.
- Thus, the marks to be associated need not be identical to be associated marks. The word mark can be associated with the device mark and vice versa. The words with common suffixes/prefixes are registered as “associated trademarks.
E.g.: -The marks of Pidilite Industries Limited (PIL) i.e., FEVISTIK, FEVIGUM, FEVICOL, FEVIPASTE, all containing the common prefix ‘FEVI’ are associated marks.
The Amul Label for its goods i.e. ICE CREAM AND ICE CREAM CONFECTIONS in Class 30 is associated with the word mark AMUL for its goods i.e. MILK BASED BEVERAGES in Class 30.
So, the marks to be associated should be such that they are likely to cause confusion or deception amongst the public, if registered in same class and owned by the same proprietor.
- Further, the mark can be associated only if they are in the same classes. Similar or identical marks filed in different classes although by the same proprietor cannot be associated. If the goods are of different description, two similar trademarks cannot to be associated.
- Still further, it is not required that the mark should be filed on the same date to get it associated. Similar marks filed at different durations by the same proprietor in same class can be associated.
- There is no limit on the number of marks that can be associated.
Why the mark should be associated?
The definition of “associated trademarks” under Section 2(c)[1] read with Section 16[2] of The Trademarks Act, 1999 clearly indicates that main purpose of the registration of the trademark as ‘associated trademark’ is only to avoid any confusion or deception amongst the members of trade and public about the origin of the goods/services. Mark could be registered as an associated trademark only if it is likely to deceive or cause confusion if used by the person other than a proprietor.
The associated trademark is not just for the advantage and clarity for the public OR to maintain the proper records of the Trademarks Registry, the proprietor of the associated mark is also benefited under Indian trademark law as given below.
Section 55[3] of the Trademarks Act, 1999 provides that 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 trademark for proving use of the associated registered trademark in question.
Therefore, in cases of associated trademark, use of one of the associated trademarks would be sufficient to prove use of all the other associated trademarks. The same is not mandatory provision and considering the use is totally the discretion of the Tribunal.
Secondly, it has also been observed that an application for a new mark gets accepted without much objection from the Trademarks Registry, if the new mark is associated with earlier registered marks.
What happens if there is disclaimer (terms and condition) in one trademark and not the other associated trademark?
If a trademark with disclaimer were to be associated with other trademarks without disclaimer, in such case, it was held by The Hon’ble Bombay High Court in Pidilite Industries Limited v. Poma Ex Products reported in [2017 (72) PTC 1 Bom] that:
“A perusal of Section 2(c) and Section 16 of the Trade Marks Act, 1999 does not indicate that the terms and conditions of the registration in registration certificate of one trademark can be read into the terms and conditions of the another certificate or registration of the trademark. In my view, every registration granted by registering authority in respect of each trademark is separate and independent and thus the condition of the registration of one trademark cannot be imported into the certificate of registration of another trademark.”
Thus, each Associated trademarks are separate and an independent trademark and the condition of the registration of one trademark cannot be imported into the certificate of registration of another trademark.
What happens if one of the associated trademarks is abandoned due to any reasons?
The law is silent whether the associated trademarks will get affected. To be on safer side, since there is available option to the dissolve the association, it is advisable to file an application to dissolve the Association by filing form TM-P. The government fee to dissolve the application is 900 INR per mark per class.
Who can make an application for associated mark?
The Applicant or its agent can at the time of filing an application (Form TM-A) for trademark registration mention that they would like to get the application associated with any earlier trademarks. If the Registrar finds that the application similar to another mark, he shall require them to be registered as associated trademarks.
If the Applicant has not in his application associated the similar marks, the Examiner may suggest their association in the examination report. The Applicant will then have to amend the application by filing Form TM-M stating their intent to associate with another trademark. Although it is nowhere mentioned that filing TMM is a mandatory requirement. The Applicant can therefore simply in its response to the examination report express a willingness to associate the said trademark.
How do we know if the marks are associated?
The online status of the Trademarks Registry displays a column stating, ‘condition’ or ‘associated Trademark’ and application numbers of the associated mark are provided.
The associated trademarks numbers are entered on the Register, so that one can easily determine the number of similar marks owned by the same proprietor in the same class.
Assignment and transfer of Associated mark
Section 44 of the Trademarks Act, 1999[4] mandates that the associated trademarks have to be assigned or transferred together. 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.
For example, a proprietor ABC has associated marks “X” and ‘X1’ for beauty products. If the proprietor ABC assigns ‘X” to another entity ‘DEF’ and does not assign ‘X1’. In such case, there will be situation wherein there will be two proprietor ‘ABC’ and ‘DEF’ for a similar trademark in same class. This will create a lot of confusion in the market. Hence, to overcome such scenario the law mandates that the associated trademarks have to be assigned together and not separately.
However, if the assignor/transferor or the assignee/transferee is not willing in buying/selling all the associated marks. In such case the option available is to dissolve the association of the marks. Allowing such dissolution of marks is based on the discretion of the Registrar of the Trademarks Registry. If the Registrar is satisfied that there would be no likelihood of deception or confusion being caused if the trademarks were used by any other person in relation to any of the goods or services in respect of which they are registered, he would allow the dissolution. Only after the dissolution is allowed, then the marks can be assigned or transferred separately.
Series trademark:
All trademarks registered in accordance with the provisions of sub-section (3) of section 15 as a series in one registration shall be registered as associated trademarks.
Caution:
Although, the recordal of associated marks assists in properly maintaining the records of the Trademarks Registry, India, it would be more of assistance if the recordal of associated marks is properly recorded for all the marks associated together.
It is observed that the latter mark will have an application number of the earlier associated mark, but there will be no mention about any association in the earlier registered mark. It may happen that at the time of assignment or transfer of marks, you miss to put all the associated marks and transferring only some of the associated marks and not all the marks will render the assignment or transfer void. It is very important to conduct proper search and due diligence before the assignment or transfer of a mark.
For any further queries with respect to associated trademark, please contact tm@statjuris.com
Relevant Act and Rules with respect to ‘Associated trademark’: –
Section 2 in The Trademarks Act, 1999, Definitions and interpretation. —
In this Act, unless the context otherwise requires, —
Sec. 2(1) (c) “associated trademarks” means trademarks deemed to be, or required to be, registered as associated trademarks under this Act.
Sec. 2(1) (3) For the purposes 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 descriptions of goods and descriptions of services.
Section 16. Registration of trademarks as associated trademarks. —
Sec. 16.1 Where a trade mark which is registered, or is the subject of an application for registration, in respect of any goods or services is identical with another trade mark which is registered, or is the subject of an application for registration, in the name of the 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 trademarks.
Sec. 16.2 Where there is an identity or near resemblance of marks that are registered, or are the subject of applications for registration in the name of the same proprietor, in respect of goods and in respect of services which are associated with those goods or goods of that description and with those services or services of that description, sub-section (1) shall apply as it applies as where there is an identity or near resemblance of marks that are registered, or are the subject of applications for registration, in the name of the same proprietor in respect of the same goods or description of goods or same services or description of services.
Sec. 16.3 Where a trademark and any part thereof are, in accordance with the provisions of sub-section (1) of section 15, registered as separate trademarks in the name of the same proprietor, they shall be deemed to be, and shall be registered as, associated trademarks.
Sec. 16. 4 All trademarks registered in accordance with the provisions of sub-section (3) of section 15 as a series in one registration shall be deemed to be, and shall be registered as, associated trademarks.
Sec. 16. 5 On application made in the prescribed manner by the registered proprietor of two or more trademarks registered as associated trademarks, the Registrar may dissolve the association as respects any of them if he is satisfied that there would be no likelihood of deception or confusion being caused if that trade mark were used by any other person in relation to any of the goods or services or both in respect of which it is registered, and may amend the register accordingly.
Section 44 in The Trademarks Act, 1999,
44. Assignability and transmissibility of associated trademarks. —Associated trademarks shall be assignable and transmissible only as a whole and not separately, but subject to the provisions of this Act, they shall, for all other purposes, be deemed to have been registered as separate trademarks.
Section 55 in The Trademarks Act, 1999
55. Use of one of associated or substantially identical trademarks equivalent to use of another. —
Sec. 55.1 Where under the provisions of this Act, use of a registered trademark is required to be proved for any purpose, the tribunal may, if and, so far as it shall think right, accept use of a registered associated trademark, or of the trademark with additions or alterations not substantially affecting its identity, as an equivalent for the use required to be proved.
Sec. 55.2 The use of the whole of a registered trademark shall, for the purpose of this Act, be deemed to be also use of any trademark being a part thereof and registered in accordance with sub-section (1) of section 15 in the name of the same proprietor.
Sec. 55.3 Notwithstanding anything in section 32, the use of part of the registered trademark in sub-section (2) shall not be conclusive as to its evidence of distinctiveness for any purpose under this Act.
Rule 54 of Trademarks Rules, 2017
Sec 54.1 Where a trademark is registered as associated with any other trademarks, the Registrar shall note in the register in connection with the first mentioned trademark the registration numbers of the trademarks with which it is associated and shall also note in the register in connection with each of the associated trademarks, the registration number of the first mentioned trademark as being a trademark associated therewith.
Sec 54.2 An application under sub-section (5) of section 16 to dissolve the association as respects any of the trademarks registered as associated trademarks shall be made in Form TM-P and shall include statement of the grounds of the application.
[1] Sec. 2(1) (c) “associated trademarks” means trademarks deemed to be, or required to be, registered as associated trademarks under this Act.
[2] Sec. 16.1 Where a trade mark which is registered, or is the subject of an application for registration, in respect of any goods or services is identical with another trade mark which is registered, or is the subject of an application for registration, in the name of the 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 trademarks.
[3] Sec. 55.1 Where under the provisions of this Act, use of a registered trademark is required to be proved for any purpose, the tribunal may, if and, so far as it shall think right, accept use of a registered associated trademark, or of the trademark with additions or alterations not substantially affecting its identity, as an equivalent for the use required to be proved.
[4]44. Assignability and transmissibility of associated trademarks. —Associated trademarks shall be assignable and transmissible only as a whole and not separately, but subject to the provisions of this Act, they shall, for all other purposes, be deemed to have been registered as separate trademarks.
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