The evolution of international markets around the world has brought a considerable amount of change in the business strategies of the corporate houses. The brands which were famous for a particular product are now connected with numerous products in different markets. Further the market structure has also changed with the emergence of franchisee and licensing of the trademarks. The owner of the brand is not required to establish his own outlets everywhere instead he can easily give license to an interested person and earn royalty for the same without indulging in the day to day running of the business. The concept of associated trademark is also a genre of contemporary business scenario due to the emergence of big corporate houses that provides various similar and identical commodities under same or similar trademarks.
The trademarks which are registered for particular goods in a class might seek further registration for the goods which were not covered in the earlier registration in the class for example a trademark X was registered in the year 1980 for ready-made garment under class 25. In the year 1996 the owner of trademark started business of footwear under the same brand and applied for registration of it in class 25. If the registration is provided to him for the footwear then he would hold two trademark registration for the same trademark in a single class i.e. class 25. Later on if he assigns trademark registered for footwear to another person then it would create multiple rights for a trademark registration in two different entities for trademark X in one class. This will create confusion in the market. Therefore in order to overcome this difficulty the concept of 'Associated trademarks' is provided under the Act.
ASSOCIATED TRADEMARK UNDER ACT:
Section 2(1) (c) define the Associated trademark as "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, good 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"
The trademark are registered as associated trademark in cases where two marks registered under same class are identical or so nearly resemble each other as to be likely to 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.
Section 16 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"
The purpose of association is to safeguard public from the confusion originating from the presence of two identical/similar trademarks in the market in the name of two different proprietors. In addition to the trademark which are applied through different applications and which are so nearly resembled that the Registrar register them as associated trademarks under section 16, the trademark applied as a series trademark are deemed to be registered as associated trademarks. Although the condition of association is provided under the Act for the identical and similar trademark but the same condition cannot be imposed in all the cases as held in the case of Birmingham Small Arms Co Ltd's Appl1wherein it was held that "the condition of association could not be imposes, if the goods under consideration were of different description." In this case applicant applied for registration of trademark in class 12 which was earlier registered in class 19. The Registrar decided to associate the two trademarks, and the decision was later on reversed in the appeal and it was held that the goods were of different description and as such the two trademarks are not to be associated.
EFFECT OF ASSOCIATION OF TRADEMARKS:
When a trademark is associated with another one then the two trademarks would be for most of cases taken as one trademark apart from the practical usage of the two trademarks.
Although it is mandatory to use the trademark after registration and non-use of the same would lead to the removal of trademark from the register at the behest of the party whose interest is hampered by the existence of trademark in the register. In cases of associated trademark, use of one of them can be taken as use of another.
Section 55 provides that the use of one of the associated trademark may be accepted as the use of the associated registered trademark for the purpose of proving the use of trademark for any provision under the Act. Therefore if in a cancellation proceeding if one of the two associated trademark is in use than that use would be considered as use for cancellation proceedings against the second associated trademark.
In case of P. Kamala Devi Chordia Vs. P. Ganeshan and Ors2the hon'ble Intellectual Property Appellate board held that "Section 54(1) (section 55 of Trademark Act, 1999) enables the authority to accept use of a registered associated Trade Mark or of a Trade Mark with addition or alterations, not substantially affecting its identity."
Section 55 enables the tribunal to accept the use of associated trademark in cases where the use of the registered trademark is required to be proved as the use of trademark.
NO SEPARATE ASSIGNMENT OF TWO ASSOCIATED TRADEMARKS:
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 correspond to the condition that no separate right will be created for a trademark in the name of two different entities in order to remove confusion in the market.
In case if 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 association under section 16 (5) of the Trademark Act, 1999. This section empowers Registrar to dissolve the association if he is satisfied that there would be no likelihood of confusion or deception if those trademarks are to be used different person in relation to any goods or services in respect of which the mark were registered.
The associated trademark concept make sure that two identical trademark would be registered in name of a particular person should not create multiple rights in the market. The parity in the distinctiveness of the trademark should remain in the market in reference to the goods of similar nature. Once two trademarks are associated due to the similarity or identity, they shall not create multiple rights in the market which will create deception and confusion in the market. Although the use of one associated trademark can be taken as the use of another but if associated trademarks attain separate distinctiveness in the market then the proprietor can also apply for the dissolution of association in order to use them separately.
1. (1907) 24 Rpc 563