Image from here (By Banej – Own work, CC BY-SA 3.0)
Introduction
In an order earlier this month, the IPAB issued an interim stay of the operation of the trademark registration for the word ‘N95’ (registration number 4487559 in class 10). The IPAB prima facie held that ‘N95’ is a generic word and could not have been registered under section 9 of the Trade Marks Act. I have no comment on the outcome of the order, and frankly, it is doubtful whether the registration would survive a final hearing. There have been several reports throughout the COVID-19 period on ‘N95’ face masks/respirators flooding the Indian market even though they do not really satisfy the ‘N95’ standard (e.g. this report). The order, when read in the context of the above facts, brings me to two points:
A. How Did It Get Registered?
The first is the obvious one – how it got granted in the first place. A quick search on the Trade Marks Registry’s website reveals that this application was filed by the proprietor on a ‘proposed to be used’ basis on 14th April, 2020, accepted on 11th June, 2020, advertised in the journal on 22nd June, 2020 and the certificate was ultimately granted on 11th November, 2020. No adverse examination report was issued. A further quick search on the Registry’s website for the word mark ‘N95’ in class 10 shows at least four other attempts to register the same with/without an accompanying device/logo, all of which have been objected to. Yet, this one registration sails through with absolute efficiency, and with absolutely no objections at all. The Trade Marks Registry never ceases to amaze me.
B. Trademarks and Regulatory Overlap: Certification Marks
The second is the abject failure of the regulatory system and this is a topic that involves trademark law overlays as well. The word ‘N95’ is actually a certification in the United States under 42 CFR part 48, titled ‘approval of respiratory protective devices’, intended only for items that fulfil a certain regulatory standard. The alphabet ‘N’ stands for ‘not oil resistant’ and ’95’ indicates that it filters out at least 95% of airborne particles. My quick search of the USPTO database, however, shows that much like the case in India, an attempt was made by a private proprietor to register ‘N95’ in the US in September 2020, which has been objected to by the USPTO (US Serial No. 90169399; non-final rejection issued on 3rd December, 2020; full documentation can be obtained from https://tsdr.uspto.gov/). What is surprising, however, is that the US Department of Health and Human Services Agency filed an application for ‘N95’ as a “certification mark” only on 17th June, 2020 (US Serial No. 90006709)!
A ‘certification mark’, for the uninitiated, is a mark that may be granted to a compliance agency (not to a person who would use it in the course of trade) to ‘certify’ that the goods conform to certain characteristics, such as origin, mode of manufacture, quality etc. Examples are ‘WIFI’ and ‘Woolmark’. In India, this is governed under Chapter IX of the Trade Marks Act.
Anyway, it seems that on 10th July, 2020, the USPTO has ‘suspended’ processing of this application by the US Government department for ‘N95; because there are six (6) other applications carrying the ‘N95’ word with an earlier filing date, and all of them filed by private individuals! The USPTO apparently was concerned that if one or all of these other pending applications were allowed, there would be likelihood of confusion! It may sound surprising that an application for a ‘certification mark’ by a government authority would be put on ‘pause’ because private players have filed individual applications comprising the word ‘N95’ (e.g., ‘N95 certified’). Unfortunately, it appears that this is a procedural inconvenience because, in law, due process must be followed qua the other applications by private proprietors.
With this base application in the US, the US Department of Health and Human Services Agency also moved an international application under the Madrid Protocol, which now bears the international registration no. 1564247 with effect from 19th August, 2020 (details available here). The list of designations made by the US department includes India (this information can be obtained from https://tsdr.uspto.gov/).
This Madrid application by the US department translates into India as TM Application No. IRDI-4783107. The status page of the Indian Trade Marks Registry’s website says this application is ‘Objected’ but I do not see any uploaded documents. Once it enters India, the statute (and the Madrid Protocol) allows the Indian Trade Marks Registry to raise objections to the international application within a specified timeline as if it were an Indian application. Rule 72 of the Trade Mark Rules, 2017 requires that the regulations governing the ‘certification mark’ (i.e. 42 CFR part 48) must be directly forwarded to the Indian Trade Marks Registry. Nothing in the statute precludes a foreign certifying agency to obtain registration of such ‘certification marks’; in fact, it may be illegal to do so.
The observation/finding of the IPAB is the above-noted case that the word ‘N95’ is ‘generic’ would not come in the way of this ‘certification mark’ for N95 being registered in India because by virtue of section 69(a) of the Trade Marks Act, sections 9(1)(a) and 9(1)(c) do not apply to certification trade marks. In contrast, section 11 does apply and thus, in theory, the ‘certification mark’ could be objected to/rejected/opposed for likelihood of causing confusion. But this is a far-fetched hypothetical because if ‘N95’ is generic and being used by everyone in the market, a private player’s registration/use coming in the way of the ‘N95’ certification is not likely.
If this registration for ‘certification mark’ in favour of the US department is allowed in India, it would then mean that no person can use ‘N95’ on the specified products such as masks/respirators, without compliance and certification from the US Department. That may be good news at least in one way – assuming the US department is truly interested in ‘policing’ this certification in India, consumers may feel safer. But it is equally disappointing that one must be dependent on the ‘policing’ by a US department to ensure safety standards of masks/respirators in India.
The lack of implementation of the corresponding Indian standard or ‘certification mark’ is also one of the reasons for this. In my understanding, the BIS has issued a separate standard with the denomination “IS:9473” and perhaps, at a technical level, the standards may be equivalent – I have not analysed this aspect. However, there is hardly any popularisation of this BIS standard. For instance, take the notification dated 13th March, 2020 bringing, inter alia, masks under the Essential Commodities Act, 1995. Happily, the Government states ‘masks (2ply & 3ply surgical masks, N95 masks)’ are all essential commodities. You do not find mention of any ISI standard in this but there is a clear reference to ‘N95’. I am sure that a small sample survey of consumers would confirm the following statement – most consumers may recognize ‘N95’ to mean something, but I doubt consumers are even aware of the corresponding Indian BIS standard.
Although the Bureau of Indian Standards Act, 2016 empowers the Government to notify products that cannot be sold without compulsorily conforming with the applicable BIS standards, I did not locate ‘masks’ or ‘respirators’ or anything similar under this list (see here). This means that technically, masks can be sold in India without complying with the Indian standard. Further, masks/respirators would be ‘medical devices’ governed and regulated under the Medical Devices Rules, 2017 (as amended in 2020), though the compliance period is (at present) in 2021. The CDSCO could, in theory, impose the IS standard as being mandatory.
A corresponding problem is that nothing in Indian law, till date, prohibits anyone from using ‘N95’. The law (thanks to the initiative of a private player) may have to come to the rescue in this one instance, preventing someone from misappropriating ‘N95’ as a proprietary trademark. But preventing everyone from using ‘N95’ willy-nilly requires a separate notification (or legislation), duly issued/passed under Indian law. Under the Bureau of Indian Standards Act, what is prohibited is the use of the ‘IS: 9473’ symbol/word (or anything else giving the impression that it is certified by the BIS) on the product without a license/certificate of conformity.
Simply put, neither does anyone have to mandatorily conform to the Indian standard nor does the Indian regulatory law preclude any person from using the ‘N95’ word on the packaging/on the product (irrespective of whether they fulfil this standard). Given the fact that all sorts of notifications and orders are being passed during this disaster period and having recommended and enforced the wearing of masks/respirators, the failure to assess this issue is inexcusable. The only measure, it seems (thanks to Swaraj for pointing this out to me) was an advisory from the National Pharmaceutical Pricing Authority (NPPA) for manufacturers to get BIS certification. Perhaps, and this is entirely my own speculation, this omission was intentional – the fear being that one may actually not have enough supply of actual ‘N95’ compliant masks/respirators, which would have only increased public alarm.
Once the US obtains its ‘certification mark’ registration for ‘N95’ in India, it will not be possible for the BIS to obtain a second certification mark on the same. It is time that quality standards for masks/respirators are made mandatory in India and an appropriate ‘Indian’ ‘certification mark’ be adopted by the Government.