Registrations of series trademarks have recently gained pace and there is scarcity of information available to understand this species of trademark registration in India. Series trademarks are believed to offer another level of trade mark protection to big Industrial houses.
Para 23.6.1. of McCarthy on Trademarks and Unfair Competition‟ 4th Edition, written by J.Thomas McCarthy mentions:
“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 recognised by customers as an identifying trademark in and of itself when it appears in a composite…..”
Series of trademarks basically means a number of trademarks which resemble each other as to their material particulars and which differ only as to matters of a non-distinctive character not substantially affecting the identity of the trademark. Section 15 of the Trade Marks Act, 1999 deals with it. It mentions:
Registration of parts of trade marks and of trade marks as a series. —
1. Where the proprietor of a trade mark claims to be entitled to be entitled to the exclusive use of any part thereof separately, he may apply to register the whole and the part as separate trade marks.
2. Each such separate trade mark shall satisfy all the conditions applying to and have all the incidents of, an independent trade mark.
3. Where a person claiming to be the proprietor of several trade marks in respect of the same or similar goods or services or description of goods or description of services, which, while resembling each other in the material particulars thereof, yet differ in respect of—
4. statement of the goods or services in relation to which they are respectively used or proposed to be used; or
5. statement of number, price, quality or names of places; or
6. other matter of a non distinctive character which does not substantially affect the identity of the trade mark; or
7. colour, seeks to register those trade marks, they may be registered as a series in one registration.
The differences in the ‘series marks’ should be only in respect of non-distinctive matters, such as size, description of the goods, price , quality etc. The marks should be same in material particulars but different in non-distinctive characters which do not substantially affect or alter the identity of the mark. The difference between the marks must not have substantial effect on their identity. Any variations in the non-distinctive features in the marks must not affect the visual, phonetic and conceptual identity of each of the trademarks. The substantial affect is analyzed/ calculated based on the likely reaction to the marks of an average consumer of the goods/services in question.
Some examples mentioned below might add to the clarity of the concept:
* Differences in punctuation are allowed only if the punctuation doesn’t alter the pronunciation and meaning of the marks.
* Cartoon character’s expression or positioning: A series of cartoon characters may constitute a series if the characters are clearly the same, wearing the same clothing, or holding/using same props in each mark in the series. The following cartoon characters are acceptable as a series despite the difference in facial expression as the primary and distinctive features of the character remain the same in both marks. Different positions of the cartoon characters may also make a substantial difference. In the below mentioned example only the first, second and third marks are acceptable as series, as their material particulars are not substantially affected by their differing orientations. However, the material particulars of the fourth mark differ from the first three marks due to the absence of facial features which render its identity substantially different.
Application for registration of series
The application for registration of series marks has to be made on form TM-8 or TM-37. Every mark in the series must have same goods/services description. But the registration is as per the registrar’s discretion. If the registrar is of opinion that the provisions mentioned under Section 15 of the Trade Marks Act, 1999 are not met then he may ask the applicant to delete any of the mark which is under objection.
For the division of application form TM-53 can be filed to conform to the provisions of Section 22. All trademarks registered as series in one registration are deemed to be registered as associated trade mark, under section 16(4) of the Act.