I’m sure many of us, lawyers and trademark owners, would have come across examination reports that have required association between your mark and the applicant’s other marks (mostly). In cases where the mark that we have to associate it with has crossed its date of validity or has been withdrawn by the applicant, what happens then? While the law is silent on this point, the law of logic will kick in. Here I am going to mention few provisions of the law which in effect will say that both the marks which are associated with each other are treated as one mark.

Going back to the basics, the definition of an associated mark under Section 2(1) (c) is associated trademarks means trademarks deemed to be, or required to be, registered as associated trademarks under this Act

Now the next question that will follow is what is “deemed to be” or “required to be”. As per Section 2 (3) those goods and services which might be provided by the same business and with similar description of goods and services. An easy way to understand this would be by way of an illustration.

This mark was filed in 1997. The wordmark for “Pepsi” was filed in 1994. Both the marks were filed in the same class with the same specifications of goods and obviously by Pepsi Co. Since the mark filed in 1997 was three years later than when the word mark was filed, at the time of examining the mark, the Registry required Pepsi Co. to associate with its earlier mark which was a word mark as both the marks pretty much had the same specifications. Now, associating a mark with another might not directly reduce any confusion among the public who is not aware of such an association, it definitely does help in keeping the Trademark Register clean and organised.

Applicants may also want to file an application associating it with its earlier mark in case he/she has expanded its scope of business and has thus filed a new trademark application with broader specifications but which also contains the specifications of the earlier app.

So going by the logic behind why trademarks are required to be associated, since only those marks which have same/similar business (read specifications) are required to be associated, it also keeps in check defensive registrations. This is how.

Section 55 of the Act specifically states 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. So if I as an applicant file a legit trademark application under the class that covers my business claiming usage since many years (India is a first-to-use Country), I would also simultaneously file applications in the rest of the classes associating those applications with the one where I’ve claimed usage. Since I’ll be using it sincerely in that one class, as per Section 55, my use in that class automatically means that I’ve been using it in the remaining classes as well. Thank God this is not possible for anyone to do as you can only associate such trademarks which have same/similar specification of goods/services as mentioned earlier.

On the other hand, associating trademarks has its own benefits. For example, if in a cancellation proceeding if one of the two associated trademark is in use then that use would be considered as use for cancellation proceedings against the second associated trademark.

So the answer to the question that I raised at the beginning of the post is that if the mark is withdrawn or is not valid anymore, the applicants have an option to request the Registry to “dissolve the association” by filing a particular form. To sum it up, anyone can file associated applications provided the change, addition or alteration does not substantially affect its identity. Also, for businesses who keep expanding their services and including newer goods, associating trademarks would be a good option.

This article has been authored by Durga Bhatt, an IP Law practitioner.