When your new mark closely resembles an earlier one of yours for the same goods, the Registry may require them to be “associated” — and that linkage can actually work in your favour.
What association means
Under Section 2(1)(c) of the Trade Marks Act, 1999, associated trademarks are marks “deemed to be, or required to be, registered as associated trademarks under this Act.” Section 2(3) allows marks to be associated where they cover goods/services of the same description from the same proprietor and resemble each other.
Example: Pepsi Co.’s design mark (filed 1997) was required to associate with its earlier “Pepsi” word mark (filed 1994), both covering identical goods in the same class.
The benefits of association
- Use of one counts as use of all. Under Section 55, using one associated mark is treated as use of the others — valuable when proving use.
- Cancellation protection. Active use of one associated mark defends the others against non-use cancellation.
In effect, associated marks share the credit for use, which strengthens the whole cluster.
When a linked mark lapses
If an associated mark becomes invalid, expires or is withdrawn, the proprietor can apply to the Registry to dissolve the association through the proper procedure — so the surviving mark is no longer tied to a defunct one.
The governing principle
Marks are only properly associated where any change, addition or alteration does not substantially affect the identity of the mark. Association is for genuine variants of the same brand, not for distinct marks.
Practical guidance
- Expect association when you file a close variant (a logo version of an existing word mark, say) for the same goods — and use it to your advantage on proof of use.
- Track your cluster. If a member lapses, consider dissolving the association so it does not cloud the survivor.
- Keep at least one member in genuine use — that use supports the others against non-use attacks.
Frequently asked questions
What are associated trademarks? Marks of the same proprietor, for goods of the same description, that resemble each other and are linked on the register under the Act.
What is the advantage of association? Use of one associated mark counts as use of all (Section 55), and active use of one defends the others against non-use cancellation.
What happens if an associated mark expires? The proprietor can apply to dissolve the association so the surviving mark is no longer tied to the lapsed one.
When can marks be associated? Only where the differences do not substantially affect the identity of the mark — that is, genuine variants of the same brand.
Legislation referred to
- The Trade Marks Act, 1999