“Trade Marks over Names of People and Deities, Atari sues Nestlé, Genuine Use of Ferrari’s Trade Mark Testarossa, McDonald’s Franchises and more” brought to you by Trade Mark Attorneys at BananaIP (BIP) Counsels.
TRADE MARK QUOTE OF THE WEEK
“Value of a Trade Mark is directly proportional to your Aggression and Risk Ratio.” – Dr. Kalyan C. Kankanala, Renowned IP Attorney, Professor and Novelist.
INDIAN TRADEMARK STATISTICS
The productivity of the Indian Trade Mark Office has been low compared to the previous week’s status. The total number of applications examined decreased by about six percent (6%). The total number of registrations granted decreased by fifty-nine percent (59%). However, the total applications disposed through show cause hearings increased by 105%
| Particulars | Last week | This week | Change in % |
| Total Trademark applications examined by Trademark Office | 6570 | 6156 | A decrease of 6.3% |
| Total applications disposed through show cause hearings | 474 | 976 | An increase of 105% |
| Total applications published in the trademark journal | 7469 | 7545 | An increase of 1% |
| Total registrations granted | 4689 | 1919 | A decrease of 59 % |
| Total hearing notices issued | 1792 | 1362 | A decrease of 24% |
| Total renewal notices issued | 2184 | 1825 | A decrease of 16% |
| S.No. | Name of Office | Publication |
| 1. | MUMBAI | 534 |
| 2. | AHMEDABAD | 877 |
| 3. | KOLKATA | 1950 |
| 4. | DELHI | 310 |
| 5. | CHENNAI | 1365 |
Total Number of Applications received: 5036
Trademark Statistics from 01.01.2017 to 23.08.2017
| Sr. No | Jurisdiction | New Applications | Examined | Published | Registered |
| 1 | AHMEDABAD | 19540 | 15393 | 17614 | 18193 |
| 2 | CHENNAI | 30341 | 23403 | 24772 | 41548 |
| 3 | DELHI | 60466 | 46214 | 50815 | 71545 |
| 4 | KOLKATA | 9445 | 7534 | 7141 | 11134 |
| 5 | MUMBAI | 41353 | 32524 | 31961 | 56485 |
| Total | 161145 | 125068 | 132303 | 198905 |
INDIAN TRADE MARK CASE
Laxmi v. Mahalaxmi – Trade Marks over Names of People and Deities
The Bombay High Court recently reiterated on appeal that common names of Hindu Deities and people cannot be the subject of trade mark protection unless they acquire distinctiveness. In a case involving rival broom companies, the owner of a label mark including the word, Laxmi, sued its competitor using the word, Mahalaxmi, in its trade mark. The Bombay High Court refused to grant interim relief, which has now been affirmed on appeal. In its judgment, the Court reiterated standard trade mark principles with respect to protectability of religious names, differences between word and device marks, and the standard of the consumer.
INTERNATIONAL TRADE MARK NEWS
Atari sues Nestlé
Attari filed a copyright and trade mark infringement suit against Nestlé alleging that its Kit Kat advertisement campaign uses the look and feel of its Break Out game. Attari’s complaint alleges that Nestlé simply substituted Kit Kat bars for bricks in the game screen, which infringes its IP rights. The game was created by Steve Jobs and Steve Wozniak forty years back. The case has been filed in the Northern District Court of California.
Genuine Use of Ferrari’s Trade Mark Testarossa
Ferrari registered its trade mark TESTAROSSA in Germany in 1990 for cars. The car is no longer on sale, and a trade mark application for ‘Testa rossa’ was recently filed by Kurt Hesse for electric cycles. Ferrari opposed, and Hesse claimed that Ferrari’s mark registration was not valid for non-use. The regional court of Düsseldorf reviewed the facts and held that Ferrari’s trade mark has not been in genuine use, and that use of the mark on second-hand cars is not sufficient use for trade mark purposes.
TRADE MARK LICENSING, FRANCHISING, AND MERCHANDIZING
McDonald’s terminates Franchises
PTI reported that McDonald’s has terminated its Franchise Agreement with Connaught Plaza Restaurant Ltd for 169 Outlets in North and East India. After the termination, Connaught Plaza must stop using trade marks of McDonalds within fifteen days. It has been stated that the termination is because of non-payment of royalties due to McDonalds. Connaught Plaza has issued a statement that it is considering legal action against McDonalds.
GEOGRAPHICAL INDICATION NEWS AND UPDATES
Jammu and Kashmir Saffron to go for GI Protection
Spices Board and Jammu and Kashmir Government are planning to file an application to protect saffron from the state as a Geographical Indication. The initiative is part of the ongoing effort to boost saffron production and trade from the state.
BANANAIP TRADE MARK TIP OF THE WEEK
Trade Marks in Advertisements
Certain phrases and words used in advertising campaigns may grab consumer attention quickly, and are normally copied by competitors. Protecting these phrases and/or words at the right time can go a long way in helping businesses prevent use by competitors, and build value around the phrases/words.
Author: BIP Trade Mark Attorneys
BIP’s Trade Mark Attorneys are among the leading experts in the field. They work with clients such as PEPS, Dharma Productions, Essilor, Samsung and IIT, Bombay, with respect to trade mark filing, prosecution, registration, management, licensing, franchising, merchandizing and strategy.
The weekly trade mark news initiative is a part of their pro bono work, and is aimed at spreading trade mark awareness. You are free to share the news with appropriate attribution and backlink to the source.
If you have any questions, you may write to BIP’s Trade Mark Attorneys – contact@bananaip.com
