Can you Own a Colour? T-Mobile/Deutsche Telekom Certainly Thinks So, Bentley Disrobed by Bentley Clothing, Medi-cured via Compromise, The Harry Potter Accessories Juggernaut Doesn’t Stop, and more brought to you by the Trademark Attorneys at BananaIP (BIP) Counsel.
INDIAN TRADEMARK UPDATES
Medi-cured via Compromise
Medicare Hygiene Ltd., an Ahmedabad-based manufacturer and exporter of medical products, had filed a trademark-infringement suit against Vivan Medicare Pvt. Ltd., another medical products manufacturer. The suit alleged that the latter’s use of the word ‘Medicare’ and the ‘medi’ as a prefix and suffix in the names of its products encroached upon Medicare Hygiene’s trademarks, causing confusion amongst consumers. The Ahmedabad-based company has claimed ownership of the mark ‘Medicare Private Company’. A compromise deal was struck between the two companies, with the directors of Vivan affirming before the Mirzapur Rural Court that they would cease to use the word ‘Medicare’, as well as ‘medi’ in any of their products. The compromise deed was taken on record by the Court, and the suit was decreed in favour of Medicare Hygiene.
INTERNATIONAL TRADEMARK UPDATES
Can You Own a Colour? T-Mobile/Deutsche Telekom Certainly Thinks So
Deutsche Telekom, the largest telecommunications company in Europe, best known for its subsidiary, the mobile carrier T-Mobile, claims it has exclusive rights over the colour magenta, and it’s taking the battle to the courts. Lemonade, a New-York based AI-powered insurance company, received a letter from Deutsche Telekom, demanding it stop using magenta entirely. Deutsche Telekom has also obtained an injunction on Lemonade’s use of the colour in Germany, forcing Lemonade to temporarily switch to red in the country. Lemonade’s logo is pink, and it uses pink extensively in its Instagram marketing campaign, where everyday objects are dunked in pink paint. On its end, Deutsche Telekom claims that it owns a colour mark (on RAL 4010, a shade of magenta) and the colour magenta is widely associated with the company and its brand. Interestingly, this isn’t Deutsche Telekom’s first foray into its exercise of dominion over the colour; it has previously sued mobile carriers AT&T and Telia, as well as companies ranging from smartwatch makers and device management specialists. It has actually succeeded in some of these claims. Perhaps echoing all our sentiments, Shai Wininger, COO and co-founder, Lemonade said, “At first we thought DT couldn’t be serious: monopolizing all the pink in the world sounds like something a cartoon villain would do in a Disney epic. But it was serious.” He added, “As Miley Cyrus said, ‘pink isn’t just a colour, it’s an attitude.’”
Bentley Disrobed by Bentley Clothing
Bentley Motor Limited, the well-known British luxury car manufacturer, lost a decade-long trademark battle with Manchester-based Brandlogic, a small, family-owned stock-clearance company, over the use of the word ‘Bentley’ on clothing, in a ruling by the High Court of Justice in London. The Court held that the automobile company had infringed upon Brandlogic’s trademark over the Bentley Clothing brand, which had been registered in 1982. Bentley Motors said that it would consider an appeal. However, if it fails to obtain permission to do so, it might have to destroy existing clothing products that bear the word, or deliver them to Brandlogic. The Judge noted that the automobile company began selling clothes with its name in 1987, and though, for a while there was “honest concurrent use”, it soon translated into “a steady encroachment on Bentley Clothing’s goodwill”.
BRAND LICENSING UPDATES
Forever 21 and Hershey’s Launch a Sweet Deal
Forever 21, the American fast fashion retailer, has teamed up with The Hershey Company, one of the largest chocolate manufacturers in the world, to launch an apparel holiday collection called “Forever 21 x Hershey’s”. The clothing retailer is using several of Hershey’s most popular brand names like Reese’s, Jolly Rancher, and York. The collection will comprise of a range of women’s and men’s clothing, as well as accessories, including pullover hoodies, crop tops, onesies, pyjamas, and even a Kisses-shaped pillow. Forever 21 has previously incorporated several popular food brands, including Cheetos and Taco Bell, in its clothing.
The Harry Potter Accessories Juggernaut Doesn’t Stop
Wizarding World Digital has partnered with Wonderbly, a technology and publishing business, to launch a personalised Harry Potter themed journal called Keys and Curios. Wizarding World Digital is a joint venture between Warner Bros., the distributor of the Harry Potter films, and Pottermore Ltd., a digital publishing and entertainment company owned by J. K. Rowling, the author of the celebrated Harry Potter series. The journal, which incorporates several interactive surprises and personalised features, including the fans’ names and house traits, is part of a welcome gift package given to subscribers of Wizarding World Gold, a new annual paid subscription that adds to the Official Harry Potter Fan Club experience. The journal also includes “enchanted keys” that unlock special access to features on the Wizarding World mobile application.
FRANCHISING UPDATES
InterContinental Hotels Group to Expand in India
InterContinental Hotels Group (IHG), a British multinational hospitality company, best known in India for its Holiday Inn and Crowne Plaza brands, is planning to expand its luxury segment footprint in the Indian hospitality market. IHG envisions an expansion in southwest Asia, with a mixture of management contracts and franchising, from 39 to over 100 facilities in the next four to five years. In India, this expansion includes luxury boutique brands like InterContinental, Regent, Six Senses, and Kimpton. A Six Senses property is already underway at the 14th Century Fort Bawara in Ranthambore.
DOMAIN NAME DISPUTE UPDATES
Domain Name Registrar Sued by Facebook Over Cybersquatting Domains
Facebook, the ubiquitous American social media company, has sued domain name registrar OnlineNIC and proxy service ID Shield over the registration of domain names that were, according to Facebook, evidently created to pretend to be related to the social media behemoth. These domain names include facebook-pass.com, m-facebook-login.com, and iiinstagram.com, which could easily be used to mislead users, and to further phishing schemes. Facebook is seeking a permanent injunction against OnlineNIC as well as damages. OnlineNIC has a history of registering such cybersquatting domain names and has been previously sued by Yahoo and Microsoft.
GEOGRAPHICAL INDICATION UPDATES
Rosogolla Battle Between Odisha and West Bengal Finally Comes to an End
The prolonged battle between Odisha and West Bengal over the much-coveted GI tag for Rosogolla has come to an end. While Odisha had been granted a GI over “Odisha Rasagola” in July 2019, a petition had been filed by Ramesh Chandra Sahoo, Chairman of the Regional Development Trust in Odisha, demanding the cancellation of West Bengal’s GI over “Banglar Rosogolla”, which Bengal had obtained in November 2017. The Geographical Indications Registry dismissed the petition and held that West Bengal would retain its tag on “Banglar Rosogolla”, owing to a delay in presenting evidence within the stipulated timeline, on behalf of Mr. Sahoo. Thus, currently, both states have a Geographical Indication on their respective versions of the Indian sweet.
Authored and compiled by Param Gupta
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