McDonald’s big mack suit against hungry jack’ big jack, Captain Morgan forays into food, Messi triumphs over ‘Massi’ and more brought to you by the Trademark Attorneys at BananaIP (BIP) Counsel.
INDIAN TRADEMARK UPDATES
Bombay High Court Grants Temporary Injunction Against Emami
In a recent case concerning the marketing and sale of skincare cream ‘Glow and Handsome’, the Bombay High Court passed a temporary injunction restraining FMCG producer Emami from using the same. The dispute first arose after Hindustan Unilever (HUL) changed the name of its product ‘Fair and Lovely’ to ‘Glow and Lovely’ for women, and ‘Glow and Handsome’ for men, in June 2020. HUL subsequently filed a suit to prevent Emami from using the name ‘Glow and Handsome’ for its products, as HUL had applied for the same trademark, and had already received permissions from the Food and Drug Administration (FDA) to change the name of its products in 2018. Emami contested these arguments, claiming that it was the proprietor of the trademark “Fair and Handsome”, and as such, HUL should not be allowed to market a product with the name “Glow and Handsome”, which would be confusingly similar. The Bombay High Court, however, awarded interim relief to HUL, and has ordered Emami not to use the ‘Glow and Handsome’ trademark until the final disposal of the case.
Citation: Hindustan Unilever Limited vs Emami Limited [LD/VC/IA/203A/2020 IN LD/VC/203/2020]
INTERNATIONAL TRADEMARK UPDATES
Epic Games’ Fortnite in Trouble Over Coral Castle
Epic Games, the developer of the popular online multiplayer game ‘Fortnite’ is facing a trademark infringement suit by Coral Castle (CC), a Florida corporation that owns the trademarks to a tourist attraction named ‘Coral Castle’ in Florida. The suit filed in the Miami Federal Court, US, was instituted by CC when Epic Games included an in-game fictional location called Coral Castle. The virtual Coral Castle which appears in the Fortnite game, features castle-like structures and stone objects, which are similar to the actual Coral Castle in Florida. The contention of CC is that Epic Games has caused harm to it by utilising the trademarks and the goodwill associated with the landmark, in order to spur in-game purchases. CC has also contended that such usage of the Coral Castle trademarks would imply an association between CC and Epic Games, which is likely to cause confusion in the eyes of the public. CC has sought relief for infringement of its trademarks, as well as injunction from further use by Epic Games of the term Coral Castle.
McDonald’s Big Mack Suit Against Hungry Jack’ Big Jack
World renowned fast-food chain McDonald’s has recently instituted a trademark infringement suit in Australia’s federal court, against Australian burger chain Hungry Jack for introducing their new burger “Big Jack”. McDonald’s claims that the Big Jack burger infringes on its existing “Big Mac” trademark. McDonald’s has stated in the suit that the Big Jack burger bears a stark resemblance to the Big Mac in terms of its name as well as the look of the burger as a whole. McDonald’s has also argued that the registration of the trademark Big Jack was done in bad faith and will cause confusion in the minds of consumers, and therefore should be cancelled. McDonald’s is seeking monetary damages along with destruction of all promotional and advertisement materials that feature the confusingly similar Big Jack trademark.
Messi Triumphs Over Massi
Football super star Lionel Messi has emerged victorious in a lengthy battle spanning over nine years after the European Court of Justice (ECJ) ruled in his favor and allowed him to register his surname as a trademark. The Argentinian footballer initially applied for the ‘Messi’ trademark in the year 2011 with the European Union Intellectual Property Office (EUIPO). The registration, however, was opposed by a Spanish bicycle manufacturer, ‘Massi’, who contended that using the mark “Messi’ in connection with sporting goods would lead to confusion among consumers. Consequently, EUIPO rejected Messi’s application in 2013, however the order was overturned by the General Court of the European Union. The Spanish bicycle manufacturer subsequently appealed the General Court’s decision before the European Court of Justice (ECJ). The ECJ dismissed the appeal and held that the world-renowned profile and reputation of Lionel Messi was such that no potential consumer would confuse his name, with that of ‘Massi’, thereby eliminating any confusion between the two names.
BRAND LICENSING UPDATES
Captain Morgan Forays into Food
After conquering the beverage world with Captain Morgan rum, Diageo is all set to enter the food segment. Captain Morgan has partnered with 3 Little Pigs LLC, a charcuterie chain based out of New York, to launch a line of sausages infused with the flavor of Captain Morgan Original Spiced Rum. The deal has been brokered by Beanstalk, Diageo’s licensing company. The sausage line will be launched in chicken and pork links format, available in one-pound trays with six links each. New products and flavors such as patties, precooked, and snack formats will be launched by next year.
Rajasthan Royals Partner with APIS Honey
APIS Honey, a brand of the Indian FMCG company APIS, has partnered with the IPL cricket team Rajasthan Royals. APIS Honey will be the headgear sponsor of Rajasthan Royals for the current edition of the IPL. Through the partnership, APIS Honey is trying to highlight the importance of choosing the right foods for a health-driven lifestyle.
FRANCHISING UPDATES
Smart Chef Partners with Franchise India
Smart Chef LLP, a Delhi based cloud kitchen has partnered with Franchise India, Asia’s largest franchise solution company, to expand their business by franchising its cloud-kitchen concept. Cloud Kitchen is a delivery only kitchen, the demand for which has increased during the current pandemic. The expansion will be Pan India, with initial focus on Delhi and NCR regions.
DOMAIN NAME DISPUTE UPDATES
TikTok Secures Domain Name Victory in Cybersquatting Dispute
ByteDance, the Chinese corporation that owns and operates the famous ‘TikTok’ platform, recently secured a favourable decision against a Ukrainian individual Alexey Dubinin. ByteDance initially filed a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), notifying it of the disputed domain name ‘tiktok.com.ua’, which was registered by Dubinin. The complaint stated that Dubinin was using the disputed domain name to pass off as ByteDance, by including the trademarked logos of TikTok on the website, and also offering advertisements on the website related to TikTok. Furthermore, the website included a mention at the bottom of the page, purporting itself to be ‘TikTok Ukraine’, which clearly infringes upon ByteDance’s registered IP. WIPO has ordered that the domain name and the associated rights be transferred to ByteDance, who are the rightful owners of the TikTok application and trademarks.
GEOGRAPHICAL INDICATION UPDATES
Sikkim’s Chilli Soon to Get a GI Tag
Sikkim’s red cherry pepper chilli, popularly known as Dalle Khorsani is on its way to get a Geographical Indication (GI) Tag with its recent publication in the GI Journal. Dalle Khorsani is considered as one of the hottest chilies in the world and is cultivated in Sikkim as well as the surrounding Darjeeling hills. The chilli is known for its pungent taste and smell and as well as its medicinal properties.
Authored and compiled by Uma T.S, Shreya Chaddha, & Varun Gopalakrishnan
About BIP’s Trademark Attorneys
The Trademark News Bulletin is brought to you by the Trademark/Copyright, IP Transactional Strategy Divisions of BananaIP Counsels, a Top IP Firm in India. Led by Sanjeeth Hegde, BIP’s trademark attorneys are among the leading experts in the field. If you have any questions, or need any clarifications, please write to contact@bananaip.com with the subject: Trademark News.
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