Dream11 defends its mark against slavish copying, Blackberry producer loses domain dispute, Astronomer sues American girl doll for looking like her, Mizo chow-chow loses GI battle and more, brought to you by the Trademark Attorneys at BananaIP (BIP) Counsel.
INDIAN TRADEMARK UPDATES
Dream11 Defends its Mark Against Slavish Copying
Sporta Technologies (‘Plaintiff’), the popular online fantasy sports platform, filed suit before the Delhi High Court for a permanent injunction to restrain Jaipur based entity EDREAM 11 SKILL POWER (‘Defendant’) from using the trademark ‘EDREAM 11’ for an online fantasy cricket league. The Plaintiff in the suit submits that they are the registered trademark holders of the mark “DREAM11”, its variants thereof and the domain www.dream11.com. The Plaintiff’s has alleged that the Defendant has merely affixed the letter ‘E’ to its registered trademark “DREAM11”, and is providing identical services through the website www.edream11.com and mobile application. The Court observed that the Plaintiff had placed several materials on record to show infringement by the Defendant, and that the Defendant’s mark was phonetically, structurally and visually similar to that of the Plaintiffs’. The Defendant did not appear before the Court despite several summons being served. The Court therefore passed an ex-parte permanent injunction in favour of the Plaintiff restraining the Defendant from using the deceptively similar mark and domain.
Citation: Sporta Technologies Private Limited and Another v. Edream 11 Skill Power Private Limited I.A. 9986/2019
INTERNATIONAL TRADEMARK UPDATES
Astronomer Sues American Girl Doll for Looking Like Her
Lucianne Walkowicz, a Chicago based astronomer has filed a trademark infringement suit against Mattel, the makers of the popular children’s toy American Girl, alleging the Wisconsin based company stole her likeness and name to create its astronaut doll. In a lawsuit filed in the U.S. District Court, Madison Wisconsin, the astronomer has asked Mattel to stop manufacturing and selling Luciana Vega dolls, which are described as ‘an aspiring astronaut ready to take the next giant leap to Mars’. Walkowicz has also alleged in the suit that the dolls appear to have a purple streak on the right side of its dark hair, and holographic shoes, which is strikingly similar to the appearance of the astronomer. Walkowicz is seeking to have the sales of the Luciana Vega doll and accessories barred, and also monetary damages.
Royal Caribbean Cruising into Masks
USA based cruise line Royal Caribbean has filed a new application to trademark the term Seaface. The mark has been filed under class 10 for sanitary masks for virus isolation purposes. Through the above filings it can be safely assumed that the cruise line operator is ready to launch a line of their own masks amidst the ongoing COVID 19 global pandemic.
BRAND LICENSING UPDATES
Eyewear Major Gunnar Optiks Collaborates with Esports Major ESL
USA based eyewear maker Gunnar Optiks, has signed a three-year licensing agreement with ESL, the world’s largest esports company to introduce a new line of ESL branded gaming glasses. The companies will be collaborating to launch two new collections in the upcoming year.
MaskClub to Partner Mexican Game Loteria for New Collection
MaskClub, a USA based company known for manufacturing customizable face masks, has collaborated with Loteria to manufacture a new line of face masks. Loteria is a Mexican card game which reflects the iconic aspects of Mexico’s customs, beliefs and traditions. The deal has been brokered by licensing and branding company Pacific Swell Brands. The new line of masks will feature 12 classic Loteria designs including El Gallo, El Corazon, La Sirena and La Dama.
DOMAIN NAME DISPUTE UPDATES
Blackberry Producer Loses Domain Dispute
Things might not be berry sweet for USA based blackberry producers Berry Fresh, LLC. In a very well reasoned three person panel decision, WIPO Arbitration and Mediation Center (“Arbitration Centre”) has stated that just because an entity is the owner of a trademark for a term, it does not automatically mean that a different domain name registrant bought the domain to target the entity’s trademark. Berry Fresh had filed a domain name dispute complaint with the Arbitration Center against Ryan Cooper, owner of the domain name berrysweet.com. Berry Fresh is the owner of the trademark BERRY SWEET in Canada and has a conditional trademark registration BERRY SWEET in the US. The company had claimed that the disputed domain name is identical and/or confusingly similar to its trademark BERRY SWEET. The panel rejected the contentions made by the berry producer and stated that Berry Fresh has failed to show that the registrant of the domain name was targeting it with the registration. The panel also stated that Berry Fresh has failed to establish that the domain name was being used in bad faith. The complaint was denied.
GEOGRAPHICAL INDICATION UPDATES
Mizo Chow-Chow Loses GI Battle
On 2nd March, 2020, the Geographical Indication (GI) Registry, Chennai refused to grant the GI tag to Mizo Chow-Chow as the applicant failed to prove the historical data relating to the product with supporting documents. Upon the receipt of the application in November, 2018 the Registrar of GI had issued a formality check report citing deficiencies in the application. The applicant filed their response and thereafter the Registry proposed to convene a consultative group meeting consisting of experts to verify the contents of the application. The meeting was held and the expert committee after deliberations and verifications of documents, made their recommendation that the indication is a newly coined term and therefore does not qualify to obtain the tag. The applicant was further granted an opportunity to justify the application via hearing. However, the applicant was not able to demonstrate the uniqueness of the product, nor provide any historical data supporting the origin of the product. The application was filed by the Department of Horticulture, Government of Mizoram.
GENERAL IP UPDATES
Further Extension Granted by the IP Office
In view of the further extension of the nation-wide lockdown by the Ministry of Home Affairs, Government of India, a new public notice has been issued by the Office of the Controller General of Patents, Designs & Trade Marks. The notice states that even though the IP Offices are functional with reduced strength, all the Offices are located in the Red Zone where the movement of the public is restricted. Therefore, all the relaxations which had been made in the previous notice have been extended till 18th May 2020.
Authored and compiled by Uma T.S & Shreya Chaddha
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