Extension Granted by IP Office, Instagram Beat its Domain Infringer, Goan Coconut Vinegar Loses GI Battle and more, brought to you by the Trademark Attorneys at BananaIP (BIP) Counsel.
INDIAN TRADEMARK UPDATES
Trademark Battle between Mattress Giants
Peps Industries, a popular mattress manufacturer filed an application in the Delhi High Court for an interim injunction against Kurlon for the use of the trademark ‘NO TURN’. Peps is the registered trademark owner of the mark ‘NO TURN’ claiming its use since 2008 for mattresses and its allied products. However, in August 2018, Peps came to know that Kurlon had dishonestly adopted the mark ‘NO TURN’ for identical goods, i.e., mattresses. Upon receiving the cease and desist notices from Peps, Kurlon filed a trademark application for the mark ‘NO TURN’ in 2018 claiming usage since 2007, thereby being the prior user. Peps contended that Kurlon is not continuously using the mark since 2007 and further the term ‘NO TURN’ is used by the latter to represent the particular characteristic of its mattresses that do not require to be turned over after a long period of use. With respect to the Defendant’s use of the mark, the Court observed that although Kurlon had been using the mark since 2007, its sales were intermittent in nature, and accordingly a prior user defence under Section 34 of the Trade Marks Act could not be established. Furthermore, the Court also noted that the Peps was the later user of the mark since 2008 and its mark was descriptive in nature. The Court also stated that Peps had failed to place any documents on record to show that its mark ‘NO TURN’ had acquired distinctiveness through use. The Court refused to grant an interim injunction in favor of Peps as its mark was descriptive in nature, and thereby not restraining Kurlon from using the mark ‘NO TURN’ for mattresses.
Citation: Peps Industries Private Limited vs Kurlon Limited [CS(COMM) 174/2019 with IA 4871/2019 & IA 6715/2019]
INTERNATIONAL TRADEMARK UPDATES
Nissan Files New Trademark Application
Nissan, the Japanese automobile manufacturer, has filed a new logo for its company name. The logo has been filed in multiple countries which include UK, Peru, Uruguay, Chile and Argentina. The new logo has been filed under various classes which primarily includes automobiles advertising and business management, insurance, financial affairs, repair or maintenance of land vehicles. Besides the new logo, the Japanese carmaker has also applied for a new logo of the alphabet Z for its new sportscar series.
BRAND LICENSING UPDATES
Marilyn Monroe Comes to Life
No need to worry our dear readers, the iconic actor is not coming back from the grave. However American cosmetics brand Hard Candy has come out with a new cosmetics range inspired by the famous actor. Hard Candy has introduced a new makeup range which will include balms, eyeliner, powder as well as a skincare range. The products are inspired by the scents and colors of roses and strawberries and are available at Walmart.com.
HYKE Collaborates With Adidas
Japanese apparel company HYKE has collaborated with Adidas, the world’s second largest sports goods manufacturer, for a new apparel collection. The new line will include pullovers, dresses, sneakers, leggings amongst other clothing. The brands had earlier collaborated in 2016 for womenswear and footwear. The new collection will be launched on April 29 on HYKE’s dedicated page, the Japanese Adidas website, and through select Japanese retailers.
FRANCHISING UPDATES
Korean Fast Fashion Brand to Open 100 Franchise Stores in India
‘2358 Store’, a Korean fashion retailer is eyeing to expand its reach across India with a special focus on the emerging cities. The business retails a wide range of products including clothing, jewelry, Korean cosmetics, accessories, and homeware. The Korean fashion retailer runs on a franchise model and aims to have 100 stores by the end of 2020. The retail stores have various in-store activities like creating selfie contents, testimonials from the customers, and feedback-based incentives. The ‘2358 Store’ has over 1,000 stores globally.
DOMAIN NAME DISPUTE UPDATES
Instagram Beat its Domain Infringer
Instagram LLC filed a domain name dispute complaint with the WIPO Arbitration and Mediation Center against Remzi Kurcan, an individual based out of Turkey, for registering a confusingly similar domain www.instagr4m.com. The disputed domain describes itself as “Instagram Online Web Viewer. Anonymously view the profiles, stories and posts of Instagram users” and copied the same color scheme and icon mark of Instagram. It was further contended that a cease and desist notice was sent to Remzi and no response was received. Instagram contended that the disputed domain is confusingly similar to its registered trademark, ‘INSTAGRAM’, creating a likelihood of confusion given the reproduction of its trademark with the substitution of the letter ‘a’ with the number ‘4’. The Respondent did not submit any response. The Panel observed that the domain name was confusingly similar to the trademark “INSTAGRAM”. Further, the Panel notes that Remzi does not have rights or legitimate interests with respect to the disputed domain name and thus ordered that the disputed domain be transferred to Instagram.
GEOGRAPHICAL INDICATION UPDATES
Goan Coconut Vinegar Loses GI Battle
The Geographical Indication (GI) Registry, Chennai, refused to grant the GI tag to Coconut Vinegar as the indication is a newly coined term and therefore does not qualify to obtain the tag. Upon receipt of the application in May, 2019 the Registrar of GI 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 heard the applicant and perused the documentary evidences and after deliberations found that the application does not qualify as a GI as the indication consists of generic terminology and therefore suggested refusal of the application. The application was filed by The Department of Science & Technology (DST), Government of Goa.
GENERAL IP UPDATES
Extension Granted by the IP Office
In the wake of the wide spread pandemic COVID19 and the all India lockdown situation, the Indian Trademark Registry has provided extension of time for submission of any documents relating to all trademark matter. The applicant is at liberty to file request for extension of time (now or after the situation becomes normal) and such extensions will be taken into consideration by the Registrar.
Opposition Hearings Cancelled
In view of the public notice issued by the Controller General of Patents, Designs and Trade Marks dated 16/03/2020 wherein the opposition cases hearings fixed on 12/03/2020 had been adjourned to 30/03/2020 due to administrative reasons in Trade Marks Registry Branch, Chennai, have further been cancelled and fresh notices will be issued in due time.
Authored and compiled by Uma T.S & Shreya Chaddha
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