ITC vs. NESTLE, the curious case of the magic masala, Bauer’s new trademark filing for face masks, Gajapati date palm jaggery filed for GI, and more brought to you by the Trademark Attorneys at BananaIP (BIP) Counsel.
INDIAN TRADEMARK UPDATES
ITC vs. NESTLE, the Curious Case of The Magic Masala
ITC Limited, an Indian multinational conglomerate, had filed an application at the High Court of Madras, seeking a permanent injunction to stop Nestle India from using the mark MAGICAL MASALA for its instant noodles. ITC contended that it had introduced ‘Sunfeast Yippee! Noodles’ with Magic Masala flavor in 2010 and Nestle India’s adoption of a deceptively similar expression ‘MAGICAL MASALA’ in 2013 to market their noodles, amounted to passing off. After elaborating on whether the mark ‘Magic Masala’ can be given protection as a descriptive mark, the Hon’ble High Court concluded that the term was not a descriptor of the product but rather a laudatory expression, and the same cannot be given monopoly or protection. Further, the Court held that the terms ‘Magic’ and ‘Masala’ are commonly used terms by different manufacturers in the packaged food industry and it would be unfair to confer monopoly over the same expression. The Court also held that there was no scope for confusion as the competing brands “Sunfeast Yippee!” and “Maggi” are completely different from each other and therefore dismissed ITC’s suit.
Citation: ITC Ltd v. Nestle India Limited C.S.No.231 of 2013
INTERNATIONAL TRADEMARK UPDATES
Bauer’s New Trademark Filing for Face Masks
With major companies venturing into the manufacture of protective medical equipment in the last few months, Bauer Hockey is no exception. Bauer, a US based ice hockey equipment manufacturer, has filed new a trademark application for ‘BAUER’ with the U.S. Patent and Trademark Office (USPTO). The mark has been filed under classes 09 and 10 for sanitary masks, face shields, as well as googles. The company had announced its intention to manufacture medical equipment in the month of March.
BRAND LICENSING UPDATES
Ubisoft Collaborates with Funko & Good Smile
French video game company Ubisoft has partnered with US based Funko and Japan based Good Smile, both of whom are manufacturers of licensed merchandise and accessories, for a multi-year partnership. Under the partnership Funko will be developing Pop! Vinyl figures for a range of ‘Assassin’s Creed’ titles and ‘Tom Clancy’s Rainbow Six Siege’ for North and Latin America along with apparel and accessories. Good Smile will be creating “Assassin’s Creed” figures for its Nendoroid line. With the present deal, Ubisoft is looking to expand its brands across the collectible’s category.
New Collectibles from Kraft Heinz
Kraft Heinz, the fifth largest food and beverage company in the world, has partnered with Youtooz, a Canadian vinyl figures manufacturer for a new collectible line. Under the new licensing program, Youtooz will manufacture PLANTERS Baby Nut and iconic KOOL-AID Man figurines. The Baby Nut figure will be available on its website from 21st June, whereas the Kool-Aid Man figurine will be made available in the upcoming months.
DOMAIN NAME DISPUTE UPDATES
Crypto Exchange Loses Domain Dispute to Australian Florist
Binance (“Complainant”), a leading cryptocurrency exchange, lost a domain name dispute with Binancé, an Australian florist over the domain www.Binance.com.au. Binance contended that they had registered the trademark ‘BINANCE’ in Australia in November 2018, whereas the florist registered its domain in October 2019. The florist’s director, Mr. Nawodycz, in its response to the complaint stated that the word ‘Binancé’ was selected because in French, it means “balanced” and ‘Binancé flowers’ in French translates to ‘paired flowers’. Further he stated that the domain www.Binance.com.au opens up to an online flower shop and not anything related to crypto exchange.
WIPO Arbitration and Mediation Center denied the complaint because the cryptocurrency exchange giant Binance was not able to demonstrate that the florist does not have rights or a legitimate interest in the disputed domain name.
GEOGRAPHICAL INDICATION UPDATES
Gajapati Date Palm Jaggery Filed for GI
The Date Palm Jaggery (Khajuri Gur) of Gajapati district of Odisha is a seasonal product produced from October to March. The jaggery is made by using traditional methods, no natural or synthetic colouring agents or artificial sweetening agents. The Date Palm Jaggery also has medicinal value and is used by diabetic patients as it contains less sugar than sugar cane jaggery, crystal sugar or other sweetener agents. The application has been filed by the Odisha Rajya Talgur Samabaya Sangha Ltd (ORTSS) in June, 2020.
GENERAL IP UPDATES
Further Extension for Deadline to be Decided by the Delhi High Court
In the last public notice issued by the Controller General of Patents, Designs and Trade Marks (CGPDTM) dated 18-05-2020, it had stated that the deadlines issued by it from 25-03-2020 to 17-05-2020 with respect to the due dates for the completion of various acts/proceedings has been scraped and the new deadlines shall be applicable from 15-03-2020 to 01-06-2020.
However, on 19-06-2020, CGPDTM has issued a fresh notice which states that the Hon’ble High Court of Delhi (Delhi HC) on 17-06-2020, in the matter of W.P.(C) 3059/2020 (read the order here and here) has stayed the effect and operation of public notice dated 18-05-2020. The Delhi HC in its order states that ‘the interim order issued by it saying that no Court, Tribunal or any authority can act contrary to the order of the Supreme Court, which has granted an extension of period of limitation in all legal proceedings from 15-03-2020 uptill further orders’ shall continue to operate and consequential steps need to be taken by CGPDTM by issuing appropriate notification on its website.
Therefore, the public notice issue on 18.05.2020 by the CGPDTM is withdrawn and timelines/periods for the completion of various acts/proceedings, filing of any reply/document, payment of fees, etc. falling due after 15.03.2020, shall be the date as decided/ordered by the Hon’ble Court and not 01-06-2020, as had been mentioned in the previous notice.
Authored and compiled by Uma T.S & Shreya Chaddha
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