Miley Cyrus secures rights over her name, PepsiCo faces a trademark lawsuit over its new ‘Mountain Dew Rise’ beverage, and more brought to you by the Trademark Attorneys at BananaIP (BIP) Counsel
INDIAN TRADEMARK UPDATES
Delhi High Court Holds ‘Goodyear’ as Prima Facie Well-Known Mark
The Delhi High Court, in a recent decision, held that the mark ‘Goodyear’, which has been used by Goodyear Tire and Rubber Company (Goodyear Co.) in India since the year 1920 in relation to tyres and inner tubes, is a prima facie well-known mark. Goodyear Co. filed the present suit against an individual, Deva Nand Sukhia, who had been using the ‘Goodyear’ mark in relation with brake oil, grease, gear oil, and related goods. The Delhi High Court noted that the mark ‘Goodyear’ was registered in Goodyear Co.’s name since 1943, and also observed that Goodyear Co. was operating several facilities in 21 countries across the world. These facts coupled with the company’s extensive turnover ($50 billion between 2014-2018) evidenced the extensive goodwill and reputation attached to the mark ‘Goodyear’. The Court, therefore, held that the ‘Goodyear’ mark is a prima facie well-known mark, and further issued an interim injunction restraining Deva Nand from using the mark ‘Goodyear’, or any other similar mark.
Citation: The Goodyear Tire And Rubber Company and Anr. vs Deva Nand Sukhia- CS(COMM) 182/2021
INTERNATIONAL TRADEMARK UPDATES
Miley Cyrus Secures European Trademark Victory
Internationally renowned pop-star Miley Cyrus, has recently secured a favourable decision from the Court of Justice of the European Union (“CJEU”), allowing her to use the mark ‘MILEY CYRUS’, in connection with a variety of goods including video discs, mobile phone cases, board games, and calendars, among other goods. The American singer’s company, Smiley Miley, had applied for the registration of her name as a trademark in 2014, which was opposed by a British Virgin Island-based company, Cyrus Trademarks Ltd., the proprietor of the mark ‘CYRUS’ since 2010. The opposition was initially allowed by the European Union Intellectual Property Office (“EUIPO”), on the ground of likelihood of confusion between the marks. However, on appeal, the CJEU overturned the EUIPO’s decision, holding that the trademark ‘MILEY CYRUS’ has a clear semantic relation with, and refers to, a public figure of international reputation, who is “known by most well-informed, reasonably observant and circumspect persons…”.
Cold-Brew Coffee Maker Sues PepsiCo
Rise Brewing, a manufacturer of ready-to-drink, cold-brew coffee, has instituted a suit against beverage conglomerate PepsiCo, before the US District Court for the Northern District of Illinois, alleging infringement of its ‘RISE’ trademarks. As per Rise Brewing’s complaint, PepsiCo had introduced its own canned coffee drink, ‘Mountain Dew Rise’ in March 2021, which incorporates Rise Brewing’s trademarked term ‘RISE’ in the brand name. The complaint further alleges that PepsiCo’s usage of the ‘Rise’ trademark in its branding creates a ‘reverse confusion’, whereby a larger entity adopts the trademark of a relatively smaller one, and then floods the market with the infringing goods through its superior commercial resources, and confuses consumers into thinking the two goods are related, or have a common origin.
BRAND LICENSING UPDATES
Forever21 Launches ‘Space Jam’ Collection
With Warner Bros’ much awaited film ‘Space Jam: A New Legacy’ set to release soon, clothing giant Forever21 has launched a new line of licensed Space Jam apparel and accessories. The new collection pays homage to the 90’s basketball style, and includes apparel for men, women, kids, and juniors, adorned with characters from the Space Jam series, like Bugs Bunny, Lola, and Wile E. Coyote, among a host of others.
Adidas and Lego Release Buildable Sneaker
Sportswear giant Adidas and toymaker LEGO have once again collaborated, to unveil a new LEGO building block set, in the shape of the iconic Adidas Superstar sneaker. The two companies, who have previously joined hands to release several shoes and apparel ranges, are now entering the toy market with the Adidas Superstar LEGO set. In furtherance of the same collaboration, Adidas will also be releasing a new version of the classic Superstar sneaker, specially designed with a LEGO theme.
DOMAIN NAME DISPUTE UPDATES
Indian Company Attempts to Hijack Common Surname Domain
An Indian company, Machani Infra Development Corporation Pvt. Ltd. (“Machani Corp.”) has recently been found guilty of attempting to reverse domain name hijack the website www.Machani.com. Machani Corp. instituted the dispute under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) before a Panel of the World Intellectual Property Organisation (“WIPO”), alleging cybersquatting on the part of the owner of www.Machani.com. The WIPO Panel, however, noted that the domain owner’s last name was ‘Machani’ itself, and all the evidence of Machani Corp.’s usage of the trademark ‘Machani’ was subsequent to the registration of the domain name www.Machani.com. Therefore, the Panel rightly held Machani Corp. guilty of attempting reverse domain name hijacking.
GEOGRAPHICAL INDICATION UPDATES
Chedi Putta Sari On Track for GI Tagging
The Chedi Putta handloom sari of Tamil Nadu, which is woven with a mixed fabric of artificial silk and cotton, has recently been applied for Geographical Indication (“GI”) tagging. The terms ‘Chedi’ and ‘Putta’ literally translate to ‘plant’ and ‘border’, as these traditionally woven saris incorporate floral designs along the border, or ‘pallu’, of the sari. The Chedi Putta sari is native to parts of the Tirunelveli district of Tamil Nadu, and the application for GI tagging has been submitted on behalf of five weavers’ associations in the same region. The GI tagging would significantly boost the economic situation of the Chedi Putta sari weavers, who have faced significant financial losses due to the COVID-19 pandemic.
Authored and compiled by Uma T.S, Shreya Chaddha & Varun Gopalakrishnan
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