This weekly update on Trademarks and Geographical Indications (GI) is brought to you by the Trademark experts of BananaIP (BIP) Counsels.
TRADEMARK THOUGHT OF THE WEEK
“A great trademark is appropriate, dynamic, distinctive, memorable and unique” – Primo Angeli
TRADEMARK STATS FROM THE INDIAN TRADEMARK OFFICE, BETWEEN 16th FEBRUARY 2017 TO 21st FEBRUARY 2017
The Trademark office has been very busy during the last week. They have taken several actions with respect to the trademark process.
- Total Trademark applications examined by the Trademark Office: 8399
- Total applications disposed through show cause hearings: 983
- Total applications published in the trademark journal: 7389
- Total registrations granted: 10209
- Total hearing notices issued: 1360
- Total renewal notices issued: 2245
RECENT JUDGMENTS
Montblanc obtains injunction against e-commerce website Digiaaz.com
Montblanc, the well-known luxury lifestyle brand has successfully restrained the e-commerce website www.digaaz.com from selling or advertising writing instruments, wallets or watches under the mark MONTBLANC or MEISTERSTUCK. In 2013, Montblanc instituted a suit before the Delhi High Court alleging that Digiaaz.com is engaged in selling counterfeit Montblanc products. Montblanc claimed that the sale of counterfeit products at highly discounted rates by Digaaz.com is affecting the reputation of its brand in India. The honorable Delhi High Court found that Digaaz.com is engaged in selling counterfeit products and passed an injunction order against the e-commerce site restraining it from selling or advertising Montblanc products. However, interestingly, the Court has refused to provide any damages to Montblanc citing that Montblanc has failed to submit adequate evidence to prove its legal injuries.
TRADEMARK UPDATES – INDIA
Who owns the Khadi Mark? FabIndia’s fight over Khadi Mark regulations
The Khadi Mark Regulations 2013 were passed by the Khadi and Village Industries Commission with the objective of identifying genuine and authentic Khadi products and certifying them under the certifying mark. The regulation mandates that only clothes woven on handlooms in India from cotton, silk or wool or from a mixture of both are entitled to be certified as Khadi products. While recognition and certification of genuine hand woven Khadi products is a great idea, the ethnic wear retailer chain Fab India alleges that the Regulations are taking India back to age old license raj.
Ikea moves to Delhi High Court against Aikya Global
Sweden’s furniture retailer has approached the Delhi High Court against the District Court’s order to dismiss the trademark infringement case filed against the Bangalore based consulting firm Aikya Global. Earlier, the Swedish company filed a trademark infringement suit before the Patiala District court alleging that the Bangalore based firm is using a phonetically similar mark for its services. Although the Patiala District Court had initially granted a temporary injunction in favor of Ikea, the said injunction was later vacated by the Court. Ikea is planning to launch its retail stores in India in 2017 and with this objective had initiated infringement proceedings against a dozen Indian entities.
BANANAIP NEWS UPDATES
Fast Trade Mark Acceptances and Registrations
In the last month, BananaIP (BIP) Counsels has received several acceptances of trade mark applications filed just one/two months back. Examination reports with objections have been sent by the Indian Trade Mark Office only for marks, which have conflicts with other marks on the registry. It is wonderful to see the IP Office act quickly and efficiently, and with proper diligence, one can expect trade mark registrations within four to eight months of filing.
INTERNATIONAL TRADE MARK UPDATES
Beer Trade Mark Suit Settled
Shmaltz Brewing Co and Sutter Home Winery Inc. settled a trade mark suit with respect to a beer brand. Sutter Home had sued Shmaltz Brewing earlier for infringement of its trade mark Menage a Trois. It claimed that Shmaltz Brewing’s trade mark, MANNAge a Trois is confusingly similar to its trade mark. The settlement terms have not been disclosed.
With breweries increasing by the day in India, especially Bangalore, such trade mark disputes are bound to prop up sooner than later.
Trump Trade Mark Registered in China
The Chinese IP Office has recently granted registration for the trade mark, TRUMP, for construction services. Trump had been reportedly prosecuting the trade mark for more than a decade now. Trump has also filed trade marks on his name for lingerie, software, and other products.
Beyonce to trademark her daughter’s name Blue IVY Carter
Beyonce the famous pop signer has filed for trademark registration of her daughter’s name BLUE IVY CARTER in the US under classes 9, 10, 12, 16, 18, 20, 21, 24, 26, 28 and 35. However, reports indicate that the registration of the said mark might be more difficult for the Pop star as her trademarks are likely to be opposed by UK based business Blue Ivy Events. The UK based company has already asked the USPTO for an extension period for filing opposition against this mark.
Chinese firms attempt to register first daughter’s name as trademark
Fortune has reported that at least 65 trademark applications have been made before the Chinese trademark office by different Chinese firms to trademark the name of Ivanka Trump, Donald Trump’s daughter. It would be interesting to see whether the Chinese Trademark Office will be accepted or rejected these applications.
TRADE MARK LICENSING
Indian Brand Licensing and Merchandising set to grow
With a few exceptions such as Chhota Bheem and Being Human, brand licensing and merchandising has not seen too great a progress during the last decade. That is however set to change as new age startups such as BrandMonk, Black, White and Orange, and Wear Your Opinion open new vistas of licensing opportunities for Indian brands, celebrities, characters, and products. 2017 is expected to see brand extensions beyond corporate gifting and branding.
Bajaj Electricals can continue to use Morphy Richards brand in SAARC Countries
Bajaj Electricals has extended their license agreement with UK based company Morphy Richards for an additional period of five years for using the brand Morphy Richards in relation to the products procured from the manufacturers and/or imported from any other country. Bajaj Electricals was the exclusive licensee of the mark Morphy Richards in SAARC Countries since 2002.
GEOGRAPHICAL INDICATIONS
Government considering GI (Geographical Indications) filing for Sambalpuri Sarees
Odisha Chief secretary Aditya Prasad Padhi is said to have directed the Secretary of Handlooms, Textiles and Handicrafts in Odisha to take up the GI Registration of unique design products of Odisha such as Ikat and Sambalpuri Bandha saree. The Ministry of Textiles has recently constituted the Textiles Committee to support the weavers, artisans of hand woven and handcrafted textile products for protection of IPR of the unique textiles. It is high time that the government suo moto takes up initiatives to identify and protect GI’s. While Odisha has been producing several unique textile products, it has been observed that they are seldom registered as GI’s.
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