ISIC vs ISID, Trademark Rules 2017, Hike in Trademark fees, Star Bucks vs Cake Bucks, Ferraro partners with Global Icon, Pakistan’s Geographical Indication Protection Bill and more, presented by the Trademark attorneys and experts of BananaIP Counsels, India’s Premier New Age IP Firm.
Trademark quote of the week
“Every Trade Mark you Build adds to the financial value of your business, much more than your tangible assets.” – Dr. Kalyan C. Kankanala
Trademark Stats from the Indian Trademark office (28th February 2017 to 7th March 2017)
- Total Trademark applications examined by Trademark Office: 10524
- Total applications disposed through show cause hearings: 963
- Total applications published in the trademark journal: 6943
- Total registrations granted: 6634
- Total hearing notices issued: 3215
- Total renewal notices issued: 2545
Recent judgments
Delhi High Court rejects International Students Identity Card’s (ISIC) infringement action against Indian Students Identity Card (ISID)
The Delhi High Court recently rejected the claims of infringement and passing off filed against the usage of the mark ISID and the domain www.myisid.com by Mr. Abhishek Tiwary and ors. The suit was filed by the ISIC Association which claimed that the mark ISIC enjoys global recognition and popularity and therefore, also enjoys trans-border reputation. ISIC in the suit alleged that the Defendant’s mark ISID is phonetically similar to its registered mark and hence the usage of the same by the Defendant amounts to trademark infringement. However, the Defendant claimed that the ISIC had acquiesced its use of the mark ISID as ISIC was aware of the same and had not objected to the usage of the mark ISID before initiating the instant suit. After going through the evidence, the Court found that the Defendant had earlier approached ISIC for business collaboration and ISIC never raised any objection to the usage of the mark ISID any time during such discussion. Therefore, accepting the arguments of acquiescence, the court observed that ISIC was aware of the Defendant’s usage of the mark ISID and hence could not object to such usage at a later point. Moreover, the Court found that the registered logo of ISIC was visually dissimilar from the word mark ISID eliminating any further confusion among public.
Recent trademark updates
Starbucks drags local bakery to court on account of trademark infringement
Starbucks instituted a trademark infringement suit before the Delhi High Court against a local bakery called Cake Bucks. In the suit, Starbucks has alleged that the mark CAKE BUCKS is phonetically similar to its famous marks. The Court issued a notice to the Defendant giving it 30 days’ time to respond to the plaint filed by Starbucks. Interestingly, in an interview with Economic Times, Mr. Ashish Agarwal, owner of CAKE BUCKS claimed that he hadn’t received the court notice and added that he holds the trademark registration for the brand CAKE BUCKS. The next hearing is scheduled on March 24.
Trademark office updates
Trademark Rules 2017 effective from March 6th 2017- Trademark Fees Hiked
The Department of Industrial Promotion and Policy (DIPP) notified that the Trademark Rules, 2017 shall be effective from 6th March 2017. The amended Rules aim at simplifying the registration procedure, with fewer forms and improved online registration process. However, the amended Rules substantially hiked the official fees for various actions. Interestingly, the Rules give a 50% discount on official filing fees to Individuals, start-ups and Small enterprises. We have earlier covered the highlights of Trademark Rules, 2017 here.
Trade mark merchandizing and licensing
Ferraro’s Kinder Surprise Merchandize and Trade Mark Licensing
Ferraro has partnered with Global Icon to take its brand Kinder Surprise into merchandize. Global Icon will be targeting brand licensees, who will create products around the trademark and present them in the market. The products targeted are apparels, stationery, gifting, gadgets, and so on.
Smiley’s Egg-Moji show cased at New York Fair
The Smiley company has partnered with Terrier Worldwide, and show cased the Egg-Moji, its news product at the New York Fair. The egg will have a plastic egg covering with a Smiley Figurine and accessories in the yolk. It is positioned as a collectible item for consumers. The ‘Smiley’ trade mark is today one of the simple, yet very popular and well merchandized/licensed trade marks across the world. It has good presence in India as well.
International trade mark updates
South Korea, Trade Mark Leader of the World
For the third consecutive year, USCC’s GIPC has ranked South Korea at first rank in the IP index for trade marks. The country’s steps towards protection, academic work, enforcement, etc., has won it the prized ranking. US shared the stage with South Korea last year.
ClickAClinic.com settles Trade Mark Dispute with ClickItClinic
Trade Marks in domain names have assumed very high importance with increase in ecommerce, and many businesses exist only online today. clickaclinic.com a Florida company that specializes in telemedicine, objected to the use of the trade mark clickitclinic as both a trade mark and domain name. The company initiated proceedings before the US TTAB. The parties have now settled with clickitclinic agreeing to refrain from using the trade mark.
International geographical indication updates
Ireland’s Sneem Black Pudding on the way for GI Tag
An application has been filed and consultation is in process for granting EU GI tag to Sneem Black Pudding. Irish Whisky, Irish Cream, Salmond, etc., have acquired GI status from Ireland earlier. Once registered, this will be the eight food product to get GI tag from the country.
Pakistan prepares Bill for Geographical Indication protection
TheNews.com has reported that a draft of the Geographical Indication Protection Bill has been submitted by the IP Office of Pakistan to the Government. The Bill is expected to be tabled in the Parliament in the next two months. Pakistan is also a GI rich country like India, and the law if passed is expected to afford protection to many products ranging from Basmati Rice to Sialkot Sports products.
The featured image is the property of BananaIP Counsels and it must not be used without prior permission.
