Unilever Partners with OYO for Sanitised Stays, Volvo Fights its Trademark Replicate, Instagram Opposes Instagem Trademark and more brought to you by the Trademark Attorneys at BananaIP (BIP) Counsel.
INDIAN TRADEMARK UPDATES
Volvo Fights its Trademark Replicate
Aktiebolaget Volvo, the Volvo Group, had filed an application in the High Court of New Delhi, seeking a permanent injunction to restrain Mantis Technologies, engaged in providing travel and tour services, from using the trademark ‘VOLVO’ as a part of their domain and trading name. The Volvo Group contended that they have adopted the trademark and the corporate name ‘VOLVO’ in 1915, and Mantis’s adoption of an identical mark is infringing, diluting and passing off their registered trademark. The Court took the view that the Volvo Group was able to establish a prima facie case in its favor and if an interim relief is not granted immediately, their statutory and commercial interests are likely to be jeopardized. The Court, therefore, granted an interim injunction against Mantis Technologies from using the trademark ‘VOLVO’.
Citation: Aktiebolaget Volvo & Ors vs Mantis Technologies Pvt. Ltd. & Ors. CS (COMM) 199/2020
INTERNATIONAL TRADEMARK UPDATES
Instagram Opposes Instagem Trademark
Popular social networking app Instagram has filed an opposition against the registration of the trademark INSTAGEM before the Trademark Trial and Appeal Board (TTAB) in the U.S, claiming the INSTAGEM trademark will cause consumer confusion and dilution. INSTAGEM has been filed by Market Organization Inc under class 41 for video editing. Instagram has stated that it has been using the trademark Instagram in the United States in connection with its platform since the launch of its social media platform in 2010. Instagram has claimed in the opposition that INSTAGEM is a deceptively similar mark and may confuse the consumers into believing that INSTAGEM is or has been affiliated or connected with Instagram.
Beyoncé Secures Blue Ivy Carter Trademark
Good news is in order for Beyoncé, as she has finally managed to secure a trademark for her daughter’s name Blue Ivy Carter. The American pop singer had filed an application with the USPTO to trademark the name of her daughter Blue Ivy Carter under various classes including books, shampoos, video games. However, an opposition was filed by Veronica Morales with the USPTO, owner of the event management business Blue Ivy Events, claiming that the use of the mark will cause consumer confusion. Morales also stated that Beyoncé had no actual intention of using the trademark in commerce, but rather had filed the trademark to keep others from using the name. The Trademark Trial and Appeal Board (TTAB) rejecting the contentions made by Morales, and ruled in favour of Beyonce, holding that ‘even though the two trademarks are similar, there’s not much of a chance of the general public confusing a wedding business with Beyoncé and Jay-Z’s daughter’. TTAB also stated that Morales had presented “no evidence suggesting they are related in a manner that would give rise to the mistaken belief that they emanate from the same source’.
BRAND LICENSING UPDATES
Unilever Partners with OYO for Sanitized Stays
Oyo, one of the fastest-growing hospitality chains has partnered with global consumer goods firm Unilever to enhance its ‘Sanitized Stays Initiative’ across the globe which includes India, Indonesia, Vietnam, US, LATAM and Europe. Under the collaboration, OYO will be working with Unilever to co-create standard operating procedures (SOP) for cleaning by using Unilever’s home and personal hygiene products. Selected OYO properties will also have Unilever hygiene kits for guests and cleaning supplies for staff, including brands such as Lifebuoy, Domex, Sunlight and Cif. Oyo will also be displaying a tag on booking pages for properties where Unilever products have been used in cleaning services.
Sauce Pack Sneakers Collection from Adidas
In uncertain times like these, Adidas and McDonalds have collaborated to bring new color and flavor in the world of basketball. German sportswear manufacturer Adidas has collaborated with American fast food chain McDonald’s for the ‘Sauce Pack’ collection of sneakers in India. The collection is inspired by basketball players James Harden, Damian Lillard and Tracy McGrady and will feature three designs: Harden Vol. 4, Dame 6 and TMAC 1. The Harden sneakers are an orange and purple color, and pulls inspiration from McDonalds’ garlic chili sauce. The Dame 6, featuring the green and orange color, resembles the classic dipping sauce packaging of McDonalds, and the TMAC 1 is a metallic gold and red shoe that pays tribute to the iconic Big Mac sauce. The collection will be available at Adidas’ official website and select retail outlets at an MRP of Rs. 10,999-Rs. 13,999.
DOMAIN NAME DISPUTE UPDATES
TikTok Fights its Domain Infringer
ByteDance (‘Complainant’), an internet technology company and owner of the brand TikTok, filed a domain name dispute complaint with the National Internet Exchange of India (NIXI) under the .IN Domain Name Dispute Resolution Policy (INDRP), against Jing Ren (‘Respondent’) an individual based in China, for registering a confusingly similar domain www.tiktok.in. The Complainant contended that TikTok is well recognized worldwide and their mobile application is available in more than 150 countries, in 75 languages, with more than 500 million users. The Complainant is also the registered owner of the trademark ‘TikTok’ in several countries and the domain www.tiktok.com. As per the complaint, the impugned domain name is currently redirecting to Sedo’s domain marketplace, where the disputed domain is being offered for sale at 39,980 USD which far exceeds the Respondent’s expenses in registering the domain name. The Complainant contended that the only use of the domain is an offer to sell.
The Respondent contented that under class 35 of trademarks, the Complainant’s word mark TIKTOK is not yet registered and therefore the Complainant has no rights over the term. Moreover, the term tiktok is phonetically similar to the generic word ticktock, and also that this term has a dictionary meaning. Thereby the term is non-distinctive and thus the rights to use or own the word tiktok cannot exist with one entity or individual.
The Panel observed that the Respondent was fully aware of the rights and interests of the Complainant in the term tiktok at the time of the registration of the impugned domain name. Moreover, the Respondent is attempting to sell the disputed domain for making profits and thereby proving no bonafide use. The Panel ordered the domain www.tiktok.in to be transferred to the Complainant.
Authored and compiled by Uma T.S & Shreya Chaddha
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