Apple Files Trademark for its Covid-19 App, MakeMyTrip Defends its Trademark, IP Offices Closed till 03rd May, Mizo Banana Loses GI Battle and more, brought to you by the Trademark Attorneys at BananaIP (BIP) Counsel.
INDIAN TRADEMARK UPDATES
MakeMyTrip Defends its Trademark
The online travel company MakeMyTrip, filed a suit before the Delhi High Court for a permanent injunction to restrain MTB TRAVEL PLANNER (‘Defendant’) from using the deceptively similar trademark MYTRIPBAZAAR, its logo and the domain www.mytripbazaar.com, with respect to online travel. MakeMyTrip in the suit claimed that it had started using the brand name in 2000 and is the registered holder of the trademark and the domain www.makemytrip.com. Further, a cease and desist notices was issued to the Defendant but there was no response received. The Court upon hearing the pleadings in the suit observed that the mark, domain name, and the logo adopted by the Defendant were deceptively similar / identical to those of MakeMyTrip. The Court also noted that both the parties provided the same services and therefore the use of the mark MYTRIPBAZAAR would lead to the possibility of confusion and deception. The Court therefore passed an ex-parte permanent injunction in favour of MakeMyTrip restraining the Defendant from using the deceptively similar mark and the domain.
Citation: Makemytip (India) Private Limited v. MTB Travel Planner Private Limited and Another (CS (COMM) 430/2019)
INTERNATIONAL TRADEMARK UPDATES
Apple Files New Trademark for Covid-19 App
Apple has filed a new trademark application to protect its logo for the recently launched Covid-19 informational mobile app. On March 27th Apple issued a press release that it would be launching a new app and website for Covid-19, a screening tool and set of resources to help people stay informed and take the proper steps to protect their health during the spread of the virus. The mark has been filed under the international trademark class 9 for computer software; computer software for providing health guidance and information; computer software for health screening.
Victoria Beckham Loses Initial Battle for Brand VB
Former Spice Girl Victoria Beckham is all set to protect her initials from anyone who dares to use it. The former signer turned fashion designer has filed a suit against VB Skinlab, an Australian cosmetics company, for using the initials VB, after Intellectual Property (IP) Australia rejected her opposition application. VB Skinlab had filed applications with IP Australia to register the marks VB Salon as well as VB Skinlab for beauty salon services, skincare products and cosmetics. Beckham had filed an opposition against the applications, claiming that VB Skinlab is trying to take advantage of her name and would likely deceive or cause confusion amongst consumers. Beckham has also claimed that she has used her initials VB to market cosmetics and skincare products in collaboration with Estée Lauder in Australia since September 2016. However, IP Australia while pronouncing the order in favour of VB Skinlab, has rejected the contentions stating it was “not satisfied that any confusion between the trademarks and the VB would arise due to the reputation of the VB Mark”. While acknowledging the stardom and fame of the signer/designer, the IP office concluded that “Beckham had acquired at best a very limited reputation in Australia for cosmetic products”. The matter is now listed for preliminary hearing.
BRAND LICENSING UPDATES
Luxottica Group & Versace Renew Agreement for Glasses
Luxottica Group, the world’s largest eyewear manufacturer, and Italian fashion major Versace, have announced the renewal of an exclusive license agreement for the development, production and worldwide distribution of sunglasses and prescription frames under the Versace brand. The new ten year agreement term commenced on 1st April 2020.
DOMAIN NAME DISPUTE UPDATES
Gameloft Wins Domain Dispute for Asphalt 9
France based mobile gaming company Gameloft won a cybersquatting case against the owner of the domain asphalt9legends(.)net. Gameloft is the owner of several trademarks in the European Union as well as the US for its famous ASPHALT racing game franchise such as ASPHALT, ASPHALT 9 and ASPHALT 9 LEGENDS. Gameloft had filed a domain name dispute complaint with the WIPO Arbitration and Mediation Center against Contact Privacy Inc (‘Respondent’), owner of the domain name asphalt9legends(.)net. Gameloft had claimed that the disputed domain name is identical and/or confusingly similar to their trademark and also that it was being used in bad faith. The Respondent failed to submit any response to the complaint. The Panel observed that the domain name was confusingly similar to the trademarks of Gameloft, and that it has no relationship of any kind with the Respondent, never having permitted them to use the ASHPHALT 9 LEGENDS trademark or to register the disputed domain name. The Panel concluded there was a prima facie case in favor of Gameloft, and thus ordered the transfer of the disputed domain name.
GEOGRAPHICAL INDICATION UPDATES
Mizo Banana Loses GI Battle
On 2nd March, 2020, the Geographical Indication (GI) Registry, Chennai refused to grant the GI tag to Mizo Banana (Long Cavendish) as the applicant failed to prove the historical data and origin of the product, and was unsuccessful in establishing that the product is qualified to be a GI. Upon the receipt of the application in December, 2018 the Registrar of GI proposed to convene a consultative group meeting consisting of experts to verify the contents of the application. The meeting was held and the expert committee after deliberations and verifications of documents, made their recommendation that the indication is a newly coined term and therefore does not qualify to obtain the tag. The applicant was further granted an opportunity to justify the application via hearing. However, the applicant was not able to demonstrate the uniqueness of the product, nor provide any historical data supporting the origin of the product. The application was filed by the North Eastern Regional Agricultural Marketing Corporation Limited (NERAMAC).
GENERAL IP UPDATES
IP Office Closed till 3rd May
In view of the recent extension of the nation-wide lockdown by the Ministry of Home Affairs, Government of India, a new public notice has been issued by the Office of CGPDTM. The notice states that all the fffices under administrative control of CGPDTM shall not be physically accessible to the public (in person) for a further period, upto 03rd May 2020, with effect from 15th April 2020. Therefore, all the relaxations which had been made in the previous notice have been extended till 3rd May 2020. All the trademark related hearings scheduled upto 3rd May have also been adjourned and fresh notices shall be issued in due time. The online filing services shall remain unaffected and will continue as always.
Authored and compiled by Uma T.S & Shreya Chaddha
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