Decathlon Fights Pentathlon, Delhi High Court Restrains Usage of ‘BOSS’ and more
Decathlon Fights Pentathlon, Taylor Swift Faces Lawsuit Against ‘Evermore’ Album, Gucchi Mushroom Applied for GI Tag, and more brought to you by the Trademark Attorneys at BananaIP (BIP) Counsel
INDIAN TRADEMARK UPDATES
Delhi High Court Restrains Usage of ‘BOSS’ Trademark in Infringement Case
Internationally renowned musical instrument manufacturer, Roland International, recently obtained a favourable decision from the Delhi High Court in a trademark infringement and passing-off suit. Roland International filed the suit against Sandeep Jain, and his companies ‘Hi Tone Electronics’ and ‘Janata Electronics’ alleging infringement of its ‘BOSS’ trademark, which was being used in connection with keyboards, synthesisers, and other musical instruments. Sandeep Jain refuted the claims of passing off, asserting that the mark used by him incorporated the prefix ‘Hi Tone’, which made his mark significantly different from Roland International’s mark. The Delhi High Court, while assessing the claim of passing off, found that Jain was the prior adopter of the marks ‘BOSS’ and ‘Hi Tone BOSS’ in India, and Roland International failed to prove that its marks had reputation in India prior to such adoption by Sandeep Jain. However, the Delhi High Court took into account the public interest aspect of passing-off cases, and awarded an injunction against Sandeep Jain. The injunctive order stated that Jain’s use of the ‘BOSS’ and “Hi Tone BOSS’ marks must be restricted only to his current catalogue of products, so as to prevent any confusion among the public, and to avoid any association with Roland International’s goods.
Citation: Roland Corporation v Sandeep Jain & Ors. [CS(COMM) 565/2018 & CS(COMM) No. 6/2018]
Decathlon Initiates Trademark Infringement Suit Against Pentathlon
Decathlon Sports India, a leader in production of sporting goods, has recently initiated a trademark infringement suit before the Ghaziabad District Court, against NCR-based Pentathlon. Decathlon claims that Pentathlon has illegally, and in a mala fide manner, copied its registered trademark and tagline, and is passing off its substandard goods as those of Decathlon’s. It was further claimed that the font and colour scheme used by Pentathlon in its logo is exactly the same, and Pentathlon has also imitated Decathlon’s tagline “Sport for All – All for Sport” while creating its own tagline “Sports for Everyone – Everyone for Sports”. Pentathlon has rebutted Decathlon’s claims, stating that it sells goods of other brands such as Nike, Yonex, Wilson, Cosco, and Nivea, alongside its own branded cricket accessories, whereas Decathlon mostly sells goods under its own brands, and therefore, consumers are unlikely to be confused between the two companies.
INTERNATIONAL TRADEMARK UPDATES
Relatives of Jimi Hendrix Found Guilty in Trademark Infringement Suit
In a recent decision by the District Court of the Southern District of New York, late musician Jimi Hendrix’s brother, Leon Hendrix, and niece, Tina Hendrix, were found to be indulging in infringement of the ‘Hendrix’ and ‘Jimi Hendrix’ trademarks. The suit was instituted by Experience Hendrix LLC, the owner of the above trademarks, who had also obtained a permanent injunction against Leon and Tina Hendrix’s use of the same in 2019. The present suit was filed after the legendary guitarist’s relatives established and operated a not-for-profit music school, ’Hendrix Music Academy’, and also sold merchandise bearing the name and likeness of Jimi Hendrix. The District Court found the actions of Leon and Tina Hendrix as violative of Experience Hendrix LLC’s exclusive rights over the trademarks, and contrary to the permanent injunction passed in 2019.
Shell Emerges Victorious in Trademark Infringement Case in China
The Beijing Intellectual Property Court awarded Shell International and Shell China damages to the tune of RMB 5.5 million (approximately $851,000) for trademark infringement by several Chinese entities. The suit revolves around the sale of automobile lubricants by 5 Chinese companies, that incorporate packaging, designs, and trademarks that are deceptively similar to Shell’s products. The infringing entities were found using marks such as “SheH” and “HLIEX”, which were significantly similar to Shell’s house mark, and its registered mark “Helix”, along with Shell’s logo. The Beijing Intellectual Property Court also granted permanent injunction against the five infringing companies, restraining their use of the deceptively similar trademarks.
Taylor Swift Faces Lawsuit Against ‘Evermore’ Album
Grammy award winning singer/songwriter Taylor Swift has been targeted in a trademark infringement suit before the US District Court in Utah, filed by a Utah-based amusement park, ‘Evermore’. The amusement park had filed the suit after it noticed a quick increase of internet traffic on the park’s website, soon after the launch of Swift’s album Evermore in December 2020. The suit alleges that Taylor Swift, by incorporating certain imagery in her music videos and merchandising, has infringed upon the park’s logo and aesthetic. The suit further claims that by selling merchandise under the mark Evermore, Swift has also engaged in counterfeiting, as the trademark Evermore is owned by the amusement park. Taylor Swift’s team, however, has refuted all claims of trademark infringement, and has claimed that the suit is frivolous and irresponsible, as there is no chance of confusion between the album and the amusement park.
BRAND LICENSING UPDATES
Clarks Seals Licensing Deal for First-Ever ‘Minecraft’ Shoes
Footwear giant Clarks has recently penned a deal with video game developer Mojang Studios, to release a line of footwear inspired by the world’s best-selling video game, Minecraft. The shoes will be available in several retail stores in the Australian and New Zealand market for both boys and girls, in several colour combinations inspired from the game. The new line of shoes will be packaged in a special Minecraft box, and each pair will also be accompanied by a hidden Minecraft collectible toy.
H&M Collaborates with Rocha for New Collection
Swedish apparel retailer H&M has partnered with Irish fashion designer Simone Rocha to bring a new spring collection. The H&M X Simone Rocha line designed for women, men, and children, includes bubble silhouettes, romantic prints, traditional plaid and silky hair ribbons. The agreement marks a milestone for the Irish designer as it is her first venture into childrenswear and menswear.
DOMAIN NAME DISPUTE UPDATES
Sportswear Manufacturer Fined in Reverse Domain Name Hijacking Case
Italian sportswear company Lotto was recently made to pay approximately $237,00 USD in attorney’s fees, after it was found to be indulging in reverse domain name hijacking. Lotto had instituted a cybersquatting case under WIPO’s Uniform Domain Name Dispute Resolution Policy (UDRP) against the domains LottoStore.com and LottoWorks.com, which had been honestly obtained by an individual, David Dent, to be used in connection with his online gaming business. As the initial suit was decided in favour of Lotto, Dent was forced to file a suit before the US District Court for the District of Arizona to appeal the same. The Court found that Lotto was engaging in reverse domain name hijacking, and accordingly ordered Lotto to compensate Dent for the attorney’s fees incurred by him.
GEOGRAPHICAL INDICATION UPDATES
Gucchi Mushroom Applied for GI Tag
After the successful inclusion of saffron in the list of Geographical Indication(GI) products, Jammu & Kashmir has filed an application to include Doda Gucchi Mushroom as a GI. Locally called Gucchi or Morel, the mushroom, is priced at over ₹20,000 a kg, making it the costliest mushroom in India. Gucchi is famous for its spongy, honeycomb texture and unique flavour, as well as its medicinal and anti-inflammatory properties. The application has been filed by NGO Borderless World Foundation.
GI Products at Airports
In a bid to attract more customers and generate additional revenue, the Karnataka Government is planning on showcasing the state’s Geographical Indication (GI) products at state airports, railway stations and bus stands. Karnataka has more than 42 GI’s granted to it, including GI such as Mysore silk, Mysore agarbathi, Dharwad pedha amongst others. The government is also planning on expanding the plan to other states as well depending on the response it receives from the home state.
Authored and compiled by Uma T.S, Shreya Chaddha & Varun Gopalakrishnan
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