Fox Files Trademark for Viral Internet Phrase “OK Boomer”, Can Artists Use Trademarks in Their Works?, Darjeeling Green and White Teas Registered as GI, Qatar Tourism Council Wins Cybersquatting Case against Travel Booking Site, and more brought to you by the Trademark Attorneys at BananaIP (BIP) Counsel.
INDIAN TRADEMARK UPDATES
Centre Cracks Down on Brands Illegally Using ‘Agmark’
Hatsun, the largest private sector dairy company in India, is among 33 companies that have been directed to cease using the ‘Agmark’ certification mark on their products in Tamil Nadu. The ‘Agmark’ certification mark is employed on agricultural products in India, indicating conformance to the standards established by the Directorate of Marketing and Inspection (DMI), functioning under the Ministry of Agriculture and Farmers’ Welfare. While the mark is voluntary and primarily for trade and export purposes, it carries significant value and is an assurance of quality. Moreover, the mark is mandatory for the selling blended edible vegetable oils and fat.
The DMI issued a notification warning the companies of legal action for the continued use of the certification mark, which is issued once every five years, on a total of 66 brands, claiming that the validity certificate of these brands expired on March 31. Hatsun has been directed to stop using the mark on its ghee products. However, Hatsun has responded to the notification, claiming that its certification is valid till March 2020.
INTERNATIONAL TRADEMARK UPDATES
Fox Files Trademark for Viral Internet Phrase “OK Boomer”
Fox, the American television network, has filed a trademark application for “OK Boomer”, the viral phrase that has become an internet sensation this year. The phrase, which first rose to popularity on the video app TikTok and has since spread to the rest of the Internet, is a slang, often used in a humorous or ironic manner, to call out or dismiss out-of-touch or close-minded opinions associated with older generations (primarily the “Baby Boomer” generation). Over just a few weeks, the phrase began garnering mainstream attention over its place in politics and the workplace, with major news outlets like the New York Times running profiles on it. Fox is the latest in a long line of brands and companies, including Netflix, aiming to cash in on the phrase’s ubiquity, with the phrase appearing in marketing efforts and online merchandise ranging from clothing to stickers. Fox likely intends to use the phrase for the name of a reality, comedy, or game show.
Can Artists Use Trademarks in Their Works?
The Brussels Commercial Court is set to rule on the issue of balancing trademark law with artists’ right to freedom of expression. The suit arose from paintings and clothing being sold by a Belgian artist, Cedric Peers, that featured “Dom Pérignon”, a well-known trademark, owned by the company Moët Hennessy Champagne Services, with the company claiming infringement.
The Brussels Commercial Court sought inputs from the Benelux Court of Justice (BCJ), which is an international court that rules on issues pertaining to the application of treaties between the three Benelux countries—Belgium, the Netherlands, and Luxembourg. These treaties include the Benelux Convention on Intellectual Property. The Brussels court asked the BCJ for an opinion on first, whether the freedom of expression and artistic freedom could constitute the “due cause” exception for the use of a trademark and, if so, second, which criteria should be taken into account when assessing the balance between those rights and trademark rights.
The BCJ provided a rather limited opinion, and focussed on an European Directive implemented under the Benelux Convention on Intellectual Property, concluding that artistic freedom constitutes a due cause for the use of a trademark, if the artistic expression is the original result of a creative design process that does not aim to harm the trademark nor the trademark owner. It did not, however, provide an opinion on the question of balancing of rights, including whether the intended commercialisation of the artwork (which is the case in this suit) was a relevant consideration. Armed with this opinion of the BCJ, the Brussels Commerical Court must now determine whether Peers’ use as an “artistic expression” warrants protection.
BRAND LICENSING UPDATES
Pokémon Announces New Fashion Collection Collab
The Pokémon Company, which manages Pokémon, the popular media franchise, has partnered with the French clothing retailer Celio, for a whole new Pokémon by Celio fashion collection. The collection, which features 12 products, including high-quality sweatshirts and t-shirts, as well as accessories like backpacks and hats, will be made available across Europe, the Middle East, Africa, and online. To further the new line, a dedicated pop-up store has been opened in Paris, which provides consumers with a Pokémon experience along with exclusive Celio apparel.
Potential Indian Partners Discouraged by McDonald’s Franchise Conditions
New stringent franchise conditions laid down by McDonald’s, the American fast food company, has put off several potential Indian partners for the company’s north and east franchise. McDonald’s has said that its new franchise partner will not be allowed to be listed on any stock exchanges and all shares of the company operating McDonald’s outlets in the north and east must be pledged to the parent company of McDonald’s. This has resulted in groups like RP Sanjiv Goenka Group and the Bird Group pulling out of talks owing to a lack of consensus over these conditions. However, entrepreneur Sanjeev Agrawal-promoted MMG Group, which owns Moon Beverages, Coca-Cola’s largest franchise bottling company is reportedly amongst those still in the fray for the franchise.
DOMAIN NAME DISPUTE UPDATES
The .org Domain is Now For-Profit
Public Interest Registry (PIR), a not-for-profit which maintains the .org domain, has announced that it will be acquired by Ethos Capital, a private equity firm. This puts the .org domain within the for-profit realm, which might seem at odds with what .org had grown to represent for many. Since the .com domain was earmarked for commercial entities, .org had emerged as an alternative for non-profit use. This news compounds the fears generated by the decision of the ICANN, the non-profit that oversees all domain names on the internet, in June to remove price caps on rates for .org domain names, which are generally cheap. PIR had published an “open letter” at that time, saying that it had no “specific plans” to increase prices for .org domains. However, that might change now, after this acquisition, and if the rates for .org domains do go up in the future, it could affect non-profits and institutions that rely on low domain name fees to maintain their websites.
Qatar Tourism Council Wins Cyber squatting Case against Travel Booking Site
Qatar National Tourism Council has won a cyber squatting case against the owner of the domain name VisitQatar.com. The owner, based in Azerbaijan, had bought the domain name for his travel booking website. However, the three-person panel held that the booking website was merely a ruse and the owner registered the domain with the intention of selling it at a substantial profit to Qatar’s tourism body, which was already active under the “visitqatar” term on social media.
GEOGRAPHICAL INDICATION UPDATES
Darjeeling Green and White Teas Registered as GI
Darjeeling green and white teas have been granted the Geographical Indication (GI) tag for the domestic market, with effect from October 2019. The Tea Board, which is the registered proprietor of GI for Darjeeling tea, had filed for the GI tag in light of increasing domestic demand for green and white teas. Darjeeling black tea is already registered as a GI. The annual estimated production of Darjeeling white tea is one lakh kilograms, while that of green tea is ten lakh kilograms. This will strengthen the protection of the intellectual property rights of the Darjeeling tea, which is considered as niche and luxury products in the country and abroad.
BANANAIP NEWS UPDATES
Bananaip to Host a Special Session on Obtaining a Patent Grant in One Year in India
On 23rd November 2019, BananaIP will be hosting a session to discuss strategies in order to obtain speedy patent grants. The discussion will be led by Dr. Kalyan Kankanala, a well-known patent attorney, and Mr. Gaurav Mishra, an experienced patent prosecutor. The discussion will be held at BananaIP’s office between 2 pm and 4 pm on 23rd November, 2019.
You may click here to register for the session.
Authored and compiled by Param Gupta
About BIP’s Trademark Attorneys
The Trademark News Bulletin is brought to you by the Trademark/Copyright, IP Transactional Strategy Divisions of BananaIP Counsels, a Top IP Firm in India. Led by Sanjeeth Hegde, BIP’s trademark attorneys are among the leading experts in the field. If you have any questions, or need any clarifications, please write to [email protected] with the subject: Trademark News.
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