GI Tag to Manipur Black Rice, Groupon Wins Domain Dispute, ANADAY Takes on AMADAY for Trademark Infringement and more, brought to you by the Trademark Attorneys at BananaIP (BIP) Counsel.
INDIAN TRADEMARK UPDATES
ANADAY Takes on AMADAY for Trademark Infringement
Ajanta Pharma (‘Plaintiff’), a multinational pharmaceutical company, filed a suit before the High Court of New Delhi seeking a permanent injunction to restrain Zuventus Healthcare (‘Defendant’) from using the trademark ‘ANADAY’ for pharmaceutical drugs. The Plaintiff claims to be the registered proprietor of the mark AMADAY since 1997 for treatment of high blood pressure and heart disease. Even though the Defendant uses ‘ANADAY’ for the treatment of breast cancer, the Plaintiff claims that the confusion in reading the prescription would amount to a serious lapse vitally affecting the lives of consumers. The Defendant contended that the Plaintiff is not selling the AMADAY drug in India and is only engaged in exporting it, and also the drug requires a prescription by an Oncologist and not other specialists, thus there is no likelihood of any confusion. Defendant further contended that the trademark was devised by adopting the first three letters of the molecule ANASTROZOLE, and the tablet is required to be administered daily, thereby coining the word ‘ANADAY’. Although ‘ANADAY’ and AMADAY are deceptively similar, there is no material on record to show that the Defendant dishonestly adopted their mark to ride on the reputation and/or goodwill of the Plaintiff’s mark. The Plaintiff has no sales in India and thus no corresponding goodwill in India. Moreover, the Plaintiff’s drug is used for a different ailment than that of the Defendant’s. Thus, the goodwill if any, earned by the Plaintiff’s product cannot be utilized by the Defendant. In view of the aforesaid, the Court finds no ground to grant the relief of injunction in favor of the Plaintiff and thus dismissed the suit.
Citation: Ajanta Pharma Ltd. vs Zuventus Healthcare Ltd (I.A. 8731/2019)
INTERNATIONAL TRADEMARK UPDATES
Vivo’s New Trademark Filings Indicate Expansion into Processors
If new trademark filings are to be believed, BBK-owned smartphone brand Vivo, is all set to expand its smartphone business by manufacturing their own mobile processors. The Chinese company has filed new trademark applications with the China Trademark Office for “Vivo chip” and “Vivo SoC” under class 09 for central processors, modems, smartphones, computer chips, microchips, biochip sensors, printed circuits, chip cards, computer storage devices. With the above filings, Vivo will join the league of Apple, Samsung and Huawei, who are all known in the smartphone arena for also manufacturing their own chipset.
Supreme Victory in China for Supreme US
Supreme has tightened its grip globally by getting new trademark registration in China. The US based clothing and accessories brand has been granted registration for its mark ‘Supreme’ in China for accessories and footwear—including shirts, pants, jackets, underwear, belts, hats, bandannas, and shoes. With the grant of the trademark, Supreme US has ended its long battle with similarly named clothing counterfeiter Supreme Italia, owned by International Brand Firm (IBF) based in England. The copycat brand had been copying Supreme US’s logo and selling fake knockoff products in China through a flagship store in Shanghai. As a result, Supreme Italia has been forced to close its Shanghai location.
BRAND LICENSING UPDATES
Crosley Radio Renews License with Beatles
Crosley Radio, a US based audio electronic manufacturing company, has renewed its licensing agreement with the Beatles to produce Beatles-branded vinyl accessories and products. The renewal is for a three-year period and has been brokered by Sony Music’s Thread Shop, the Beatles North American licensing agent.
TVBOY Enters Apparel Industry Through ZARA
Italian street artist Salvatore Benintende, better known as TVBOY, has launched his first apparel collection at Zara Men. Zara has licensed TVBOY’s Vincent Selfie artwork to create a contemporary apparel collection. The clothing line is made of 100% ecologically grown cotton and is available through Zara’s website.
DOMAIN NAME DISPUTE UPDATES
Groupon Wins Domain Dispute
Groupon Inc, a major player in local commerce, filed a domain name dispute complaint on 1st January 2020 with the WIPO Arbitration and Mediation Center against Tun Ming, an individual based out of China (“Respondent”), for registering a confusingly similar domain www.grouponmerchant.com. Groupon, currently active in 15 countries with over 45 million customers worldwide, is the registered trademark holder of “GROUPON” in over 50 countries. It was contended that the incorporation of the term “merchant” into the disputed domain name increases the likelihood of confusion with Groupon’s trademarks and shows bad faith. Groupon uses the term “Groupon Merchant” on its official webpage as a part of its merchant relationship development business. The Respondent had never acquired any type of a license from Groupon and therefore was not authorized for his usage in the disputed domain name. Respondent contended that the disputed domain is not identical or confusingly similar Groupon’s Chinese trademarks, ‘GROUPON GOODS’ and ‘GROUPON NOW’. Further the Respondent contended that he was preparing to use the domain name in good faith to sell GROUPON branded tires, which is different than Groupon’s business.
The Panel after hearing both the parties and perusing the documents found that the nature of the disputed domain name, being confusingly similar to Groupon’s trademarks, carries a risk of implied affiliation with Groupon, and that the Respondent is not commonly known by the disputed domain name. Therefore, the disputed domain www.grouponmerchant.com was ordered to be transferred to Groupon.
GEOGRAPHICAL INDICATION UPDATES
GI Tag to Manipur Black Rice
On 20th April, 2020, the Geographical Indication (GI) Registry granted GI registration to the black rice of Manipur in the Agricultural category. Black rice of Manipur, locally known as Chakhao, is a scented glutinous rice which has been in cultivation in the Manipur region for centuries. It is characterized by its special aroma and its appearance has a dark purple hue on its outer bran layer making it appear almost black. It is mostly used during community feasts and has also been used as a part of traditional medicine. The application was filed by the North Eastern Regional Agricultural Marketing Corporation Limited (NERAMAC) in December 2017.
Authored and compiled by Uma T.S & Shreya Chaddha
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