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KFC Isn’t Finger Licking Good During the Pandemic, Madras High Court Slaps Fine on Patanjali for ‘Coronil’, and more
KFC Isn’t Finger Licking Good During the Pandemic, Instagram Faces Trademark Suit Over New ‘Reels’ Feature, Skechers to Come Out with Dr. Seuss Inspired Collection and more brought to you by the Trademark Attorneys at BananaIP (BIP) Counsel.
INDIAN TRADEMARK UPDATES
Madras High Court Slaps Fine on Patanjali for ‘Coronil’
Madras High Court has restrained Patanjali Ayurveda Limited (‘Patanjali’) from using the term ‘Coronil’ in connection with an ayurvedic medication claimed to be a cure to the novel Coronavirus. The suit was filed by Arudra Engineering Pvt. Ltd. (‘Arudra’), who are the registered proprietors of the trademarks ‘CORONIL-92 B’ and ‘Coronil-213 SPL’ since 1993, used in connection with chemical sanitization agents. The Madras HC had granted an ex-parte interim injunction order in favour of Arudra which had been opposed by Patanjali. The Madras HC refused to vacate the interim injunction order and imposed a fine of INR 10 lakh on Patanjali for infringing on the existing trademarks, as well as for chasing profit by exploiting the fear and panic among the general public by falsely claiming ‘Coronil’ to be a cure for the virus when, in fact, the tablet is not a cure but rather an immunity booster for cough, cold and fever.
Citation: Arudra Engineers Private Limited vs Patanjali Ayurved Limited [O.A. No. 258/2020 in C.S. No.163 of 2020]
INTERNATIONAL TRADEMARK UPDATES
KFC Isn’t Finger Licking Good During the Pandemic
Kentucky Fried Chicken (KFC), one of the world’s largest fast food chains, has decided to suspend usage of its age-old slogan ‘It’s Finger Lickin’ Good’, in light of the worldwide Covid-19 pandemic. For the past several months, healthcare officials have continuously cautioned people against touching their eyes, nose, and mouth, in order to halt the spread of the deadly Coronavirus, and in such an environment, KFC stated that its iconic slogan “doesn’t feel quite right”. KFC announced the move through a YouTube advertisement campaign, showing KFC billboards and food packaging with the ‘It’s Finger Lickin’ Good’ slogan blurred out, amplifying the message of healthcare officials. The slogan is set to return to all packaging and advertising once the pandemic subsides, and when KFC deems that the “time is right”.
Costco not Infringing Tiffany, Succeeds in Appealing $21 Million Verdict
The U.S. Second Circuit Court of Appeals in New York recently overturned a $21 million award against Costco Wholesale Corporation, for infringing the trademark of renowned jewellery maker Tiffany & Co. The suit was first instituted in 2013 by Tiffany against Costco, who was selling unbranded diamond engagement rings, bearing the “Tiffany” name. The U.S. District Court had decided the case in favour of Tiffany back 2015, holding Costco liable for trademark infringement and counterfeiting. The Second Circuit Court of Appeals, however, overturned this decision, stating that the “Tiffany” signs were placed by Costco to refer to the design of the diamond ring, which was also called the “Tiffany” design in a number of magazines and publications. Further the Court stated that Costco acted in good faith and had no intention to infringe on Tiffany’s trademark, or to counterfeit their goods.
Instagram Faces Trademark Suit Over New ‘Reels’ Feature
ReelzChannel, a US based independent cable and satellite television network, has filed a trademark infringement suit against popular social networking site Instagram and its owner Facebook, over the site’s newly launched feature ‘Reels’. Reels is a short-form video sharing platform, which was introduced by Instagram to compete with platforms like TikTok. Reelz has stated in the suit that the use of the name ‘Reels’ by Instagram will confuse consumers, as well as usurp the goodwill and brand identity of ReelzChannel. The suit has been filed before the Minnesota Federal Court, with ReelzChannel claiming damages for trademark infringement, trademark dilution, as well as injunctive relief against the use of the mark ‘Reels’.
BRAND LICENSING UPDATES
Skechers to Come Out with Dr. Seuss Inspired Collection
Sketchers USA, a North American lifestyle and performance footwear brand, has partnered with the popular children’s entertainment company Dr. Seuss Enterprises, to create a new footwear collection for children as well as adults. The collection will bring to life the well-known characters from Dr. Seuss books such as “The Cat in the Hat”, “Thing 1” and “Thing 2”, “One Fish”, “Two Fish”, “Red Fish”, “Blue Fish” and many others. The collection will be available online from September 2020 at Skechers’ website as well as through its retail stores.
Minions go Wrogn
Wrogn, the youth fashion brand co-owned by Virat Kohli, has partnered with Illumination for their Despicable Me and Minions characters, to develop a new fashion collection named ‘MINIONS x WROGN’. Wrogn will have licensing rights to use the iconic animated characters Gru and the Minions on this new apparel line. The collection will offer 10 unique designs in various colors and styles and will be available throughout India by way of retail as well as online stores. The deal is brokered by the brand licensing agent Black White Orange (BWO).
DOMAIN NAME DISPUTE UPDATES
OpalShop.com Involved in Reverse Domain Name Hijacking Attempt
Mighty Men Pty Ltd (“Complainant”), an Australian company operating under the trade name ‘Opalshop’, recently filed a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), against the operator of the domain www.opalshop.com. The Complainant owns and operates the domain names www.opalshop.com.au, www.opalshopaustralia.com and www.opalshopaustralia.ch. The impugned domain name belonged to a deregistered Australian company by the name of RD Opal Pty Ltd (“Respondent”). It was the contention of the Complainant, that as the domain name belonged to a deregistered entity, it must be transferred to the Complainant itself. A former director of the Respondent countered the present complaint, rebutting the claim, and stating that the domain www.opalshop.com was initially created as a landing page for their commercial storefront. The impugned domain name now redirects visitors to the Respondent’s new opal jewellery business, at www.blackstaropal.com, and is therefore still in use. The WIPO Panel rejected the complaint, stating that the Complainant was acting in bad faith, and had made several misrepresentations during the UDRP process. Further, the Panel held that the Complainant has abused the administrative process, in order to engage in reverse domain name hijacking, to unjustly appropriate the domain name www.opalshop.com and therefore the complaint is denied.
GEOGRAPHICAL INDICATION UPDATES
Goa’s Myndoli Bananas and Harmal Chilies Soon to get GI Tags
Goa is all set to include two more Geographical Indication (GI) tags to its already existing portfolio. The GI Registry has recently advertised in its journal two GIs, Myndoli Bananas and Harmal Chilies, filed by the Department of Science & Technology (DST), Government of Goa and The Harmal – Pernem Chilli (Mirchi) Growers Association (HPCGA) along with The Department of Science & Technology DST, Government of Goa respectively. Myndoli Bananas, popularly known as Moira bananas, was introduced by Franciscan priests in the village of Moira, Goa and is characterized by their large size, longer shelf-life as well as less seeds. Harmal chilies, originating from the coastal village of Arambol, in Pernem, Goa are known for their reddish-brown color, smooth texture, and high pungency. Both the GIs will proceed towards registration if no opposition is filed against them.
Authored and compiled by Uma T.S, Shreya Chaddha & Varun Gopalakrishnan
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