L’Oreal Faces Trademark Opposition from Marshmello, Instagram vs. Instakarma and more
L’Oreal Faces Trademark Opposition from Marshmello, Phonetically Generic Trademark Protectable?, BoAt Collaborates with Designer Masaba and more brought to you by the Trademark Attorneys at BananaIP (BIP) Counsel.
INDIAN TRADEMARK UPDATES
Phonetically Generic Trademark Protectable?
The Delhi High Court, in a recent decision, vacated an interlocutory injunction granted to Delhivery Private Limited, a logistics and transport services provider. The interlocutory injunction was granted against Treasure Vase Ventures Private Limited, which had adopted a trademark ‘DELIVERE’, which was found to be similar to Delhivery Private Limited’s registered trademark ‘DELHIVERY’. On appeal, the Delhi High Court held that both marks were derived from the same word ‘Delivery’, and although Delhivery Private Limited had registered the trademark ‘DELHIVERY’, the mark was still a phonetically generic one, and had not acquired a secondary meaning among consumers. Therefore, the interlocutory injunction granted against Treasure Vase Ventures Private Limited was vacated, and both marks were allowed to co-exist.
Citation: Delhivery Private Limited vs. Treasure Vase Ventures Private Limited [CS (COMM) 217/2020, I.A.S 5109/2020, 6523/2020 & 6572/2020]
INTERNATIONAL TRADEMARK UPDATES
L’Oreal Trademark Faces Opposition from Marshmello
L’Oreal, the world’s largest cosmetic company has found itself in the midst of an opposition battle over the trademark ‘The Mello Brand’. Electronic music artist Marshmello has filed a notice of opposition with the US Trademark Trial and Appellate Board (TTAB) against the mark, which has filed by L’Oreal for make-up preparations. The electronic music producer has alleged in the notice that L’Oreal is using a mark which is relatable and phonetically similar to his name. Although Marshmello’s existing trademarks do not cover beauty products, the opposition notice states that the use of a similar mark by the beauty manufacturer infringes on the artist’s turf for expansion into different products. L’Oreal has until the 7th of December to respond to the opposition.
Instagram Files Opposition against the Mark ‘INSTAKARMA’
Popular social media platform, Instagram, recently filed a notice of opposition against the mark ‘INSTAKARMA’ filed by R3 Media Corporation, a media network company, for the use of the mark in connection with mobile applications. Instagram has claimed in the opposition, which has been filed with the US Trademark Trial and Appellate Board (TTAB), that its own mark ‘INSTAGRAM’ has been in use since 2010, and therefore, Instagram has amassed a stellar reputation and a large user base. The use of the mark INSTAKARMA will dilute Instagram’s mark, and create confusion among the consumers about an affiliation between the two companies. R3 Media will now have to respond with their Counter Statement and defend their application.
BRAND LICENSING UPDATES
Simba Collaborates with Paul and Mike for Beer Based Chocolates
India’s first bottled stout beer manufacturer Simba has launched beer-based caramel chocolates, in collaboration with Kerela based chocolatier Paul and Mike. Apart from the chocolates, Simba is all set to diversify its product portfolio this festive season by launching a wide range of merchandize which includes scented candles as well as beer-based gourmet dips and sauces. Keeping in trend with the online shopping, its products will be available on e-commerce websites for easy access.
BoAt Collaborates with Designer Masaba
Electronic products manufacturer BoAt has collaborated with fashion designer Masaba Gupta to unveil a new line of headphone designs. The new collection boAt × Masaba, is inspired by the disco divana era of the ’70s up to the millennial 2020s. The collection which showcases vintage patterns made its debut at the Lakme Fashion Week’s first digital edition 2020, which was held in the last week of October 2020.
DOMAIN NAME DISPUTE UPDATES
Shredding Products Manufacturer Found Engaging in Reverse Domain Name Hijacking
An Italian shredding products manufacturer, Elcoman Srl, recently filed a cybersquatting dispute under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), against Marc Ellis, the owner of the domain name Kobra.com. Elcoman Srl sold its paper shredding products under the mark ‘Kobra’ and had registered several trademarks for the same as well. The WIPO Panelist, in its decision stated Elcoman has not provided any evidence which shows that the domain name Kobra.com was registered in bad faith. On the other hand, the domain has been continuously used by Marc since 2002. Therefore, the claim of cybersquatting was denied, and Elcoman Srl was found indulging in reverse domain name hijacking instead.
GEOGRAPHICAL INDICATION UPDATES
Telia Rumal Granted GI Tag
Puttapaka Telia Rumla, commonly known as Telia Rumal has been granted a Geographical Indication Tag (GI). Telia Rumal is a unique tie and dye technique that uses oil for the treatment of the yarn that helps it retain softness and has a distinct smell of gingelly oil. Telia Rumal originated in Chirala, Andhra Pradesh and was patronized by the Nizam’s of Hyderabad. The application for the GI has been filed by The Consortium of Puttapaka Handloom Cluster -IHDS.
Authored and compiled by Uma T.S, Shreya Chaddha, & Varun Gopalakrishnan
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