Pakistan to challenge India’s Basmati GI in Europe, LEGO and Adidas Pen Multi-Year Partnership, Nintendo Cracks Down on Tiktok Star, and more brought to you by the Trademark Attorneys at BananaIP (BIP) Counsel.
INDIAN TRADEMARK UPDATES
Madras High Court Grants Temporary Injunction Against the Use of Thirumala Dairy
In a recent decision, the Madras High Court issued a temporary injunction in favour of Thirumala Milk Products Ltd. (“TMP”), restraining Kunte Group from using the mark ‘Tirumalaa Dairy’, which was found to be confusingly similar to TMP’s registered trademarks ‘Thirumala’ and ‘Tirumala’. The suit was filed by TMP, after it came to their knowledge that Kunte Group was using the mark Tirumalaa Dairy to market its dairy products and was trying to cash-in on TMP’s goodwill and reputation earned through years of usage. The Madras High Court upheld TMP’s contentions, stating that although there were no actual sales by the Kunte Group of the infringing products, the widespread advertisement and marketing of the ‘Tirumalaa Dairy’ mark evidenced their intention to encroach on TMP’s long-standing reputation. Therefore, the temporary injunction will stay in place against Kunte Group until the original suit has been finalized.
Citation: Tirumala Milk Products Private Limited v. Swaraj India Industries Limited [O.A.Nos.330 & 331 of 2020 in C.S (Comm.Div.).No.190 of 2020]
INTERNATIONAL TRADEMARK UPDATES
Nintendo Cracks Down on Tiktok Star
Gaming console giant Nintendo recently succeeded in enforcing its rights against ‘Pokeprincxss’, a widely popular influencer and streamer, who was found to be infringing various trademarks associated with Nintendo’s Pokémon franchise. The TikTok star, who had amassed more than 1.9 million followers, had trademarked her username, and also engaged in the sale of merchandise which contained her username, and depictions of certain characters from the Pokémon series. Nintendo issued a cease-and-desist notice to the internet celebrity, who ended up rebranding herself as ‘Digitalprincxss’, and was also made to pay a hefty sum to Nintendo as compensation for the continued trademark violations.
U.S. Court of Appeals Refuses Trade Dress Protection for Sitck-Shaped Cookie
Ezaki Glico, a Japanese confectionery maker, was recently denied protection for its trade dress in ‘Pocky’, its chocolate covered stick-shaped cookies, as the shape was held to be a functional element of the cookie. Ezaki Glico began selling ‘Pocky’ in 1978 and registered two trade dresses for the same with the United States Patent and Trademark Office (USPTO). In 1983, another confectionery maker, Lotte, produced a strikingly similar product, ‘Pepero’, which Ezaki Glico opposed through several cease-and-desist notices. In 2015, Ezaki Glico filed a suit against Lotte for infringement of its trade dress with the United States District Court of New Jersey. The District Court, and subsequently the United States Court of Appeals for the Third Circuit denied the trade dress protection, holding that the shape of the cookie was a functional or useful element, and therefore could not be protected as trade dress.
BRAND LICENSING UPDATES
LEGO and Adidas Pen Multi-Year Partnership
Sportswear giant Adidas has entered a long-term licensing deal with Danish toy company LEGO to co-create a wide range of products including footwear, apparel, and hardware. The partnership which was created in 2018 has been kicked off with the unveiling of the limited-edition Adidas Originals ZX 8000 LEGO sneaker. The products will be available for both kids and adults and will features different Lego themes.
Formula1 Partners with Confirmed360
With the return of the Portuguese Grand Prix looming, Formula1 recently announced its new offering in collaboration with elite concierge service Confirmed360. Through the collaboration guests will be able to access restaurants, arrange guided tours, have access to local entertainment amongst other hospitality services in each host city. The experience will also incorporate Confirmed360’s network of artists, athletes, and entertainment organizations, to provide an unforgettable experience to guests, including opportunities to walk the red carpet to movie premieres, and even meet their favorite bands and celebrities. The new partnership will also enhance the experience of members of Formula1’s Paddock Club, an official exclusive VIP club for member’s of Formula One Grand Prix.
DOMAIN NAME DISPUTE UPDATES
Green Globe Limited Found Indulging in Reverse Domain Name Hijacking
The domain name GreenGlobe.com was recently found to be the target of a reverse domain name hijacking effort, by Green Globe Ltd, who was the complainant in the present matter. Green Globe Ltd. filed a complaint against the owner of the domain GreenGlobe.com under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), claiming that the website was displaying several Green Globe trademarks on its website, without having acquired a license for the same. However, it was shown that Green Globe Ltd had entered into a licensing agreement with the domain owner, to use the Green Globe marks. Therefore, the WIPO Panelist duly rejected the complaint and labelled it as an attempt to reverse domain name hijack.
GEOGRAPHICAL INDICATION UPDATES
Pakistan to Challenge India’s Basmati GI in EUIPO
Pakistan is all set to rage a battle against India’s claim over its Basmati rice in the European Union (EU). India had filed an application for a geographical indication (GI) tag in the EU in 2018 for basmati rice, which was published in the official EU journal on 11th September 2020. The application is now open for objections from any third-party entity, and is likely to receive an objection from Pakistan, as the grant of the GI will pose a severe blow to Pakistani rice exports and reverse market gains in case India’s GI is registered with the EU. India’s basmati rice is characterised by its long-grain aromatic smell and is grown in the Northern regions of the country.
Authored and compiled by Uma T.S, Shreya Chaddha, & Varun Gopalakrishnan
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