PepsiCo loses ‘Mountain Dew’ to packaged drinking water maker MagFast, Trouble for Sony’s PS5 launch in India, Amazon warns Echelon Fitness over new ‘Prime’ bike and more brought to you by the Trademark Attorneys at BananaIP (BIP) Counsel.
INDIAN TRADEMARK UPDATES
Amul Blocks Fraudulent Use of the Brand Online
In a recent decision by the Delhi High Court, Gujarat Co-Operative Milk Marketing Federation Ltd. (“GCMMF”), the proprietor of India’s famous dairy brand ‘Amul’, obtained favourable orders against various parties that attempted to use the Amul trademark fradulently. The case was filed after several complaints were received about websites that incorporated the Amul name and logos in their domain names and on their websites, and duped customers into depositing money, in exchange for offering jobs, dealerships and distributorships from GCMMF.
GCMMF responded by filing a complaint with the Cybercrime Cell, and also filed a trademark infringement suit before the Delhi High Court. The Court passed a blanket order restraining the registrars of such domains from making any further sale or registration of any domain names featuring the Amul trademark. The order also called for access to these infringing websites to be blocked.
Citation: I.A. 7456/2020 in CS(COMM) 350/2020
PepsiCo Loses ‘Mountain Dew’ to Packaged Drinking Water Maker MagFast
In a recent decision by the Hyderabad City Civil Court, MagFast Beverages, a Hyderabad based beverage manufacturer, has secured a favourable order against American food and beverage giant PepsiCo, allowing MagFast to use the ‘Mountain Dew’ trademark in relation to its packaged drinking water. In the year 2000, MagFast Beverages launched its own packaged drinking water under the brand ‘Mountain Dew’. Subsequently, PepsiCo introduced its soft drink under the same name in 2003, and went on to file a suit before the Delhi High Court against MagFast beverages, alleging infringement of PepsiCo’s ‘Mountain Dew’ trademark. After an application was made by MagFast to the Supreme Court, the case was transferred to the Hyderabad City Civil Court, which eventually held that PepsiCo was not entitled to use the ‘Mountain Dew’ trademark in India, as MagFast Beverages was the prior user of the mark. PepsiCo, however, claims to be the registered proprietor of the mark in India, and intends to appeal the order of the Hyderabad City Civil Court.
Citation: Syed Ghaziuddin vs Pepsico Inc: 2005 (30) PTC 448 IPAB]
Trouble for Sony’s PS5 Launch in India
Technology giant Sony has recently encountered hurdles in launching its latest gaming console, the Playstation 5 (“PS5”), in India. With the worldwide launch date nearing, the launch date for the Playstation 5 in India has been delayed, due to an earlier trademark filing for the word PS5. The application has been filed in 2019 by a Delhi resident named Hitesh Aswani, which has subsequently been opposed by Sony. Sony has also filed for the protection of PS5 word and logo mark earlier this year in February, which intriguingly has been opposed by Mr. Hitesh as well. As of now the opposition has been filed only for the word mark, since the logo mark is yet in the hearing stage. It will be interesting to see what Sony’s next steps for its product launch in India will be given the current status of its trademark applications.
INTERNATIONAL TRADEMARK UPDATES
Uncle Ben’s Trademark Revamp in the Wake of Black Lives Matter Movement
US based food manufacturer Mars Food, the company behind the famous rice brand “Uncle Ben’s”, has decided to rebrand its original logo after facing stereotyping accusations in the wake of the Black Lives Matter movement that took place earlier this year. The original logo, which has been in use since the year 1946, featured the picture of an old African-American man alongside the ‘Uncle Ben’s mark. However, due to certain inequities and stereotypical inferences that could be made from the logo, the company has decided to change it, and will now provide the same products under its new mark, ‘Ben’s Original’. The new logo will be rolled out to the public from 2021 onwards.
E-Cigarette Giant Smoore Secures Victory in Trademark Infringement Suit
Shenzhen Smoore Technology, the Chinese manufacturer of the famous e-cigarette brand ‘Vaporesso’, has recently obtained a victory in a trademark infringement suit over 100 sellers. The order was passed against entities that produced counterfeit goods, by misappropriating and passing off the goods under the Vaporesso trademark. The suit was filed by Smoore in October in the New York Federal Court, as a part of its large-scale anti-counterfeiting program in the United States. All the counterfeiting parties were found to be infringing on Smoore’s trademark by offering goods using the Vaporesso trademark on various platforms. The Court imposed penalty of USD 50,000 per infringer, and also transferred some of the frozen assets of the defaulting parties, which totally amounted to a USD 5.4 Million in Smoore’s favour.
Amazon Warns Echelon Fitness Over New ‘Prime’ Bike
Echelon Fitness, a US based fitness equipment manufacturer was recently instructed by Amazon to stop offering one of its products for sale on the Amazon marketplace. The product in question was Echelon’s new ‘EX-Prime Smart Connect’ exercise bike, which was marketed as being developed “in collaboration with Amazon”. The use of Amazon’s brand name in the marketing of the product, and the significantly lower $500 price of the bike, led to a fall in the share price of certain competitors of Echelon Fitness, as traders anticipated Amazon’s foray into the home exercise industry. Amazon issued a notice to Echelon Fitness, to remove the goods and re-brand them without the Amazon name, and also promptly issued a press release stating that there is no association whatsoever between the brands.
BRAND LICENSING UPDATES
Minions Come to Life Through Reebok
American footwear and clothing company Reebok has partnered with Illumination and Universal Brand Development, its licensing partner, and has unveiled the new footwear collection, “Minions: The Rise of Gru”. The collection is inspired by the hit franchise ‘Despicable Me’ and ‘Minions’ and will incorporate characters and colours which reflect the essence of the cute, cuddly yellow creatures along with the evil mind of Gru. The collection will be available from 1st October at Reebok stores and on e-commerce platforms like shop4reebok.com, TataCliq, Veg Nonveg, and Superkicks India.
Wow Collaboration with Warner Bros
The Justice League of America is always there to protect you, the form may however differ. WOW Skin Science one of the fastest-growing skin care brands in India has partnered with Warner Bros to develop a new line of personal and healthcare products WOW x Justice League dedicated to children. Wow will have the licensing rights for a period of two years under which they will have access to a number of characters from the hit comic series. The first line of products will include the popular characters such as Superman, Batman, Flash, Aquaman, and Wonder Woman on Body Lotions and WOW’s signature Tip-To-Toe wash. Wow also plans on launching a ‘Justice League’ themed product range for adults as well.
DOMAIN NAME DISPUTE UPDATES
Saudi Aramco Wins Domain Name Dispute Against Deceased Business-Owner
Saudi Arabian oil giant, Saudi Aramco, has won a domain name dispute in an unusual case to say the least. Saudi Aramco recently launched a new brand ‘Orizon’ and filed the trademarks for the same as well. In furtherance of the new brand, Saudi Aramco also intended to purchase and register the www.Orizon.com domain name. The impugned domain name, however, was registered in 1997 by an entity ‘Orizon Multimedia Inc.’, which used the domain to conduct business, until the business eventually shut down. It was also found out that the owner of the business was deceased, and so no purchase of the domain name could be made. In response, Saudi Aramco filed a cybersquatting complaint under the Uniform Dispute Resolution Policy (UDRP), in order to appropriate the name to itself. The World Intellectual Property Organization (WIPO) Panel ruled that this was not a case of cybersquatting, as the domain name was initially registered in good faith. Ultimately, the panel granted the domain to Saudi Aramco, observing that no party would be burdened by such registration, as the previous business was shut down, and the owner thereof was deceased.
GEOGRAPHICAL INDICATION UPDATES
Manipur’s Tamenglong Orange Soon to get GI Tags
Manipur is all set to put another Geographical Indication (GI) in its kitty after the successful registration of its black rice. The GI Registry has recently advertised in its journal the Manipur’s Tamenglong Orange, filed by the Department of Horticulture & Soil Conservation, Government of Manipur. Tamenglong Orange is a species of mandarin group and is grown in the Tamenglong district. The oranges are known for their well-blended sweetness and acidic taste. The GI will proceed towards registration if no opposition is filed against it.
Authored and compiled by Uma T.S, Shreya Chaddha, & Varun Gopalakrishnan
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