Rubik’s Cube Owners Puzzled after Losing EU Trademark, Snapdeal Joins INTA, Scottish Whisky Wins GI Battle
Rubik’s Cube Owners Puzzled After Losing EU Trademark, Snapdeal Joins INTA, Scottish Whisky Wins GI Battle, Trademark Refused to Vegan Deli, Then Granted to Nestlé, and more brought to you by the Trademark Attorneys at BananaIP (BIP) Counsel.
INDIAN TRADEMARK UPDATES
Snapdeal Joins International Trademark Association
Indian e-commerce marketplace Snapdeal has announced that it has become a member of the International Trademark Association (INTA). The INTA is a global not-for-profit advocacy association, comprising of 7,200 members across 187 countries, primarily, brand owners and professionals, which is dedicated to supporting trademarks and related intellectual property to foster consumer trust, economic growth, and innovation. The group works towards protecting and promoting the rights of trademark owners and supports efforts for the development of trademark law and appropriate legislation furthering this aim. “Snapdeal is committed to collaborating with the right stakeholders to address the issue of trademark counterfeiting. Snapdeal’s association with INTA will allow us to share industry insights and technical know-how in the global fight against those infringing intellectual property rights,” a Snapdeal spokesperson said. This follows Snapdeal’s efforts to counter trademark infringement on its site via its ‘Brand Shield’ and ‘Brand Registry’ programmes, which offer a single point of contact to report potentially infringing products, and allow sellers to register their brands on the Snapdeal, respectively.
INTERNATIONAL TRADEMARK UPDATES
Rubik’s Cube Owners Puzzled After Losing EU Trademark
Rubik’s Brand Ltd, the owner of the brand of the ubiquitous 3D puzzle, has lost its latest bid to regain its EU trademark over the shape of the Rubik’s Cube. While this trademark over the shape had been granted in 1999, the EU’s Intellectual Property Office cancelled the same in 2017. This decision had been based on the ruling of the European Court of Justice in a case brought by German toy maker Simba Toys GmbH, where it was held that EU trademark law did not allow the company to be granted a monopoly on technical solutions or functional characteristics of its product. Rubik’s Brand appealed that decision, moving the case to the EU General Court in Luxembourg, which, however, upheld the decision to pull the trademark. This ruling is appealable one more time. However, for now, this means that the 45-year-old puzzle’s shape alone is not sufficient to protect it from being copied.
Trademark Refused to Vegan Deli, Then Granted to Nestlé
Herbivorous Butcher, a vegan deli and specialty food shop in Minneapolis, is taking on Swiss food processing conglomerate Nestlé and the US Patent and Trademark Office over the trademark “The Vegan Butcher”. The deli, opened in 2016, sells vegan substitute meats and cheese, and has been using the phrase “Vegan Butcher” to market the same. In 2017, the owners, sister-and brother team Aubry and Kale Walch, applied for a trademark for the phrase, but their application was denied, with the USPTO holding that the phrase could not be registered as a trademark because it was “merely descriptive”. However, when Nestlé later applied for the same trademark, seeking to use it to market Sweet Earth Foods, a San Francisco maker of plant-based snacks and meals that it bought in 2017, the USPTO granted the same. Herbivorous Butcher is now challenging the registration of the trademark granted to Nestlé. The owners claim that they are seeking a decision that either allows them to continue using the phrase, or one that keeps the phrase in the public domain for free use in the growing plant-based foods marketplace, which is now worth almost $4.5 billion. The dispute, which began in June, could go on for another year, if a settlement between the parties isn’t reached.
BRAND LICENSING UPDATES
Sony Announces Global Licensing Program for Jumanji Franchise
The Consumer Products division of American entertainment company Sony Pictures has announced a global licensing and merchandising program for the upcoming fantasy adventure film Jumanji: The Next Level. Video game publisher Outright Games, toy companies Funko and Lanard Toys, and licensing companies Bioworld, Fifth Sun, and The Noble Collection, are among those granted licenses to the “Jumanji” brand. Products including replicas of the “Jumanji” board game, character Pop! dolls, an immersive video game and other collectibles, t-shirts, sportswear, and sleepwear are slated to be released to market and celebrate the Jumanji franchise, and will be available worldwide ahead of the premiere of the film.
New Rick and Morty Pet Products to be Launched by CN and SilverPaw
Cartoon Network Enterprises, the global licensing and merchandising arm of the popular American television channel, has partnered with the pet company SilverPaw to create a range of pet products based on the animated science fiction sitcom Rick and Morty. The new collection will boast of exclusive products including dog beds, chew toys, collars, pet apparel, leashes, and treats influenced by the show’s characters. These ‘Rick and Morty’ pet products, ranging from $9.99 to $49.99, will be available across retailers in North America including Hot Topic, FYE, BoxLunch, and SilverPaw, and online. SilverPaw has previously collaborated with pop culture brands like Game of Thrones, Star Wars, and Hello Kitty.
US Pizza Chain Pieology to Set Foot in China
California-based pizza chain Pieology has announced a franchising deal with a Shanghai-based firm led by a group of Stanford University alumni, TZG Partners, to expand its footprint to China. In what it terms as “a major strategic alliance”, Pieology will seek to leverage TZG’s business experience with building and investing in high-growth China-related businesses, in a bid to rapidly expand and establish itself in the Chinese market. The pizza chain has been growing domestically and internationally, with more than 130 restaurants in 22 US states and internationally. Pieology founder and chairman Carl Chang envisions Pieology becoming “a global destination for great fast casual pizza”.
DOMAIN NAME DISPUTE UPDATES
Walmart’s Vudu Claims Cybersquatting over Domain Name Registered Before Vudu Even Existed
Vudu, a streaming video subsidiary of American retail giant Walmart, filed a cybersquatting complaint against the owner of the domain name “vudo.com”. The problem, however, is that the owner had registered the domain name in 1995—nine years before Vudu was even founded. Vudu’s complaint is ludicrous, and was held as such by a World Intellectual Property Organization panel, because it is impossible to prove that the domain name owner had registered the domain name with the intent to target a brand that was, at the time, non-existent. The Uniform Domain Name Dispute Resolution Policy (UDRP), a process established for resolution of domain name disputes, clearly requires that the trademark rights of a complainant must predate the registration of the domain name in dispute. The Panel held accordingly, saying that “at the time of registration the Respondent could not have been attacking a trademark that did not exist and was not in contemplation for years to come”.
The Brexit Party Locks Horns with Anti-Brexit Campaign Group over thebrexitparty.com
Led By Donkeys, an anti-Brexit campaign group, has offered to sell the domain name thebrexitparty.com, which it bought earlier this year, to Nigel Farage, the British politician who leads the Brexit Party. The group has claimed £1m for the domain name, with the selling price rising by £50,000 each day, which the group claims will be donated to an immigrant support charity. The Brexit Party has sent a legal letter to the group asking it to take down the Brexit Party logo from the site, and to transfer the domain name to the Party. While the logos have been removed, the group has refused to transfer the domain name, which it had initially bought to challenge Mr Farage’s party during the European Parliament elections in May.
GEOGRAPHICAL INDICATION UPDATES
Scottish Whisky Wins Battle Against Australian Drinks Maker
The Scotch Whisky Association, the trade organisation that represents the Scotch whisky industry, has won its case against D’Aquino Bros Pty Ltd, an Australian drinks maker that was selling a product labelled “Scotch”, but was actually made in Australia. The Association filed the suit after an investigation by the Australian Broadcasting Company, which found that Australian stores were selling fake imported spirits under the label of “Scotch”. Called ‘Black Scot’ and carrying a “Product of Scotland” claim, the spirit was analysed in an international laboratory and found to lack the “unique chemical compounds” that identify a true Scotch. The Association enforced its international geographical indication over the term “Scotch”, and the Federal Court in Melbourne ruled in its favour. D’Aquino Bros Pty Ltd, which had also been found to be selling Australian-brewed products labelled as ‘tequila’, a Mexican spirit also protected by geographical indication laws, has now ceased distribution and has gone into liquidation.
Authored and compiled by Param Gupta
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