Interesting Trademarks, Recent Trademark Cases, International Trademark Updates, Government News and Updates, Domain Name Disputes, Geographical Indication updates and more brought to you by the Trademark Team of BananaIP
Trademark Quote of the Week
“Within every brand is a product, but not every product is a brand “
TRADEMARK STATS FROM THE INDIAN TRADEMARK OFFICE
|Change in %
|Total Trademark applications examined by Trademark Office
|An increase of 36.2%
|Total applications disposed of through show cause hearings
|A decrease of 44%
|Total applications published in the trademark journal
|A decrease of 11%
|Total registrations granted
|A decrease of 13 %
|Total hearing notices issued
|An increase of 74%
|Total renewal notices issued
|A decrease of 66%
Total number of Applications Examined by the Trademark Office in this year: 201034
Coconut smell for Stores
Flip Flop Shop, a footwear retail store has been granted a smell mark registration for the coconut aroma that fills up in their stores. The trademark has been registered in the name of FFS Holdings LLC, with the registration number 4113191 under class 35 for services namely ‘Retail store featuring sandals and flip flop sandals, and related accessories, namely, beach balls, insulated bottle and can cover, key chains, decals, tossing disc toys, lip balm, pens and water bottles’. According to the Applicant, the customers associate the smell of the coconut with the store itself.
RECENT TRADEMARK CASES
Cloudtail India successful in trademark infringement against ‘CLOUDTELE’
Cloudtail India Pvt Ltd., the joint venture of Amazon had filed a lawsuit against a telecom technology company, Excel Telesonic for using the name ‘CLOUDTELE’ which is deceptively similar to the former’s registered trademark, ‘CLOUDTAIL’. The Applicant had mentioned in the lawsuit that its brand, ‘CLOUDTAIL’ is a well-known mark and the use of the mark, ‘CLOUDTELE’ by the defendants amounted to a trademark infringement. The Applicant also had sought for either destruction of the domain name ‘www.cloudtele.com’ or for a transfer to the Applicant. The Delhi HC has passed an order in favor of the Applicant and issued a permanent injunction against the defendants for the use of the mark ‘CLOUDTELE’. The Defendants have agreed to stop using the deceptively similar name within the next four months.
INTERNATIONAL TRADEMARK UPDATES
‘Nepal Coffee’ applied for trademark
‘Nepal Coffee’ has been applied as a collective mark in seven different countries namely, South Korea, Singapore, Japan, Norway, Switzerland, New Zealand and Hong Kong. The application has been filed by Nepal Coffee Producer’s Association (NCPA). The application had previously also been filed in the USA as well as Australia, but in both the countries, the application has been abandoned. European Union (EU) is the only place where the mark has been registered. The mark has been applied for registration owing to the growing popularity of the coffee and the registration of the mark is expected to boost the sales of the same in the international market.
Ivanka Trump granted trademarks in China
Ivanka Trump, daughter of US President Donald Trump, has been granted four provisional trademarks in China under Ivanka Trump LLC, a company owned by her. With the present applications, Ivanka Trump LLC holds a total of 24 trademarks that has been granted provisional or full approval, plus 43 pending marks and three invalid marks under real estate and financial services, construction, furniture, carpets, and alcohol except for beer.
GOVERNMENT NEWS AND UPDATES
MoU signed between India and Japan
A biennial plan for 2017-2019 has been signed between CGPDTM and the Japanese Patent Office on 24th May 2017 in Mumbai. The plan seeks to “exchange of information on search and examination practices, organizing awareness in both countries to facilitate promotion, creation and commercialization of IP Assets besides training courses for newly recruited examiners, other officials, persons engaged in IP-related matters in public organization, academic institutions, R & D Institutions, Startups, MSMEs, and newly registered patent agents, etc”. The Mou was signed by Shri O.P. Gupta, Controller General of Patents, Designs & Trade Marks and Mr. Masayuki Koyanagi, Deputy Commissioner of Japan Patent Office
DOMAIN NAME DISPUTES
DIPP seeking cancellation of the registered domain name www.startupindia.in
National Internet Exchange of India (NIXI), as per the request of Department of Industrial Policy and Promotion (DIPP), is seeking cancellation of a registered domain name, www.startupindia.in owned by a Delhi-based entrepreneur citing its similarity with the Prime Minister Narendra Modi’ Startup India Campaign official website www.startupindia.gov.in. Interestingly, the entrepreneur who runs an advisory service for tech entrepreneurs under the name ‘Startup India Advisory Pvt Ltd’ has registered the domain name in 2014, two years before the Government’s Startup India Scheme was announced. www.startupIndia.in has now put up a disclaimer to say that it has no connection with the Startup India campaign by the Government.
GEOGRAPHICAL INDICATION UPDATES
Nellore’s Udayagiri Wooden cutlery obtains GI registration
Nellore district obtains the 2nd GI registration for their delicate craft, Udayagiri wooden cutlery, after obtaining GI for Venkatagiri Saris in 2009. The Andhra Pradesh (AP) Technology Development and Promotion Centre and AP Handicrafts Development Corporation had jointly applied for the GI registration on behalf of the craftsmen in March 2015. The craft of making wooden cutlery is said to be originated during the time of the Quli Qutub Shah kings. The cutlery is known for its intricate carvings and the soft wood and the same is said to trace its influence to Persian motifs and forms. The cutleries are mostly sold as gifting and table decorating items.
BIP TIP OF THE WEEK
Phonetic similarity in trademarks
Mere interchange of the letters may not be sufficient to overcome trademark risks from existing rights holders. Before finalizing a brand, it is recommended to conduct a search on the following databases to identify potentially conflicting marks:
- Online database maintained by the Trademark Office;
- Common Law databases
- Well-known mark list
In case the selected mark is similar to an already existing mark, it is recommended to avoid using such marks rather than finding workarounds to overcome any objections.