Harley Davidson, Sound Mark, Delhi High Court, Kamdhenu mark, Counterfeit products, Deceptively similar, Trademark registration tips and more, presented by the Trademark attorneys and experts of BananaIP Counsels, India’s Premier New Age IP Firm.
TRADEMARK QUOTE OF THE WEEK
A good trademark, whether a word mark or symbol, is devoid of fashion or trend, which makes it potentially iconic if it’s seen for long enough in the right places. -Ivan Chermayeff
Trademark Stats from the Indian Trademark office (30th March – 5th April 2017)
Activity at the Trademark Registry has been slow in the past week; In addition to a 50 % decrease in total registrations, there has also been a significant decrease of nearly 66% in the total applications disposed through show cause hearings. A comparison of the stats from the previous week and this week are shown below.
|Last week||This week||Change in %|
Total Trademark applications examined by Trademark Office
||4182||A decrease of 14.64%|
Total applications disposed through show cause hearings
|1431||473||A decrease of 66.9%|
|Total applications published in the trademark journal||5202||4579||A decrease of 11.9%|
|Total registrations granted||17435||8700||
A decrease of 50.1%
|Total hearing notices issued||1078||350||
A decrease of 67.5%
Total number of marks published in trademark journal as on 3rd April 2017
Harley Davidson’s Sound Mark
Harley Davidson first applied for a sound trademark for its engine back in 1990 in an attempt to trademark the sound produced by its motorcycles. The registration was however denied on the ground that the sound produced by Harley’s motorcycles was not any different to the sound produced by other two wheeler vehicles using similar engines.
Apple’s “App Store”
APP STORE is short for Application store and one may think that there can be no protection over such generic terms. However, the tech giant was granted protection for the term APP STORE by the USPTO in 2015. While the word is synonymous with Apple, the term is slowly becoming generic in nature as a number of entities have started using the term.
INDIAN TRADEMARK NEWS
Microsoft introduces new Chatbot AI ‘Ruuh’ for India
Microsoft has released yet another AI Chatbot dubbed Ruuh, exclusively for Indian users. Ruuh, created for entertainment purposes, has interests on music, Bollywood, humor, travel, sports and internet browsing. Microsoft had applied for trademark registration for the mark RUUH before the Indian Trademark Office on 15thMarch, 2017
Delhi HC restrains Platinum Industries from using the mark KAMDHENU
The Delhi High Court recently passed an injunction order against M/s Platinum Ispat industries private limited, Patna from using the marks SUPER KAMDHENU & MAHAN KAMDHENU in relation to TMT Steels. In a trademark infringement and passing off petition filed by Kamdhenu Limited, pioneers in steel and paint industry, the Delhi High Court found that the marks SUPER KAMDHENU & MAHAN KAMDHENU are deceptively similar to the registered mark KAMDHENU. The Patna company is therefore restrained from using, selling, soliciting, exporting, displaying, advertising ‘SUPER KAMDHENU’ & ‘MAHAN KAMDHENU’ in relation to TMT bars and other allied goods which are identical/similar to the mark ‘KAMDHENU’. Additionally, Court has also appointed a local commissioner to seize the materials related to ‘SUPER KAMDHENU’ & “MAHAN KAMDHENU’.
INTERNATIONAL TRADEMARK UPDATES
Trademark Registrations in China reach soaring heights
According to a recent report published in the New Zealand Herald, trademark registrations in China have increased significantly in the recent times. There has always been a misconception surrounding the country that the manufacture of cheap goods by China, ultimately result in Intellectual Property Rights taking a back seat. However, in light of the available statistics, an increased awareness of IP laws would present a great investment opportunity to China from foreign entities. It will be interesting to see how this enhanced IP awareness is going to affect IP enforcement in the territory.
Sale of Counterfeit products to increase drastically by 2022
According to a recent report published by the International Trademark Association and the International Chamber of Commerce, the sales of counterfeit products is all set to increase exorbitantly worldwide with an estimated value of such products reaching $2.3 trillion by 2022. Despite the various measures adopted by governments and businesses worldwide in trying to stop this menace, the production of counterfeit goods has always existed and has only increased with time. It is to be noted that according to the United Nations Office on Drugs and Crime, China and India are the biggest sources of counterfeit medicines which not only pose a serious risk to public health and safety but also lead to great losses of revenue.
Burberry signs $225 million licensing deal with Coty
The renowned British luxury brand, Burberry recently announced that it had signed a deal of $225 million in total with Coty the pioneer in fragrances and cosmetics brand. By licensing its brand, Burberry is looking to benefit from the global distribution network and industrial expertise of Coty.
VP Racing Fuels enters into new trademark license agreement with Maverick Performance products.
The global leader in the field of manufacturing and distribution of unleaded and leaded racing fuel and other related lubricants, VP Fuels recently entered into a trademark licensing agreement with Maverick Performance Products, LLC to manufacture, market and sell its products in U.S., Canada and Mexico. Further, VP Fuels through an announcement introduced a new product by the name of VP FASTLUBE which shall be soon introduced to the quick lube industry.
DOMAIN NAME INFRINGEMENT
Googlee.in is deceptively similar to Google.in says Delhi High Court
The popular web search engine, Google Inc., recently won the favor of the Delhi High Court in an appeal filed by the domain registrant googlee.in. In 2007, the alleged infringer had applied for the domain “googlee.in with the .IN Registry which was surprisingly granted and was further renewed till 2020, which prompted Google to issue a cease and desist notice to the infringer in 2010. When there was no response to the notice, Google initiated proceedings under the INDRP Rules and received a favourable order from the Arbitrator. The matter was later appealed to the Delhi High Court, where the Court upheld the decision of the arbitrator citing that the domain name of the infringer was confusingly similar to Google in addition to the the website being almost identical to that of Google.
BIP TIP OF THE WEEK:
While choosing a trade mark for a business it is important to identify all similar marks that are currently in use in the market by performing a trademark search in the trademark database as well as the common law database (Google and other search engine searches). Once the potential brand names are shortlisted the following questions need to be answered:
- Whether any mark similar to the shortlisted mark is listed in the online database maintained by the Trademark Office or in the common law databases? If yes, then do not proceed with the mark.
- Whether any domain name similar to the shortlisted mark is already registered in the who.is database? If yes, then do not proceed with the mark.
- Whether any similar product or service similar to the shortlisted mark is offered by the company even though such names are not applied for registration? If yes, then do not proceed with the mark.
The whole process may appear to be time consuming but it is worth the effort considering the value of trademarks and the legal tussle that may occur in case of any violations.
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