Mumbai’s TAJ PALACE acquires image trademark, Offensive trademarks to be protected, KISS singer seeks registration for a hand gesture, Snap Inc loses domain name dispute, Bandar Laddu obtains GI registration and more
Interesting Trademarks, Indian Trademark Updates, International Trademark Updates, Domain Name Disputes, Geographical Indication updates and more brought to you by the Trademark Team of BananaIP Trade Mark News:
Trademark Quote of the Week
“A brand is a living entity- and it is enriched or undermined cumulatively over time, the product of a thousand small genius” — Michael Eisner
TRADEMARK STATS FROM THE INDIAN TRADEMARK OFFICE
|Particulars||Last week||This week||Change in %|
|Total Trademark applications examined by Trademark Office||13402||8447||A decrease of 36.2%|
|Total applications disposed through show cause hearings||624||675||An increase of 8.1%|
|Total applications published in the trademark journal||8218||7293||A decrease of 11%|
|Total registrations granted||7135||5927||A decrease of 16 %|
|Total hearing notices issued||2966||2542||A decrease of 14%|
|Total renewal notices issued||1055||825||A decrease of 21%|
Total number of Applications Examined by the Trademark Office in this year: 2090462
Snooki by Nicole Snooki Polizzi
Nicole Snooki Polizzi, the Jersey Shore reality TV star tried to trademark her nickname ‘Snooki’ in connection with her TV personality and books, but was denied registration on the ground that the USPTO had already granted a registration for a fictional feline, ‘Snooky’ from the book ‘Adventures of Snooky’ from Brian J. Publishing Inc back in 2004. USPTO opined that there will be a likelihood of confusion between ‘Snooky’ and ‘Snooki’.
INDIAN TRADEMARK UPDATES
Mumbai’s Taj Palace acquires image trademark
The 114-year-old Taj Palace in Mumbai becomes the first building in the country to obtain a trademark registration for its architectural design. The iconic hotel with this registration has now joined the elite trademarked properties in the world which include the Empire State Building in New York, the Eiffel Tower in Paris and Sydney Opera House. The Dome of the hotel has long been a triangular point for the Indian Navy to show the way towards the harbor. Indian Hotels Company (IHCL) applied for this trademark to protect the distinctive design of the building. With this registration, nobody will now be able to use the hotel’s images for commercial purposes without obtaining a license.
This is the first attempt that has been made for a registration of an architectural design since the enactment of the Trademark Act, 1999.
INTERNATIONAL TRADEMARK UPDATES
Supreme Court upholds offensive/disparaging trademarks to be protected
The US apex court ruled that a federal trademark banning offensive names is unconstitutional and the “disparagement clause” of the Lanham Act violates the free speech guaranteed by the Constitution under the First Amendment. Earlier, any mark which has been filed for registration could be refused registration by the USPTO on the ground that it consists of “immoral, deceptive, or scandalous matter[s] or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute”. The order was passed in the case of Matal v. Tam, when ‘The Slants’, a rock band based out of Oregon, filed for a trademark to protect the name of their band in 2010, but was refused by the USPTO on the grounds that the name is a racial slur. This decision was challenged by the founder of the band, Simon Tam, and finally, the case reached the US Supreme Court. It is interesting to note that this is not the first time that a trademark has been rejected on the ground of disparagement clause. Earlier a group ‘Dykes on Bikes’ a lesbian motorcycle club was denied a trademark because of its “vulgar” name but was later granted the same.
‘KISS’ singer seeks trademark registration for a hand gesture
Gene Simmons, leading vocalist of the rock band KISS has applied for a trademark on a hand gesture that is used commonly by rock and metal fans the world over. In the application filed with the USPTO on June 9, the hand gesture is described as “a hand gesture with the index and small fingers extended upward and the thumb extended perpendicular.” Simmons states that he first started using the hand gesture known as ‘devil horns’ on November 14, 1974, during a musical tour. Simmons is attempting to secure the mark for “entertainment, namely, live performances by a musical artist; personal appearances by a musical artist.” This claim is all the more surprising as the sign has enjoyed other meanings in different cultures even before 1974. The application seems unlikely that the sign described will meet the requirement of distinctiveness or subsist the dilution. The decision of the USPTO is keenly watched out for in the instant case.
Marvel applies for Marvel HQ Trademark
Marvel Comics, the entertainment company has filed for ‘Marvel HQ’ to be trademarked in USPTO under education and entertainment services.
DOMAIN NAME DISPUTES
Snap Chat loses dispute over the domain name www.geofilters.com
Snap Inc. had filed a suit against a small mobile app developer accusing of cybersquatting for using the domain name www.geofilters.com. The developer registered the domain name in November 2014, a few months after Snap introduced its ‘Geofilter’ photo-editing software. Snap argued that the impugned domain name is not used in a bona fide intention and are instead trying to deceive consumers into associating it with Snapchat. World Intellectual Property Organization (WIPO) arbitration panel ruled that ‘geofilters’ is a descriptive term for a software that adds a filter to a photo based on the location. Further, the panel noted that Snap has not yet trademarked the name ‘Geofilter’. The panel concluded that “Snap has failed to show that the consuming public has come to recognize ‘Geofilter’ as an indicator of the source of the product rather than the product itself,” thus allowing the developer to retain the domain name which has been reserved for their own forthcoming geofiltering app.
GEOGRAPHICAL INDICATION UPDATES
Bandar Laddu obtains GI registration
Bandar Laddu, a sweet dish from Andhra Pradesh has been recently granted GI registration in the food category. The application was made by The Brundavanapura Bandar Laddu Manufacturer’s Welfare Association. GI registry also has accepted a new logo for the laddus. Though Bandar Laddu is famous in Andhra Pradesh, its origin has been traced to Rajput families of Rajasthan, who had migrated to Machalipatnam in AP after the 1857 Sepoy Mutiny. According to an affidavit submitted at the GI registry, 10,000 kg of laddu is being exported annually to U.S., U.A.E., and European countries. It is said that at least 250 families are engaged in making the laddus.
BIP TIP OF THE WEEK
Scandalous/Obscene Trademarks in India
Before finalizing a trademark, the Applicant must ensure that the proposed mark does not contain any scandalous or obscene elements. In case the mark includes any scandalous or obscene elements, then the mark is likely to be objected by the Trademark office. For the purposes of determining obscenity in a mark, the following factors may be taken into consideration:
- a) Whether the mark is capable of setting any moral standards or causing any outrage among identifiable sections of the public?
- b) Whether the mark is capable of undermining religious, family or social values? and
- c) Natures of goods or services. If the goods or services are intended to be used by Children such as toys, games or confectionary, the chances of getting objections from trademark office may be high.
Having said that mark must be assessed objectively and not subjectively to determine whether its registration is likely to offend accepted principles of morality. In case the mark is merely distasteful, offensive or disparaging in nature and is not capable of creating any public outrage, then chances of getting registration may be good.