Clinic plus v. Head & Shoulders, Comparative advertising, Trump Trademarks, INTA study on counterfeit products and piracy & more
This weekly update on Trademarks is brought to you by the Trademark experts of BananaIP (BIP) Counsels.
Trademark quote of the week
“A brand is the set of expectations, memories, stories and relationships that, taken together, account for a consumer’s decision to choose one product or service over another” – Seth Godin
Trademark Stats from the Indian Trademark office (22nd February 2017 to 28th February 2017)
- Total Trademark applications examined by the Trademark Office: 18916
- Total applications disposed through show cause hearings: 1889
- Total applications published in the trademark journal: 15722
- Total registrations granted: 11654
- Total hearing notices issued: 1830
- Total renewal notices issued: 2834
Joginder coolants restrained from using the mark ACTIV
The Delhi High Court passed a permanent injunction against the Delhi based entity Joginder coolants restraining it from using the mark ACTIV or ACTIVE or any other similar marks with respect to Industrial Oils including engine oil and brake oil. In the instant suit, the plaintiff, Castrol Limited alleged that the usage of the mark SUPER ACTIV 4T AUTOPOL and the mark ACTIV by Joginder Coolants amounted to trademark infringement. Castrol Limited is the registered proprietor of the mark ACTIV and claimed that its mark ACTIV is a famous mark with a turnover of over 434.44 crores. Additionally, Castrol alleged that the packaging and labels used by Joginder Coolants were deceptively similar to the packaging of its products. In an ex parte order dated 22nd February 2017, the Delhi High Court found merits in the claims made by Castrol and restrained Joginder coolants from using the mark ACTIV or ACTIVE as well as any labels or packaging that are similar to the packaging of Castrol Limited.
Clinic Plus advertisements do not disparage Head and Shoulders says Bombay High Court
The Bombay High Court on 17th February 2017 rejected a suit filed against Hindustan Unilever (HUL) by Procter & Gamble (P&G) alleging disparagement of its brand – Head & Shoulders. The impugned advertisement according to P&G disparages its brand by showing the Head & Shoulders bottle in a poor light. The actors in the advertisement show the Head & Shoulders bottle and claim that there is more hair fall (“Baal zayada tootte hain”) because of the use of the said brand. In the advertisement the actors further endorse Clinic Plus by stating that the use of Clinic Plus results in hair that is three times stronger (“baalon ko deta hai teen guna zayada mazbooti”). The Court after going through the arguments and documents found that the advertisement falls well within the scope of comparative advertising that permits a manufacturer to compare his / her own product with that of his/ her competitor and calling its product superior than that of the competitor. The Court found that the statements made in the advertisement were merely opinions of the paid protagonist in the advertisement and did not amount to statement of facts so as to invite any disparagement or defamation claims.
Interesting Trademark Filings
Doland Trump’s Trademarks in India
During our search of the trademark office database, we found that the American President Donald Trump has filed the following marks in India:
|Mark||Application Number||Goods/ Services||Status|
|TRUMP||2046018||Class-11: Lighting Fixtures; Kitchen Appliances|
|THE DONALD J. TRUMP SIGNATURE COLLECTION||2033766||Class 14: Precious Metals And Their Alloys|
|THE DONALD J. TRUMP SIGNATURE COLLECTION (Logo)||2033767||Class 14: Precious Metals And Their Alloys|
|TRUMP HOME||1624713||Class 20: Beds, Arm Chair, Furniture|
|TRUMP||2948058||Class 35: Advertisement, Business management|
|6||TRUMP||1419912||Class 36: Real Estate Services|
|TRUMP||1419912||Class 37: Real Estate Development And Construction Of Commercial,Residential And Hotel Property|
|TRUMP||1737869||Class 41: Education, Entertainment services|
|9||TRUMP||1494175||Class 42: Hotels and restaurants|
International Trademark Updates
INTA’s study estimates 4.2 Trillion Dollars harm from Counterfeiting and Piracy
A study commissioned by INTA estimates economic harm of more than four trillion dollars from counterfeiting and piracy by 2022. It also estimates about five million job losses. As per the INTA report, Governments and consumers will be adversely impacted, and strong actions are required to prevent these losses.
Turkey amends its Trademark Law
IP Kat has reported that IP law in Turkey has been amended to bring about substantial changes. Several aspects of the trademark law, from what is protectable and what will be rejected to opposition proceedings and enforcement have been modified. Trademark infringement has been made a criminal offence, and new grounds have been added for Trademark rectification.
Brazil Patent and Trademark Office to standardize and speed up patent and trademark registrations in Brazil
Mondaq has reported that Brazil PTO has taken several steps to standardize and speed up the patent and trademark registration process in Brazil. Some important steps taken by BrPTO include standardization of distinctiveness assessment process, hiring officers to reduce backlog, and initiating speedy processing for defined fields. BrPTO has also built relationships with EPO, JPO and UKIPO in its endeavour to make the IP system in Brazil more efficient.
Using eCommerce IP Complaint System for personal benefit
China’s eCommerce giant Alibaba released a statement announcing that more than two hundred thousand wrongful complaints were made using its IP Complaint System. It submitted that the said complaints were decided in favour of sellers on appeal. The complaint system as per Alibaba is being used by consumers to take advantage of sellers, and squeeze payments out of them. It would be interesting to hear from Alibaba how many requests for takedown were rejected, or not responded to.
On the point of addressing complaints, the experience in India is quite the opposite. eCommerce portals generally do not respond to takedown complaints, and repeated action/follow-up is often necessary. It does not matter if IP is registered or not, the whole affair of takedown is not straight forward and easy in India. Sellers and eCommerce portals rule the game to the detriment of IP owners as it stands today.
Merchandizing Sports Brands
The American Football Club, New England Patriots, has recently filed for a trademark on ‘Blitz For Six.’ The slogan is expected to appear on t-shirts and other merchandize. They had earlier filed several trademark applications for phrases such as – “Ignore The Noise,” “No Days Off,” “We are All Patriots,” “Perfect Season,” etc.
Merchandizing sport related quotes and slogans is a huge revenue churner for clubs in USA, but this has not picked up well in India. Except on a few match occasions, we barely see sports merchandize in India.
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