Trademark Stats, Interesting Trademarks, Indian Trademark News, recent trademark Cases, trademark Branding, Licensing, Domain Name Disputes, Trademark 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
“The Ideal trademark is one that is pushed to its utmost limits in terms of abstraction and ambiguity, yet is still readable. Trademarks are usually metaphors of one kind or another. And are, in a certain sense, thinking made visible”
Trademark Stats from the Indian Trademark office (5th April-10th April)
The Trademark Office has been a little slow this week considering there has been an overall decrease in the number of applications that has been examined by the Registry. The statistics can be seen below:
|Change in %
|Total Trademark applications examined by Trademark Office
|A decrease of 36%
|Total applications disposed through show cause hearings
|A decrease of 67.8%
|Total applications published in the trademark journal
|An increase of 10.7%
|Total registrations granted
|A decrease of 76.2%
|Total hearing notices issued
|An increase of 84.2%
|Total renewal notices issued
|A decrease of 53.6%
Total number of marks published in trademark journal
|Name of Office
|INTERNATIONAL REGISTRATION DIVISION
|Total Trademarks published in Journal
- Michael Buffer – Let’s get ready to rumble
Michael Buffer, the sports announcer has trademarked the phrase ‘Let’s get ready to rumble‘. It was granted registration in 1998 in class 21 and class 25. The phrase has been used by him since the 1980’s on a number of occasions during the commentary and has become synonymous to boxing.
- Usain Bolt-Lightning Bolt Pose
The famous sprinter from Jamaica, has been granted registration for his pose which is commonly known as the lightning pose, made by him after winning a race. The trademark was granted in 2012 for class 18.
Indian Trademark News
- Delhi High Court’s decision favours Delhi Public School
An appeal was filed before the Division bench of HC of New Delhi by DPS World Foundation against the single-bench HC decision dated 18.04.2016 restraining Defendants from using the mark ‘DPS’ as it amounts to infringement and passing off the registered trademark of the Delhi Public School Society.
Court upheld the HC Single-bench decision restraining the use of the registered trade mark ‘DPS’ in any manner, however, allowed the Foundation formed by alumni of Delhi Public School to adopt the trade mark including the words ‘Delhi’ ‘Public’ ‘School’.
- National Stock Exchange’s (NSE) theme song gets sound mark registration
Trademarks Registry, Mumbai grants sound mark registration for the theme song of NSE which was applied in the year 2011. Other key sound marks registered in India are: ICICI Bank – (Corporate jingle); Britannia Industries (Four note bell sound); Cisco – (Tune heard on logging in to the conferencing service Web Ex); Yahoo – (Human voice yodeling Yahoo); – Nokia – (Guitar notes on switching on the device).
The new Trademark Rules, 2017 have a hassle free procedure currently for a sound mark registration which will encourage more entrepreneurs and companies to step forward and protect their sound marks.
- Trademark registration process speeds up three fold in India
India’s Controller General of Patents, Designs & Trade Marks has granted registration to 2.11 lakh trademarks in the last 11 months compared to just 65,045 registrations in the whole of the previous year. Staff strength being increased, a total of 5.1 lakhs applications were examined compared to the 2.67 lakhs examined in the previous year. The amount of time taken to issue an examination report has also come down to one month from about a period of 13 months.
Recent Decisions on Trademarks
- Rubiks Brand Ltd & Anr vs. Mahesh Vaman Manjrekar & Ors
Rubik’s Brand, who holds the exclusive right including trademark registration in several international jurisdictions over the use of the Rubik’s has filed a suit for passing-off in the Bombay High Court against a Marathi film maker, Mahesh Vaman, for his upcoming film titled ‘Rubik’s Cube’. Prima facie case was made out and the Court passed an ad-interim injunction restraining Defendants from continuing to work on any film or other material bearing the name or title Rubik’s Cube or the word Rubik in the title.
International Trademark updates
- Zimbabwe incorporates Madrid Trademark Protocol
Zimbabwe has recently ratified to the Madrid Trademark Protocol, thus making it easier for foreign entities to file trademark application in the country. The change was made by making an amendment to the Trademark Act (Chapter 26:04), which gave effect to the country being part of the Protocol. Zimbabwe had been a member country of the Madrid Agreement since 2014, but had not ratified the protocol.
- AvA Airways trademark infringed
Ava Airways, an airline company incorporated in the United States has send a cease and desist notice to ‘Ava Air SAS’, a Martinique company to stop using their trademarks in any form. The American airlines has been using the trademarks Ava Air, Ava Airways “Curaçao,” Ava Airways “St. Maarten” and ‘Ava’ in relation to their airlines. The company sent the notice after realizing that their trademark was used by ‘AVA Air SAS of Martinique’s’ in relation to aviation amongst other business ventures.
- ‘Tick Different’-Watch company ‘Swatch’ in trouble
Technology giant, Apple has filed a case against Swatch, a Swiss watch manufacturing company for using the phrase ‘Tick Different’ on some of its watch models. The I-Phone makers allege that the term has been used by them since 1990’s when it started by way of ad campaigns. It is interesting to note that despite these claims, the trademark for ‘Tick Different’ has been filed by the Swiss watchmakers in US back in 2015 and has been granted in Switzerland.
- NORML ISU wins against Iowa State University
Recently, the US Court of Appeals for the Eighth Circuit ruled in favour of National Organization for the Reform of Marijuana Laws (NORML ISU), a student organization of the Iowa State University(ISU) to continue using the university’s trademark and the marijuana leaf design on its t-shirt and other products to promote the Marijuana Laws. ISU had earlier rescinded its permission from using the university’s trademark by NORML ISU because of the fear that the marijuana leaf design on the t-shirts promoted the legalization of marijuana. But the court upheld the decision of the district court, saying that ISU’s trademark licensing practice of withdrawing the license specifically based on the NORML ISU pro-marijuana views was discriminatory in nature and violated their First Amendment Rights, and thus they are free to use the design.
- BCBG to partner with Global Brand Group
The fashion brand BCBG is all set to go into a trademark licensing agreement with Global Brand Group(GBG) to reorganize its business. The apparel company moved to the US bankruptcy Court to approve of the agreement between the two companies. The agreement will provide GBG the goodwill to use BCBG’s marks for the manufacture, marketing and distribution of apparels, footwear as well as home accessories. It also provides that royalties will be paid to BCBG on sale of its own products. Apparently the licensing agreement came into picture in order to save BCBG from its current financial crisis.
Domain Name Disputes
- Bloomberg loses Uniform Rapid Suspension on Bloomberg.site
The financial, software, data and media giant, Bloomberg L.P. recently lost a Uniform Rapid Suspension (URS) against an alleged infringing domain name ‘bloomberg.site’. The domain name has been registered by a Chinese citizen who did not answer the URS. The Examiner held that even though Bloomberg has a registration in US in the name of BLOOMBERG and the alleged infringing domain name is confusing similar, the complaint by Bloomberg failed to show that the alleged infringer had no legitimate interest in the domain name. These three elements of an URS are to be demonstrated to make a case for such suspension.
BANANAIP’S TRADE MARK TIP OF THE WEEK
Filmmakers ought to be careful while freely adopting a registered/popular trademark name and use at their will in their movies including the title of the movie as it can be sought as a trademark infringement or passing off. Hence, it is always advised to get a prior license from the registered trademark owner before adopting the name in the movies.
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