“Indian Trade Mark Statistics for April (Second Week) 2018, Castrol Wins Trade Mark Infringement Suit, Alibaba Sues Cryptocurrency Firm, Madurkathi Bags GI Tag and more” brought to you by the Trade Mark Attorneys at BananaIP (BIP) Counsels.
TRADE MARK QUOTE OF THE WEEK
“Brand is the holistic sum of customers’ experience, composed of visual, tonal and behavioural brand components, many of which are shaped by interaction design.” –Kate Kaplan
INDIAN TRADE MARK STATISTICS
In the last week, the Indian Trade Mark Office have had a mixed week. The total number of the total number of hearing notices issued has tremendously increased by two hundred and seventeen percent (217%). Similarly, the total number of applications disposed through show cause hearings has increased by ninety-two percent (92%). However, the number of applications published in the trade mark journal has decreased by forty-four percent (44%).
Weekly Indian Trade Mark Statistics
|Particulars||Last Week||This Week||Change in %|
|Total Trade Mark Applications Examined by Trade Mark Office||2300||2048||A decrease of 10%|
|Total Applications Disposed through Show Cause Hearings||3420||6558||An increase of 92%|
|Total Applications Published in the Trade Mark Journal||11049||6155||A decrease of 44%|
|Total Registrations Granted||8196||7737||A decrease of 6%|
|Total Hearing Notices Issued||4085||12967||An increase of 217%|
|Total Renewals Notices Issued||1840||2031||An increase of 10%|
Trade Mark Statistics by Office
Total Number of New Applications Received from April 4th to April 11th, 2018
|Sr. No||Jurisdiction||New Applications||Examined||Published||Registered|
Yearly Trade Mark Statistics
Trade Mark Statistics from January 01st, 2018 to April 11th , 2018
- Total Number of Trade Mark Applications Filed – 82568
- Total Number of Trade Mark Applications Examined – 43160
- Total Number of Trade Mark Applications Published – 119978
- Total Number of Trade Mark Applications Registered – 91684
INTERESTING TRADE MARK
The Bunny of the United States
Marlon Bundo or Botus, the Bunny of the United States, is now the subject of two federal trade mark applications. This bunny happens to be the pet of US Vice President Mike Pence’s daughter. Trade mark applications were filed on an ‘intent to use basis’ by the family on March 29th with the USPTO. The applications were filed under classes 09, 16, 21 and 28.
INDIAN TRADE MARK UPDATES
M/S. Castrol Limited & Anr (Plaintiffs) v. M/S. Iqbal Singh Chawla & Anr (Defendants)
Plaintiffs filed the present suit seeking a decree restraining the Defendants from selling, marketing, offering for sale with respect to the industrial oil, engine oil, lubricants, grease under the trade mark ‘LUMAX ACTIVE’ or any other trade mark, which is deceptively similar with the Plaintiffs’ trade mark ‘ACTIV’. The Plaintiffs claims to be the registered proprietor of the trade mark ‘CASTROL’ and stated to have adopted the trade mark ‘ACTIV’ for lubricant oils in the year 1999.
Plaintiffs learned that Defendant was selling 4T oil under the trade mark ‘LUMAX ACTIVE’ which is a blatant infringement of the Plaintiffs’ registered trade mark. It is further contended that the trade dress, shape of bottle, label, lay-out and color scheme adopted by the Defendants is identical to that of the Plaintiffs and thus amounted to an infringement of the trade mark and passing off.
Court opined that when the impugned trade marks are compared, there are no deceptive similarities. However, if the trade marks along with the trade dress are compared, it is clear that the adoption of the mark ACTIVE by the Defendants is clearly dishonest and it is to encash upon the goodwill and reputation of the Plaintiff. Therefore, the Court issued a decree of permanent injunction against the Defendants. Further, the Court also decreed a sum of INR 2,00,000 in favor of the Plaintiff as damages.
INTERNATIONAL TRADE MARK UPDATES
Alibaba Sues Dubai’s Alibabacoin
The Chinese online retail giant, Alibaba Group Holding, has filed a law suit before the US District Court against the Dubai based crypto currency company called Alibabacoin Foundation alleging that the latter has intentionally adopted the mark to confuse the consumers to think its products are affiliated or endorsed by the former. In response, Alibabacoin Foundation’s lawyers stated that the company had no intention to infringe the intellectual property of Alibaba and the demand for it to shut down and restart with another name was neither reasonable nor a proportionate response to the company’s legitimate use of an inherently generic word.
TRADE MARK LICENSING UPDATES
Jimi Hendrix Lifestyle Brand to be Enhanced by Epic Rights
“Authentic Hendrix”, the official lifestyle brand of the legendary rock guitarist has joined forces with Epic Rights and Perryscope Productions to expand its brand and to launch a new authentic Hendrix global retail program. An all-new brand guide featuring latest photographs as well as logos, lyrics, albums and fashion inspired by Hendrix will be offered to retailers, manufacturers and licensees. The brand program is also set to include a wide variety of categories which includes fashion apparel, headwear, footwear, tops, figures, wall art, accessories, jewelry, home décor, digital products, collectibles, etc.
Swizzels Love Hearts Joins Hands with Brand of Brothers
British sweets manufacturer Swizzels has transformed its popular Love Hearts sweets into a unique range of ice lollies. Manufactured by Brand of Brothers under license from Swizzels, the new range of ice lollies have been created using popular Love Hearts flavors including Cherry Lime, Pineapple and Lemon.
GEOGRAPHICAL INDICATION UPDATES
Madurkathi Bags GI Tag
Madurkathi of West Bengal has recently been granted the GI Tag. The application was filed by The West Bengal Khadi & Village Industry Board, Government of West Bengal and facilitated by Patent Information Centre. Madurkathi is used as the raw material for the preparation of the weaving mats. The mats are popular and beneficial for sitting as well as bedding purposes. The non-conducting property and ability to absorb sweat makes the mat a necessary household item in the hot and humid climate of West Bengal. The mats are also used in religious ceremonies.
BANANAIP TIP OF THE WEEK
One may use a registered trade mark of another legally as long as it is used to describe the attributes of the other’s mark or the product or service to which it is applied. The descriptive use of a trade mark by a third party without obtaining the permission of the trade mark owner is exempted from the purview of trade mark infringement.
Author: BIP Trade Mark Attorneys
Led by Sanjeeth Hegde, BIP’s Trade Mark Attorneys are among the leading experts in the field. They work with clients such as PEPS, Dharma Productions, Essilor, Samsung and the IITs with respect to trade mark filing, prosecution, registration, management, licensing, franchising, merchandizing and strategy.
The weekly trade mark news initiative is a part of their pro bono work, and is aimed at spreading trade mark awareness. You are free to share the news with appropriate attribution and backlink to the source.
If you have any questions, you may write to BIP’s Trade Mark Attorneys –firstname.lastname@example.org