Pink Color Trade Mark, Pest Control Case, India Licensing Expo, Booking.com’s trade mark registration and more
“Indian Trade Mark Statistics for August, 2017 (Second Week), Pink Realty Inc files trade mark for the Pink Color, Costco to pay 19 million dollars for trade mark infringement, Booking.com obtains trade mark registration, India Licensing Expo 2017 in Mumbai, Bangladesh’s Hilsa fish gets GI registration, and more,” brought to you by Trade Mark Attorneys at BananaIP (BIP) Counsels.
TRADE MARK QUOTE OF THE WEEK
“A brand is a promise. A good brand is a promise kept” – Muthar Kent
INDIAN TRADE MARK STATISTICS
The productivity of the Indian Trade Mark Office has been incredibly low compared to the previous week’s status. The total number of applications examined decreased by seven percent (7%). The total number of applications disposed through hearings decreased by forty-one percent (41%). The number of registrations granted also have decreased by thirty-eight percent (38%).
|Particulars||Last week||This week||Change in %|
|Total Trademark applications examined by Trademark Office||7092||6570||A decrease of 7%|
|Total applications disposed through show cause hearings||806||474||A decrease of 41 %|
|Total applications published in the trademark journal||7991||7469||A decrease of 6 %|
|Total registrations granted||7684||4689||A decrease of 38 %|
|Total hearing notices issued||1926||1792||A decrease of 6 %|
|Total renewal notices issued||3567||2184||A decrease of 38 %|
Total number of New applications received
|Sl.No.||Name of Office||No. of Applications|
Total Trade Mark Applications received – 4786
Trademark Statistics from 01.01.2017 t0 16.08.2017
|Sr. No||Jurisdiction||New Applications||Examined||Published||Registered|
INTERESTING TRADE MARKS
The Pink Trademark
Pink Realty Inc, a real estate company in Colorado, USA, filed a federal trademark application for the color pink. The application covers a variety of real estate services under Class 36, including ‘real-estate agencies’ and ‘real-estate brokerage’ with Application number 87540547. The applicant has claimed in the application to be using the mark since 2009.
INDIAN TRADE MARK UPDATES
Pest Control Trade Mark Decision
Pest Control (India), the largest pest management company, filed a trade mark infringement suit before the Delhi High Court for restraining Pest Control Innovative from infringing its trademark, PCI, passing off of the mark, and for rendition of accounts of profits and damages to the tune of Rs.20, 01,000. The plaintiff in the case offers pest management services under its trade mark ‘PCI’ registered in 1984. In June 2013, it came to the knowledge of the Plaintiff that the Defendant was using and providing services under an identical trade mark ‘PCI’. A legal notice was immediately sent to the Defendant for which a reply was sent denying all the allegations.
The plaintiff argued in the case that the Defendant was known as ‘Dazzle Unlimited Services and in 2012, the name was changed to ‘Pest Control Innovative to intentionally ride on the goodwill of the Plaintiff. On hearing the arguments and perusing the documentary evidence, the Court held that the Defendant’s adoption of the trademark of the Plaintiff is fraudulent and has caused injury, loss, and damage to its name, business, goodwill, and reputation. The court issued a permanent injunction against the Defendant from using the Plaintiff’s trademark ‘PCI’ and from selling, offering, providing, advertising, and/or directly or indirectly dealing in pest control and pest management services or other services under the trademark ‘PCI’ and trade name/trade style “Pest Control Innovative” or any other deceptively similar trademark with that of the plaintiff’s. The Court also awarded a sum of Rs. 15 Lakhs as damages.
INTERNATIONAL TRADE MARK UPDATES
Costco to pay 19 Million dollars to Tiffany & Co.
Tiffany & Co, an American luxury jeweler had filed a suit against Costco Wholesale Corporation, a wholesale giant alleging trademark infringement, counterfeiting, and deceptive business practices for selling engagement rings labeled ‘Tiffany’. The Court has restrained Costco from selling anything marked as a ‘Tiffany’ product without using an identifier such as ‘style’, ‘setting’, or ‘set’. The wholesale giant has also been ordered to pay damages amounting to $11.1 million plus interest in addition to $ 8.25 million as punitive damages. Costco is planning to file an appeal against the decision.
Booking.com gets trademark registration
In a surprising decision, a Virginia Federal Judge ruled that Booking.com, the online hotel reservation service is entitled to trademark protection. This decision is against the repeated precedence of the Federal Circuit that adding a Top Level Domain (TLD) to a generic term does not make it any less generic. The Court opined that although the word ‘booking’ is generic, adding the TLD ‘.com’ has made the mark descriptive and is entitled to trademark protection as the mark ‘Booking.com’ had acquired adequate secondary meaning to be registered as a trademark for hotel reservation services.
TRADE MARK LICENSING UPDATES
India Licensing Expo 2017 in Mumbai
The India Licensing Expo (ILE), India’s first business-to-business brand licensing show is all set to start on August 20 and 21 in Sahara Star in Mumbai. Participation will include over 100 global and domestic brands for the retail industry. The show is organized by an exclusive licensing media company, License India and is supported by Licensing Industry Merchandisers’ Association (LIMA), Indo-French Chamber of Commerce and Industry (IFCCI) and Sports Goods Foundation of India. The show sponsors are Viacom 18, Orian Installations, Dream Theatre and Bradford License India. Viacom 18, Fashion TV, Marie Claire, Universal Music, Mondo TV, JCB, Polaroid, NBA, Sesame Street, Authentic Brands Group, and Green Gold Animation, are among a few brands participating at the first ever licensing show to be held in the country.
GEOGRAPHICAL INDICATION UPDATES
Bangladeshi’s famous HILSA fish gets Geographical Indication (GI) registration.
Hilsa hailed as the “Queen of fish” from Bangladesh has acquired Geographical Indication (GI) registration. The fish is especially known for its unique aroma. Around 4,50,000 people in Bangladesh are directly involved in catching Hilsa, which is also the national fish of the Country. Bangladesh supplies around 70 percent of Hilsa to the market, making it the largest supplier of this fish.
BIP TIP OF THE WEEK
Descriptive Marks and Trade Mark Registration
Descriptive marks are normally not registrable as trade marks unless they acquire distinctiveness or secondary meaning. If you choose a descriptive mark that describes your business, you must put efforts in building association between your company and consumers with respect to the mark. Extensive advertising and promotion can go a long way in achieving acquired distinctiveness for registration.
It is advisable to launch the mark first, and file for registration when you have sufficient evidence to prove that consumers recognize the trade mark as yours.
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 IIT, Bombay, 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 – [email protected].