Design as a Trademark?, Bumblebee Dispute Settled, Kodaikanal Hill Garlic GI and other news

Indian Trademark Statistics for September (First Week) 2018, Trademark Monopoly Can be Over a Class? Smiley Toys to be Launched in India, Monster Energy Loses Opposition Battle, and more brought to you by the Trademark Attorneys at BananaIP (BIP) Counsels.


“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” –Saul Bass


In the last week, the Indian Trademark Office have had a mixed week. The total number of the applications published in the trademark journal has increased by nineteen percent (19%). There has also been a dramatic increase of one hundred and twenty one percent (121%) in the total number of hearing notices issued. However, the number of renewal notices issued have decreased by fifty four percent (54%)

Weekly Indian Trademark Statistics

Particulars Last Week This Week Change in %
Total Trademark Applications Examined by Trademark Office 6911 6836 A decrease of 1%
Total Applications Disposed through Show Cause Hearings 6696 4835 A decrease of 28%
Total Applications Published in the Trademark Journal 4857 5768 An increase of 19%
Total Registrations Granted 6231 6673 An increase of 7%
Total Hearing Notices Issued 5442 12025 An increase of 121%
Total Renewals Notices Issued 1711 779 A decrease of 54%

Trademark Statistics by Office

Total Number of New Applications Received from August 29th to September 5th, 2018

Sr. No Jurisdiction New Applications Examined Published Registered
1 AHMEDABAD 772 415 520 645
2 CHENNAI 1321 576 1388 842
3 DELHI 2272 1220 1427 2209
4 KOLKATA 426 197 342 286
5 MUMBAI 1512 766 1259 2214
Total   6303 3174 4936 6196

Yearly Trademark Statistics

Trademark Statistics from January 01st, 2018 to September 5th, 2018

  • Total Number of Trademark Applications Filed – 209087
  • Total Number of Trademark Applications Examined –  99014
  • Total Number of Trademark Applications Published – 114317
  • Total Number of Trademark Applications Registered 236141


Design as a Trademark?

The Academy of Country Music in the US has filed an application to register a design as a trademark with the USPTO. The mark is described as ‘a 3-dimensional stylized rendering of an award trophy shaped as a cowboy hat on top’. The mark has been filed for entertainment services under class 41. It may be noted that a similar design application had already been filed earlier by the Academy of Country Music and this has been granted registration.


No Monopoly over the Entire Class of Goods

Karnataka Co-Operative Milk Producers Federation Ltd., which is the registered trademark proprietor of the brand ‘NANDINI’ had opposed the trademark registration of the mark NANDHINI DELUXE, an Andhra style restaurant chain based out of Karnataka. On an appeal filed before the Supreme Court by the restaurant against the decisions of IPAB and High Court, the Apex Court held that a trademark proprietor cannot claim monopoly over the entire class of goods particularly when the proprietor is not using the said mark with respect to certain goods falling under the same class. Further, the Court also in its order stated that there is no deceptive similarity between the logos when compared as a whole. The Court, therefore, set aside the decisions of IPAB and High Court, and restored the Trademark Registrar’s order allowing registration in favor of NANDHINI DELUXE.


Hasbro and DC Comics settle Bumblebee dispute

Hasbro Inc. the American toy company has settled the trademark infringement dispute with DC Comics and Warner Bros over the mark ‘Bumblebee’.  Hasbro had filed a suit in 2017 against DC and Warner Bros as they had claimed an autobot toy sold by them would cause consumer confusion with regard to a teenage girl character doll from Hasbro.  The terms of the settlement however have not been disclosed.

Monster Energy Loses Trademark Opposition

Monster Energy Company, the manufacturer of the popular energy drink Monster Energy, has lost the trademark opposition filed against a local pizzeria, Monsta Pizza, based in the UK. Monsta Pizza had applied for the trademark ‘Monsta Pizza’ with the UKIPO in March 2017. Monster Energy Company had filed a trademark opposition, claiming confusion amongst the public over the term Monsta. However, in a major blow to the energy drink company, the opposition has been denied by the IP office which has concluded that no misrepresentation will occur by the use of the trademark. Monster Energy has also been ordered to pay £2100 towards the legal fees of the pizzeria.


Smiley Launches Toys in India

The UK based Smiley Company, the official rights holder of the smiley face symbols has signed an exclusive license agreement with Ultra Toys, a division of Ultra Media & Entertainment to manufacture and retail toys and accessories of about 3000 varieties of popular emoticons. The retail products ranges from toys to cushions to backpacks and gifting accessories. The products will be available across major retail stores, toy stores as well as e-commerce platform.


Kodaikanal Hill Garlic Applied for GI

Kodaikanal Hill garlic, known for its medicinal and storage properties has an extended storage life period of 8 to 11 months unlike other garlic varieties. This is because the cloves of the garlic do not get separated for months. The uniqueness of the product also lies in the specialty of the soil. The Application has been filed in June, 2018 by Department of Biotechnology, Mother Teresa Women’s University and Tamil Nadu State Council for Science and Technology.


Two similar trademarks can be registered if the prior registered trademark’s proprietor consents to the registration of the subsequent trademark.
Author: BIP Trademark Attorneys
BIP’s Trademark 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 trademark filing, prosecution, registration, management, licensing, franchising, merchandizing and strategy.
The weekly trademark news initiative is a part of their pro bono work and is aimed at spreading trademark 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 Trademark Attorneys at [email protected]

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