Weekly Trademark News: Flipkart Wins a Domain Infringement Case, Lacoste Loses a Bite of its Crocodile, Jungle Book Activity Books Coming, Mizo Banana GI, and Other News
Indian Trademark Statistics for March (First Week), Taylor Swift and her Bizarre Trademarks, McDonald’s Loses to Supermac, Flipkart Fights its Domain Squatter and more, brought to you by the Trademark Attorneys at BananaIP (BIP) Counsels.
TRADEMARK QUOTE OF THE WEEK
“Representations that do not make sense are the best Trade Marks” – Dr. Kalyan C. Kankanala
INDIAN TRADEMARK STATISTICS
In the last week, the Indian Trademark Office has had a very slow week. The total number of applications published in the trademark journal has decreased by eighteen percent (18%). Similarly, the total number of registrations granted has decreased by forty Three percent (43%) and the total hearing notices issued has also decreased by thirty six percent (36%).
Weekly Indian Trademark Statistics
|Last Week||This Week|
Change in %
Total Trademark Applications Examined by Trademark Office
|5060||A decrease of 37.2%|
Total Applications Disposed through Show Cause Hearings
|7606||4782||A decrease of 37%|
|Total Applications Published in the Trademark Journal||9328||7631|
A decrease of 18%
Total Registrations Granted
|9239||5231||A decrease of 43%|
|Total Hearing Notices Issued||10210||6494|
A decrease of 36%
|Total Renewals Notices Issued||2190||1456|
A decrease of 33.5%
Trademark Statistics by Office
Total Number of New Applications Received from February 28th to March 06th, 2019
|Sr. No||Jurisdiction||New Applications||Examined||Published||Registered|
Yearly Trademark Statistics
Trademark Statistics from January 01st, 2019 to March 06th, 2019
- Total Number of Trademark Applications Filed – 62149
- Total Number of Trademark Applications Examined – 32092
- Total Number of Trademark Applications Published – 26665
- Total Number of Trademark Applications Registered – 49260
INTERESTING BRAND NEWS
Taylor Swift and her Bizarre Trademarks
Taylor Swift, the celebrated American singer had trademarked phrases from her album “1989” such as ‘this sick beat’, ‘party like it’s 1989’, ‘cause we never go out of style’, ‘could show you incredible things’ and ‘nice to meet you, where you been?’. The singer also didn’t hesitate to file a trademark application for ownership of the word ‘1989’, however the trademark would only protect the stylized 1989 logo and luckily not for the word itself.
INDIAN TRADEMARK UPDATES
Flipkart Fights its Domain Squatter
Flipkart Internet Private Limited, the e-commerce major, filed for a permanent injunction to restrain www.flipkartwinners.com’s proprietors from using the trademark Flipkart or any other deceptively similar name with respect to domain names, lucky draw contest or in any other manner infringe the registered trademarks of Flipkart. In September 2018, Flipkart came across the domain name www.flipkartwinners.com conducting fake lucky draw contests through the impugned website. The e-commerce player stated that such infringing websites are being used to give a false representation to the public that such websites originate from and/or are associated with Flipkart. It was also submitted that the websites are anonymous in nature and the information provided in the public domain regarding the owner of the website is incomplete and incorrect and therefore it is practically impossible to bring the owners of the website before the Court.
In view of the above, the Court opined that owners of the websites have no real prospect in defending the claim, as they have neither appeared before the Court nor filed their written statement. Therefore, the Court passed a decree in favor of Flipkart.
INTERNATIONAL TRADEMARK UPDATES
Lacoste Loses a Crocodile Case
Lacoste, a French fashion brand had filed a trademark infringement suit before the District Court of The Hague, Netherlands against the Dutch Retailer Hema for selling children’s clothes with decorative images of a crocodile on it. The French iconic brand claims that Hema’s use of crocodile design on clothes infringes their well-known registered trademarks and will result in a likelihood of confusion among the public. The Court, however, disagreed with Lacoste stating that there was no infringement in the present matter as the repetitive design of the crocodile pattern on clothing is perceived as a decoration and not as a source of origin. Key points in the Court’s decisions were as follows:
- It’s a common practice for children’s clothing to feature animal decorations;
- The clothing was only sold on Hema’s online stores which featured only Hema-branded products;
- Each season, Hema offered a collection of children’s underwear featuring different animal decorations (for eg. Sharks)
The Court, therefore, held that there is no case of infringement in Hema using the decorative image of a crocodile in their clothing.
McDonald’s Loses to Supermac
Supermac, an Irish fast food restaurant chain filed a request before the European Union Intellectual Property Office (EUIPO) to cancel McDonald’s, the American fast food giant’s trademark ‘Big Mac’ used in Europe since 1998. Supermac argued that the term ‘Big Mac’ was not put into genuine use for a continuous period of over five years. The EUIPO found that the evidence submitted by McDonald’s did not qualify as genuine use for the goods and services for which the trademark registration was obtained. Therefore, an order was passed to cancel the trademark registration of the mark ‘Big Mac’ in Europe.
BRAND LICENSING UPDATES
Jungle Book Activity Books Coming!
DQ Entertainment, the producer and global rights owner of the most popular TV animated series, The Jungle Book, has signed a licensing deal with Aadarsh Pvt Ltd, publisher of various children’s books and the creator of animated series such as Purple Turtle, Colour Fairies and Magic Busterz. Under the licensing deal, Aadarsh will publish a new line of coloring and activity books featuring the Jungle Book characters such as Mowgli, Baloo, and Bagheera. The books aimed at children aged 3 to 7 will be launched soon in South Asian countries including India, Pakistan, Bhutan, Bangladesh, Nepal, Sri Lanka, and the Maldives.
GEOGRAPHICAL INDICATION UPDATES
Mizo Banana GI
Banana being one of the important fruit crops of Mizoram, is home to various wild and edible banana varieties. The banana of Mizoram is said to be the favorite of the Indian Army and huge amounts are procured by the Army every year. Mizo Bananas (Long Cavendish), one among their wide variety is unique in shape, size and taste. The Bananas are also organic by default. The application was filed by North Eastern Regional Agricultural Marketing Corporation Limited (NERAMAC) in December 2018.
BANANAIP TIP OF THE WEEK
If you are particular that you want to use a common or descriptive term for a trademark, it would make sense to file a logo trademark application rather than a word trademark as the words will not a play a significant factor in getting the logo mark approved.
Author: BIP Trademark Attorneys
Led by Sanjeeth Hegde, BIP’s Trademark Attorneys are among the leading experts in the field. They work on trademark filing, prosecution, management, licensing, franchising, merchandizing, litigation, and strategy for clients such as PEPS, Yash Raj Films, Dharma Productions, Essilor, Samsung and the IITs.
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]