Akar v. Akash, Hyderabadi Biryani Geographical Indication (GI), Kit Kat chocolate shape mark, Parallel Imports and Trademark Infringement, Disney merchandize, Trademark tips and more

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Akar v. Akash, Hyderabadi Biryani Geographical Indication (GI), Kit Kat chocolate shape mark, Parallel Imports and Trademark Infringement, Disney merchandize, 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

“Representations that do not make sense are the best Trade Marks.”  Dr. Kalyan C. Kankanala, Renowned IP Attorney, Author and Professor.

Trademark Status from the Indian Trademark office (8th March 2017 to 15th March 2017)

  • Total Trademark applications examined by Trademark Office: 5056
  • Total applications disposed through show cause hearings: 731
  • Total applications published in the trademark journal: 7147
  • Total registrations granted: 4935
  • Total hearing notices issued: 1654
  • Total renewal notices issued: 3957

Recent Decisions on Trademarks

AKASH not similar to AKAR says IPAB

In a recent order, the Honorable IPAB found that the mark AKASH is not visually, phonetically  or structurally similar to the registered mark AKAR. The petition was filed by Akar Enterprises for expunging and removing the mark AKASH bearing application 1147895 in class 30 in the name of Sri Nanjundeshwara Traders.  In the said petition, the Applicant claimed that it is the prior user and registered owner of the mark AKAR and alleged that the mark AKASH is deceptively similar to its registered mark. Although the Applicant claimed to have been using the mark since 1976, the Applicant had not submitted any documents to establish the use of the said mark since 1976. The honorable IPAB observed that the sales turnover submitted by the Applicant may not be a valid proof for establishing usage of the mark AKAR as sales turnover statement was not substantiated by sales invoices. Moreover, the IPAB observed that mere registration of a mark is not sufficient to establish its usage. Usage of the mark shall be proved by submitting authenticated sales and advertisement documents. While rejecting the petition, the IPAB held that the marks and labels used by both parties when considered as a whole are dissimilar to a blanket eye, and hence, relative grounds of refusal cannot be invoked for removing the  mark AKASH from the Register

International Trade Mark Updates

KitKat Chocolate bar shape has not  Acquired Distinctiveness

IP Kat reported that the European General Court has recently held that KitKat Chocolate bar’s shape is not registrable as a trade mark because it  has not acquired distinctiveness. The Court reversed the decision of the Trade Mark Board, which held that the shape of the bar was registrable because it was recognized among more than fifty percent of relevant public in the European Union, who associate the shape with the bar. The Court held that the mark must be proved to have acquired distinctiveness in each territory and merging territories is not permissible.

Samsonite v. An Sheng on Parallel Imports and Trade Mark Infringement

The Singapore High Court recently held that parallel importing of Samsonite branded bags by An Sheng into Singapore amounts to Trade Mark infringement. Though parallel importing of goods placed on market in other countries is permitted in Singapore, the Court in the  case held that for the exception to be applicable the goods must be put on the market with the consent of the trade mark holder. As the bags were not put on the market and were meant only for bundled distribution along with Lenovo laptops in China, the High Court held sale of the bags infringing and not exempted  by international exhaustion of trade mark rights.

Trade Mark Licensing and Merchandizing

Playboy adds licensees for apparel and bedding

Playboy has signed three license deals to launch apparel, bedding, bags and other accessories. The licensees are Supreme, Joy Rich and Night Shift. . From street clothes to summer dresses and graphic bedding to bags, several new Playboy products will hit the retail stores soon.

Disney Merchandizing in China

Disney has collaborated with Jakks Pacific through a comprehensive license to merchandize some of its brands and characters in China. The subjects of the license deal include Disney Princess, Disney Frozen, Disney Beauty, etc. The merchandize will be available in both online and offline stores in China.

Singer to License and Merchandize Cosmetics Products

Singer and Television Presenter, Rochelle Humes, has signed  a licensing agreement with Athena Brands to launch several cosmetic products under the brand Hi Glow. The products to be launched include lip balm, bronze body lining stick, shimmer oil, etc. The products will be available in Superdrug stores across UK from 15th March, 2017.

Celebrities are today considered as brands, and extensions of their brand value into different product lines is rising at a rapid pace.

Geographical Indications News

No GI flavor for Hyderabadi Biryani

The mouth watering and fabled Indian delicacy from the city of the Nizams – Hyderabad, has failed to secure a GI tag for itself after the GI registry rejected the application. The registry said that the application is treated as abandoned “for want of prosecution”, as the applicant – Deccani Biryani Makers Association had failed to prove the historical data and origin of the product with supporting documents and had also failed to appear before the GI Registry on the date of several hearings in respect of the application. The applicant however has been informed that an appeal, if any, relating to the proceedings may be preferred to the Intellectual Property Appellate Board, Chennai within three months from the date of order of the GI registry.

BananaIP’s Trade mark tip of the week

Use your trade mark consistently and continuously, and maintain evidence of such use. From advertisements to sales invoices, every proof of use helps in strengthening your trade mark and protecting your interests. An extensively used trade mark without proof to support the usage  has very little business value.

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