Category Archives: Trademark

Trademark

Breaking News: Toyota Loses Trademark Battle over Prius at Indian Supreme Court


In a path-breaking development for Indian trademark law, the Supreme Court reiterated yesterday that IP rights are “territorial” and not “global”. The court was deciding a matter involving “Prius”, the brand under which Toyota sells its leading “hybrid” car. The court held that merely because Prius is well known outside India does not mean that it enjoys a “reputation” in India as well. That has to be independently established! The court’s decision is a delight to read, not least because…


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Trademark

Part II: The “ Sexy Barbie/Baby Girl” Controversy #Mattel #TM Dilution #Camera Hearing (DHC)


Since we have already discussed the issues concerning Mattel’s “in camera hearing” application, we will now be dealing with a more substantive issue i.e. the claim of TM Dilution. But first, the facts. BASIC FACTS (REPRODUCED FROM EARLIER POST) There exists a movie, released on 24th November, called “Tera Intezaar”. The movie wasn’t released at the time of the Order’s issue (22nd November). Said movie consists of a song called “Sexy Barbie Girl”, which was, as is common practice, released…


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Trademark

(SpicyIP Duet) Aten, Hut! The SC Clarifies Law Regarding Rectification Proceedings


 (This post was co-authored by Harshavardhan Ganesan and myself. Long post ahead.) On 29th November, the Apex Court, by way of an SLP, conclusively settled (or did they? *dramatic music*) an extremely important question regarding TM rectification proceedings. The order, available here, appears to be comprehensive, well-reasoned, and one which provides for much needed judicial clarity on an important piece of legislation. However, at the risk of contempt, we found that the order gets quite befuddled at the end. So,…


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Patent Trademark

RTIs reveal tardy record keeping practices at the IPO – no records of pending patent oppositions – 1,13,857 trademark oppositions pending + 5,533 rectifications


Over the last two years we have been subject to a relentless stream of press statements from the DIPP Joint-Secretary Rajiv Agarwal and Controller General O.P. Gupta, about how the backlog at the Patents Office and Trade Mark Registry has been massively reduced over the last few years. First, let us give credit where it is due – the DIPP and Patent Office finally managed to conduct large scale recruitment process of patent office examiners without any major scandal –…


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Trademark

Case Note: Del HC on Verizon Trademark Services LLC & Ors v. Mr. Parth Solanki & Anr


At the outset, this judgment dated 09 November 2017 doesn’t have much to offer in terms of jurisprudential inputs. You may then be wondering why I am discussing this case. On quite a few occasions, especially in the arena of IPR, ex parte cases arise. The Delhi High Court, in this case, discusses the judicial approach towards such cases. The legal position is, of course, no longer res integra. Even then, revising one’s knowledge on the same is not a…


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Others Trademark

Part I: The “Sexy Barbie Girl” Controversy #Mattel #Camera Hearing #TM Dilution (DHC)


I write to report a recent DHC Order issued by J. Endlaw denying Mattel Inc. (the famed toymaker behind the Barbie doll) an ex-parte injunction Order restricting the release of the movie “Tera Intezaar” with the song “Barbie Girl”. Also, the Order rejected Mattel’s application for conducting proceedings under cameras, instead of public view. We will look into the Order’s analysis of the following concerns in sequence: Application for Hearing Under Camera (Part I). TM Infringement and Dilution of the Mark…


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Trademark

Case Note: Kar HC on M/S Adiga Sweets vs M/S Vasudeva Adigas Fast Food Pvt


[Image from here.] This is a well-written judgment which is on expected lines. The judgment is a value addition to the extant jurisprudence on trademarks / passing off since it deals with the psychological impact with respect to ‘deceptive similarity’ and ‘confusion’. Facts: The appellant, M/s. Adiga Sweets challenged the legality of the judgment dated 18.09.2013, passed by the XVIII Additional City Civil Judge (CCH No.10), Bengaluru City. The learned judge had decreed the suit for permanent injunction in favour…


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Patent Trademark

Openly Accessing the Old Annual Patents and Trademarks Reports


Of late, the Indian IP authorities have been making sincere efforts towards improving open access to IP data. Although these efforts are indeed laudable, much remains to be done. For instance, the Annual Reports of the Office of the Controller General of Patents, Designs and Trade Marks for years prior to 2002 are not yet available on its website. Only the reports for the years 2002-2016 can be found on the website. This was recently brought to our attention by…


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Trademark

Asst. Registrar Files Criminal Complaint(s) against False Representation of Marks as ‘Registered’


Last month, the Assistant Registrar of trademarks, Chennai filed certain complaints before the JMFC, in Telangana, against four different proprietors over two common trademarks. We received information on the same through one of our readers, who also filed the RTI application (accessible in full, here) in order to obtain a copy of the complaints. The complaints are notable because they indicate a rare instance of recourse to criminal remedies provided under the Trademarks Act. Recourse taken, not by private parties…


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Copyright Trademark

Copyright Surrogacy: Cracking through the Holes to Re-Constitute Exclusivity over Public Domain Works


We are pleased to bring to you a guest post on copyright surrogacy by Simrat Kaur. Simrat is a New Delhi based IP lawyer. She pursued her undergraduate law course from Rajiv Gandhi National University of Law, Punjab and masters law course from National University of Singapore. After having worked with leading Indian law firms (Anand & Anand and Luthra & Luthra Law Offices), she has recently started independent practice under the banner “The Endretta”. While working with the said law…


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