Category Archives: Trademark

It’s been a rough time for online intermediaries operating in India, lately. Jumping on the techlash bandwagon in the wake of multiple social media fiascos concerning online disinformation, data breaches, and mass propagation of hate speech and abuse, governments across the world are taking this as an opportunity to tighten regulation for online ‘intermediaries’ – platforms which host third party content, such as social media or online marketplaces. Similarly, the hornet’s nest of intermediary liability for copyright and trademark infringement…

Geographical Indication Trademark

Certification Trade Marks and GI versus ‘Regular’ Trade Marks: The Calcutta High Court Ruling in Tea Board v. ITC

by Pankhuri Agarwal February 20, 2019

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We’re pleased to bring to you a guest post by Eashan Ghosh on the recent decision of the Calcutta High Court in the GI and Certification TM infringement case filed by the Tea Board of India against ITC for use of ‘Darjeeling’ as part of the name of a refreshment lounge (‘Darjeeling Lounge’) in one of its hotels. Eashan has been in practice as an intellectual property advocate and consultant in New Delhi since 2011, and teaches a seminar on intellectual…

Others Trademark

IPAB Conducts Hearings and Passes Orders Despite Losing Quorum

by Rishabh Mohnot January 30, 2019

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It has recently come to our notice that the Intellectual Property Appellate Board (IPAB) has been conducting hearings and passing orders without the quorum mandated in the Trade Marks Act! Section 84(2) of the Trade Marks Act, read with Rule 20 of the IPAB (Procedure) Rules, 2003, require the presence of one Judicial Member and one Technical Member on the bench to form a quorum. Any order passed or hearing conducted without a quorum would, therefore, be illegal. Prof. Basheer…

Trademark

IP vs Morality vs Free Speech: What the Fuct?

by Shamnad Basheer January 7, 2019

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As some of you may have heard, the USPTO denied a trademark to Erik Brunetti’s “FUCT” line of apparel on grounds that the mark was immoral/scandalous! The Court of Appeals for the Federal Circuit (CAFC) ruled that the refusal was unconstitutional since it violated the constitutional guarantee of free speech. The US government appealed and the US Supreme Court just granted cert and will hear arguments soon. As Dennis Crouch notes in Patently O: “..the Federal Circuit sided with Brunetti…

Trademark

Trademarking “Hakuna Mata”: A Problem Free Philosophy For IP?

by Shamnad Basheer January 2, 2019

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Even as we were bidding adieu to 2018, one of the most contentious IP issues cropped up. Thanks to Disney’s trademark over Hakuna Matata (from the Lion King) and an online petition protesting against this blatant cultural (mis)appropriation! I reflect on this in the Hindustan Times and excerpt some portions below. Hardly a stress free issue. But then again, these are complex cases not amenable to easy resolution. The best we can do is to continue to debate and remain…

Designs Overlaps in IP Trademark

Delhi HC: Clearing the Confusion Around Design-Trademark Overlaps

by Prarthana Patnaik December 19, 2018

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A few days ago, I had written a post on the Delhi HC’s judgment in Greenlight Planet India Pvt. Ltd. vs Gee Lighting Technology dealing with a design-trademark overlap. The Court, in this order, had deliberated on the issue of whether a separate suit of passing off can be filed for a registered design after having filed a prior suit of design infringement. In their order, they limited their analysis to Order II, Rule 2 of the CPC (which does not allow…

Designs Overlaps in IP Trademark

Delhi HC Deals with Yet Another Design-Trademark Overlap!

by Prarthana Patnaik December 13, 2018

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IP overlaps take place when multiple overlapping IP rights vest in an owner for a single subject matter. These overlaps have given way to numerous debates regarding over-protection, policy implications, statutory interpretation and many more issues. (To get a better understanding of the same, do refer to Prof. Basheer’s chapter in Overlapping Intellectual Property Rights.) Design-trademark overlaps, in particular, have had an interesting history in Indian litigation. A recent decision of the Delhi HC yet again brings these overlaps to the fore. In…

The Rihanna-Trump Showdown and The Use of Music in Political Campaigns

by Prarthana Patnaik November 26, 2018

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This month saw a highly publicised altercation between pop queen Rihanna and US President Trump. She called out the President for playing her popular hit song “Don’t Stop the Music” at his rally. In her cease-and-desist letter, Rihanna’s legal team specified that the idol’s consent should have been taken before playing her song at the rally. The issue, however, is more complicated than the simple matter of the artist’s consent to such usage and has been highly debated in the past….

Trademark

Delhi High Court Examines Intermediary Liability for Trademark Infringement (Part – II)

by Divij Joshi November 19, 2018

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In my previous post, I broke down Ms. Justice Prathiba Singh’s recent judgement in Christian Louboutin v Nakul Bajaj, and noted its importance for intermediary liability and e-commerce players in India. In this post, I examine the Court’s approach towards intermediary liability, and attempt to outline what exactly the judgement means for e-commerce platforms. (Update: On November 12, the Court also made a similar ruling on similar facts in L’oreal v Brandworld, relying upon its earlier judgement in Christian Louboutin.)…

Trademark

Groundless Threats of Trademark Infringement Result in Ex-Parte Order Preventing the Defendant from Initiating Ex-Parte Proceedings

by Rishabh Mohnot November 12, 2018

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In Kokanratna Holiday Resorts vs. Millennium & Copthorne International Limited, the Bombay High Court recently passed an order that required the Defendant to give prior, written notice of 7 days to the Plaintiff before initiating any legal proceedings against them pertaining to the trademark ‘Hotel Millennium Park’. The order passed ex parte by Justice Kathawala, therefore precludes the Defendant from initiating ex parte proceedings to claim interim relief against the Plaintiff. Background and Decision The Plaintiff is a hotel based…