Category Archives: Trademark

Trademark

Trade Mark Rules, 2017 (Salient Features)


I write to bring to your notice the coming into force of the Trade Mark rules, 2017. It overrules Trade Mark rules, 2002. Let us look at a few of the salient features. Number of Forms have been brought down from 74 to 8 One can clearly understand the manner in which this has been carried about by comparing Schedule 2 of the 2002 rules and the 2017 rules. The 2017 rules opted for formats that could be used for multiple types of…


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Trademark

Bombay HC Full Bench Rules on the Interplay Between Sections 29(4) and 29(5) of the TM Act – Part I


A Full Bench of the Bombay High Court, consisting of Justices A.S. Oka, A.A. Sayed and A.S. Gadkari pronounced their decision in the matter of Cipla Limited v. M/s Cipla Indsutries Pvt. Ltd. on March 1, 2017 (read the order here). This decision is of extreme importance as the Honourable Chief Justice directed that the matter be placed before a Full Bench, following Justice Patel’s recommendation that the 2010 Division Bench (‘DB’) Decision in Raymond Limited v. Raymond Pharmaceuticals (‘Raymond’)…


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Trademark

Bombay HC Full Bench Rules on the Interplay Between Sections 29(4) and 29(5) of the TM Act – Part II


While Part I was concerned with the background to this dispute, this post concentrates on the reasoning of the Full Bench, as well as analyses its jurisprudential impact. Holding of the Court The Court held that the plain language used in sub-sections (4) and (5) answered the questions at hand. It was noted that 29(4) uses the words “in the course of trade” and “in relation to goods and services” which were absent in 29(5). Conversely, “as his trade name…


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Trademark

Part VI: Choco Wars: Cadbury Strikes Back (Kit Kat shape)


In this part, I am going to deal with Question 2: “(2)   Where a shape consists of three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result, is registration of that shape as a trade mark precluded by Article 3(1)(e)(i) and/or (ii) of Directive 2008/95 …?” But first, a quick analysis of the “Essential Elements” process. Relevant Provision Directive 2008/95 Article 3 “1. The following shall not be…


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Trademark

Part V: Choco Wars: Cadbury Strikes Back (Kit Kat shape)


(Gruff Voiceover) Previously on SpicyIP’s Choco Wars: Nestle had successfully prevented Cadbury from registering the colour Pantone 2685C. *In the courtroom, Cadbury’s CEO glares at his Nestle Counterpart* *Screen goes blank* In this piece, I shall explain how Cadbury thwarted Nestle’s attempt to register the following shape: Yes, indeed. Nestle tried to register the shape of Kit Kat as a trade mark. So, without much ado, let us get straight to the facts. What we call “Kit Kat” today, was…


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Trademark

Part IV: Trade Mark Concepts #Shapes #Hauck


In this piece we will be dealing with some of the questions that came up in the Hauck case. The facts, once again, are pretty straightforward. Hauck wanted to register the following shape as a trade mark. Stokke opposed it on grounds of the shape being invalid. Went through a series of courts before reaching the Court of Justice. Note that the majority of the analysis comes from the opinion of the Advocate General (AG). The court constantly keeps referring to…


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Trademark

Part III: Trade Mark Concepts #Shapes #Lego


In Part II, we had dealt with the case of Koninlijke Philips v. Remington. Here, we shall deal with new problems that came up in the Lego case. The basic question is pretty straightforward: Is the shape mark produced below a valid trade mark? The Relevant Provision Council Regulation (EC) No. 40/94 of 20 December 1993 “… The following shall not be registered: … (e)       signs which consist exclusively of: (i)   …; or (ii)  the shape of goods which…


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Trademark

Part II: Trade Mark Concepts #Shapes #Philips


In Part I, we went through a basic introduction to shape trade marks. Now, let us look at at the issues raised in the case of Koninklijke Philips v. Remington.  As a result of these being European cases, our focus should be much more on the theoretical aspects, as opposed to the facts or the court’s holding. Therefore, I have endeavoured to make these posts theoretically intensive, rather than factual. Philips tried to register a 3D shape (produced below) as a trade…


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Trademark

Part I: Trade Mark Concepts #Shapes #Introduction


This month, I shall be discussing a series of European cases that deal with trade marking shapes and the associated functionality principles. This piece contains absolutely no analysis, and is only intended to lay the groundwork for the rest of the series. Before you decide to abandon going through this series on account of the European origin, allow me to remind you that the Indian statute, in this context, is very similar to its European counterparts. As a consequence of…


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Trademark

Trademark Protection amidst the Jolly LLB 2/Bata Controversy


  The State v. Jolly LLB 2 (“Jolly LLB 2”) isn’t having an entrance as cheerful as one would expect from its title, as it seems to have found itself in the middle of several legal issues. While their run in with the censor board was recently resolved, I will be focusing on the question of trademark disparagement, infringement and dilution with regards to their spat with Bata. Background Although the Central Board of Film Certification (“CBFC”) had cleared Jolly…


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