Category Archives: Trademark

Overlaps in IP Trademark

Countering the Menace of Counterfeits


In a development that brings to light some rather interesting issues, the Indian Government has accused Chinese companies of counterfeiting goods legitimately manufactured in India. Noting that large Indian brands such as Godrej, Dabur and Raymond have been at the receiving end of this large-scale counterfeiting, the Government has reportedly told Parliament that it has raised this issue with the appropriate agencies in China. As this article notes, this intervention could not have come at a better time, in light…


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Trademark

TOI Accuses Guerrilla Advertisers of Violating its IP Rights


In an interesting development, the Times of India (“TOI”) recently issued a warning to guerrilla advertisers, who use the TOI’s newspapers for engaging in illegal insert advertising, about the negative legal ramifications that could result from this unfair trade practice. Noting that such advertisers are perceived by the public at large as “fake” and “fly by night” brands, the warning states that this type of surreptitious advertising reflects very poorly on the brand in question, indicating its tendency to cut…


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Trademark

The Big Mc-Mac Wars- II: India not Lovin’ McDonald’s as much


(This post has been co-authored by Pankhuri Agarwal. She has recently completed her LL.M. in IP law from the National University of Singapore) In Part I of this post, we had discussed the EU General Court’s recent judgment in Future Enterprises Pte Ltd v. EUIPO & McDonald’s International Property Co. Ltd, which upheld the  cancellation of the mark ‘MACCOFFEE’ registered by a Singapore company, Future Enterprises, for its food stuffs and beverages. It was found that use of ‘MACCOFEE’ was without due cause…


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Trademark

The Olympics Blackout Period, Use of Athlete Attributes and IPRs- Part II


In the second part of this post, I discuss the intent behind the controversial Rule 40 and the reasons for its amendment prior to the Rio Games. I also discuss how Under Armour is one of the first few companies which will benefit from the changes to the new rule. Finally, I will discuss India’s stance on Rule 40. Read on for more. Intent of Rule 40 Rule 40 was initially put in place to protect the ‘amateur’ status of…


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Trademark

The Olympics Blackout Period, Use of Athlete Attributes and IPRs- Part I


It’s less than a fortnight to the Rio Olympic Games. This calls for a special post on IP and the Olympics. Did you know that rules surrounding the Olympic Games could, in the coming days, result in the latest Nike ad featuring Deepika Padukone being taken off air for a few weeks? If you haven’t already seen it, watch the ad here.  Read on as I delve into Olympic related IP aspects, particularly a controversial Rule 40 of the Olympic…


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Trademark

Plain Packaging and Investor-State Disputes: Part II


  Picking up from my previous post, where I had examined Uruguay’s victory over Philip Morris in light of other successful plain packaging regulations; I now delve into the merits of the Philip Morris-Uruguay award, as well as examine the question of expropriation of trademark rights. For background reading on this issue, we have widely covered both International as well as Indian developments in plain packaging laws in the past. More specific to plain packaging in light of Investor State…


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Copyright Trademark

Mischief Managed(?): Bombay High Court upholds Plaintiff’s privilege to sue in its place of registered office sans cause of action


The Bombay High Court has decided in a recent judgment that the Supreme Court’s landmark decision on jurisdiction in IPRS v. Sanjay Dalia cannot be read in such a way as to curtail the plaintiff’s privilege to pursue a suit in the area where the plaintiff has its registered office. Justice Gautam Patel has observed that this rule is applicable even when the plaintiff has a subordinate office in the place where the defendant is carrying on business and where…


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Trademark

The Intricacies of an Innocent Curve


The Bombay High Court in Reliance Industries Ltd v Concord Enviro Systems Private Limited recently dismissed a trademark infringement suit filed by Reliance against Concord Enviro Systems. Read on for a complete analysis by Akshata Ankolekar, an associate at Solomon and Roy, Intellectual Property Services . FACTS The Plaintiff, the largest private sector corporation in India is the registered owner of’ ’ (hereinafter referred to as the ‘R Logo’) under various classes including Classes 7, 9 and 11. The Defendant…


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Trademark

The Big Mc-Mac Wars- I: EU General Court Brews the Perfect Coffee for McDonald’s


(This post has been co-authored by Pankhuri Agarwal. She has recently completed her LL.M. in IP law from the National University of Singapore)   Background In a ruling that potentially provides McDonald’s, the U.S. fast food giant, with the exclusive right in Europe Union (EU) over the use of trademarks ‘Mc’ and ‘Mac’ for food  and beverages, the EU General Court, in Future Enterprises Pte Ltd v. EUIPO & McDonald’s International Property Co. Ltd, has earlier this month held that…


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Trademark

Award of Punitive Damages by the Delhi High Court: No Method to the Madness


In the realm of trademark law, Indian courts, especially the Delhi High Court, have failed to articulate a set of coherent, uniform, intellectually defensible and legally tenable parameters for computing the amount of damages to be awarded to successful plaintiffs. To be sure, the problem is not one which is exclusively confined to trademark law. As Prashant has noted, the Delhi High Court’s jurisprudence on punitive damages in IP cases in general is founded upon a fallacious understanding of applicable…


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