IPL TEAM NAMES APPLIED FOR TM REGISTRATION

A company called KBJ Asset Holding in South Africa is trying to register as trademarks the various team names like Deccan Chargers, KKR etc as their trademarks. These are the team namesof the very popular IPL which had recently concluded in South Africa.

This would amoutnt o a gross violation ofthe rghts and the popularity which these tems enjoy. Various recourses to tacklet he sae are being worked out by legal practionerds in India.

NEW CONTOLLER GENERAL APPPOINTED

Mr. P.H.Kurian, a malayali of the 1986 cadre of the IAS has been appointed the new Controller General of the Patent, Designs and Trademarks. This is historic in nature as it is for the first time that an IAS officer is being appointed.

All IP practioners are waiting with baited breath to see whether any changes will come about in the Registry’s. There are many much desired changes that are urgently required to arrest ineeficient maner in which the Registry’s are presently running.

A new change being noticed is that the examiners are writing their comments on a sheet of paper which is being attached with the examination report when being sent.

CRISTIANO RONALDO's TRADEMARK

The Telegraph today reported that Cristiano Ronaldo, who is Portuguese, has obtained a Portuguese trade mark for the mark 'CR9' fuelling speculation that Ronaldo will leave his current club Manchester United to play for Real Madrid. The newspaper states that Ronaldo, who currently plays for Manchester United wearing a No 7 shirt, has been promised the No 9 shirt by the Spanish club Real Madrid.

MOLDOVA RATIFIES SINGAPORE TREATY

The republic of Moldova has ratified the Singapore treaty on the Law of Trademarks and the treaty wil formally come in to force on the March 16, 2009.

ANOTHER BRICK IN THE WALL

Lego was the receipent of bad news today from the CFI. The CFI rejected Lego's appeal against OHIM's Board of Appeal's decision that the Lego brick shape is not registrable as a CTM.

SULLING OF THE MERCEDEZ BRAND

Mercedez Benz has requested that their trademarks be removed from the movie Slumdog Millionaire by Director Danny Boyle. In the companies opinion, they believe that their mark would be sullied as the show is set in the slums.

The question arises as to whether the it would have resulted in sullign or not. Mercedez is a well known brand and the people who know about a Mercedez will definitly not be taken in by the movie and the showing of the brand in a slum as they are informed viewers and know something about cars.

BIKE GANG'S TRADEMARK BANNED

US Department of Justice has effectively seized control of the trade mark of the Mongols motorcycle gang, a picture of a Mongolian warrior wearing sunglasses. The gang appears to have been engaged in violent crime, and at the same time as the injunction banning the use of the trade mark, 79 gang members were indicted. Although the injunction banning the logo originally cracked down on distribution or sale of the logo, it now states that gang members "shall surrender for seizure all products, clothing, vehicles, motorcycles ... or other materials bearing the Mongols trademark, upon presentation of a copy of this order."de mark, 79 gang members were indicted. Although the injunction banning the logo originally cracked down on distribution or sale of the logo, it now states that gang members "shall surrender for seizure all products, clothing, vehicles, motorcycles ... or other materials bearing the Mongols trademark, upon presentation of a copy of this order."

E- FILING OF TRADEMARKS IN FRANCE

The French Trade Mark Office (INPI) has officially launched its e-filing platform this morning athttp://depot-marque.inpi.fr (available in French only). The online filing of French trade mark applications had been tested this summer with several trade mark professionals.

TM DISPUTE ON MAAZA

A major trademark battle is brewing between Bisleri and Coca-Cola over the use of the ‘Maaza’ trademark. ‘Maaza’ is one of India’s most popular mango based non-carbonated soft drinks. ‘Maaza’ was owned by the Chauhan family which at that time also owned other famous trademarks like Thums-Up, Rim-Zim, Goldspot, Limca and Citra. However when Coca-Cola entered the Indian market it bought out all five brands from the Chauhans. Coca-Cola had initially registered the ‘Maaza’ trademark in European countries so as to market the drink in those countries. However the Chauhan family which now owns Bisleri International claims that the agreement to hand over the ‘Maaza’ trademark to Coca-Cola was limited only to the Indian market and that Bisleri still has the international rights to the ‘Maaza’ trademark. The Hindu reports that Bisleri has in fact already entered into franchisee agreements with European companies and has started selling ‘Maaza’ in Europe. Since Coca-Cola’s move to register the Maaza trademark in Europe has directly threatened Bisleri’s commercial interests in Europe, they have sent a legal notice to Coca-Cola alleging that the initial agreement has been violated by Coca-Cola’s actions and have claimed upto $50 million dollars in damages for the alleged infringement

TRADE DRESS

Trade Mark is a badge of origin, of the quality of the products, and thus helps the public in removing any confusion in their minds as regards to the source of the products. In contemporary times there has been an expansion in the scope of registered marks. Trade dress is a part of this expansion.

In India with the liberalization of the economy and India opening its doors on investment in any every sector, numerous foreign brands in FMCG sector are entering the Indian market. Therefore to distinguish goods from the competition, FMCG companies invest heavily not only on devising brand names but also on creating trade dress or packaging to act as identifiers.

 

Products have a personality. A key element of a products personality or brand image is its packaging. Trade dress consists not of words or symbols but of a products packaging.[1] In recent years the concept of trade dress has been expanded to encompass the design of a product.[2]

Trade dress involves the total image of a product and may include features such as shape, colour or colour combinations, textures, graphics or even particular sales techniques.[3]

Trade dress is of great importance as illiterate people get confused if there exists two products with similar trade dress. Illiterate people look at the colour, shape, image, textures etc of the product when they purchase it.

In the United Kingdom Trade dress is protected under the law of Passing Off. Passing Off is a common law remedy for protecting unregistered Trademarks. In the United States of America they can be registered under Section 2 of the Lanham Act and even without registration, a non functional, distinctive trade dress is protected under Section 43 (a) of the Lanham Act. The requisite conditions for registering a trade dress with the U.S Patent and Trademarks Office are that it should be -

1)      inherently  distinctive or has acquired secondary meaning and

2)      is non functional.

In India the concept of trade dress is encompassed in the broad definition of Trade Mark.  Under Section 2(m) of the Trademarks Act, 1999

“mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.

 

The definition above includes shape of goods packaging or combination of colours or any combination which are those elements which constitute the total image of a good or trade dress.

 

A landmark judgement of importance in India which deals with this concept in detail is that of Colgate Palmolive Co. v. Anchor Health and Beauty Care[4]. In this matter, an ad interim injunction restraining defendant(Anchor Health and Beauty Care)  from use of trade dress and colour combination similar to that of plaintiff (i.e a red and white colour combination) was applied for. The Court held that the visual impression of product gives overall impression to customer as to origin of goods and if first glance of article gives impression as to deceptive similarities in respect of colour combination, getup etc. it is a case of confusion and that such similarities amounts to passing off one's own goods as those of another with a view to encash upon goodwill and reputation of latter.[5]

 

It was held by the Court that an ordinary consumer gets an overall impression of source/ origin of goods from colour combination, shape of the container, packaging etc. The court also opined that no party can have monopoly over a particular colour but if there is a substantial reproduction of the colour combination in the similar goods either on the container or packaging which over a period of time has been imprinted upon the minds of consumers, it is certainly liable to cause confusion but also dilution of distinctiveness of colour combinations.

In another matter of S.V.S. Oil Mills vs.S.V. N. Agro-refineries & another[6], the plaintiff firm was manufacturing and marketing various kinds of refined edible oils under the registered trade mark "SVS" with inverted triangle and a distinctive colour scheme and get up of red and yellow. The defendant, an erstwhile partner of plaintiff firm constituted another firm, which was in the same business, using same trademark "SVS" but with a different colour scheme, the Court held that,

 "the material form, colour and getup of the wrapper or label or container of the articles are the physical means of expression and the design of the container or the label is of great significance as it is meant to catch the attention of any purchaser. The design of the label would include not only the trademark, but also the colour scheme and getup of the wrapper or container as well. It is well known that there are several eye-catching designs and the customers who are familiar with the articles would invariably be guided and attracted to purchase goods by the sight of label. There is a power behind the design of the label as the customers have the intuitive instinct to select the goods by the design, colour, getup and the trade name and if the goods of same kind, with the same colour scheme and getup in the labels belonging to two manufacturers with phonetic similarity in trade names are exhibited or offered for sale, a normal consumer of average intelligence with imperfect memory would take one article as belonging to other".

Thus from the above it is apparent that even though there exists no specific provision as regards trade dress, protection for the same is provided for in our country  by the filing of  a suit for passing off or a suit  for the  infringement of trademark.

 

Though this concept is a new one, it is a major part in determining the commercial success of a business enterprise and therefore its protection is of the utmost importance.

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[1] Two Pesos vs. Taco Cabana Inc., 505 U.S. 763(1992)

[2] Wal-Mart Stores Inc. vs. Samara Bros. Inc., 120 S.Ct.1339(2000)

[3] John .H. Howard Co. vs. Clarke Checks Inc., 711 F2d 966 (11^th in  1983)

[4] 2003(27)PTC478(Del)

[5] Ibid

[6] 2004 (29) PTC 548 (Mad) (DB)]