From the desk of Dr. Mohan Dewan | Assisted by: Adv. Aboli Kherde, Adv. Sachi Kapoor & Adv. Shubham Borkar
Samoa has recently decided to join WIPO’s International IP Systems and has deposited its Instruments Of Accession for 3 treaties viz., Patent Cooperation Treaty (PCT), the Geneva Act of the Hague Agreement for International Registration of Industrial Designs and the Geneva Act of the Lisbon Agreement for the international registration of appellations of origin and geographical indications.
PCT: Samoa is the 153rd contracting party of the PCT. One international patent application is filed under the PCT, where applicants can seek protection for an invention in multiple countries simultaneously.
Hague System: Samoa is the 62nd contracting party for the Geneva Act of Hague Agreement and the 72nd member of the Hague Union, which together form the Hague System and offers design protection in 89 countries through a one common international application and set of fees.
The entry of Samoa into PCT and the Hague system will come into effect from January 2, 2020.
Lisbon System: Samoa has joined the Geneva Act of the Lisbon System which provides producers of quality products linked to origin with faster and cheaper access to the international protection of their products' distinctive designations.
A Manchester based, family-run clothing company has recently won a long standing trademark dispute for the mark BENTLEY against the luxury car manufacturer Bentley Motors Limited (“Bentley Motors”). Yes you heard it right; the luxury car maker may no longer be able to manufacture and sell clothes under the brand name BENTLEY and is left with no other option but to destroy its infringing inventory or to hand it over to Bentley Clothing.
History of the two marks:
Bentley Clothing's business began in 1962 and was run by a company called Roy Bentley Limited, founded by Gerald Bentley. It then went through a number of transfers and eventually the business was assigned and an associated trade mark was licensed exclusively to an entity viz., Brandlogic, a family firm, which is presently selling clothing under the brand BENTLEY (Both collectively referred as ‘Bentley Clothing’).
Articles of knitted clothing; shirts and waistcoats
|12 August 1982|
Clothing; headgear; articles of knitted clothing, knitwear, jumpers, pullovers, cardigans, sweaters, shirts, sweatshirts, T-shirts, polo shirts, coats, jackets, top coats, overcoats, raincoats, car coats, waistcoats, blousons, articles of clothing for casual wear, shorts, articles of sports clothing, blouses, hats, caps, scarves, gloves, anoraks
|22 September 1998|
Clothing and headgear
|22 December 2008|
Bentley Motors was founded by W. O. Bentley in 1919 in Cricklewood, North London. Volkswagen AG (VW) bought Bentley Motors somewhere in 1998. In the same year, Bentley Clothing offered VW, the chance to license the BENTLEY name for apparel and accessories use for just 75,000 pounds a year; however VW in response, attempted to cancel Bentley Clothing’s registered trademark. However it failed.
The David-Goliath Battle!
After defending its trademark cancellation proceedings successfully, Bentley Clothing filed a trademark infringement suit against Bentley Motors.
Bentley Motors argued that use of its name for clothing amounts to honest use as it was a natural business spin-off for a luxury brand. Bentley Motors further argued that they have remained fundamentally the same without any undue expansion towards the business of Bentley Clothing, hence there has been no confusion between the two brands and it’s a case of honest concurrent use.
No honest concurrent use anymore:
Judge Richard Hacon of the High Court of Justice in London ("the Court"), who was not at all impressed by Bentley Motor’s argument, noted that in 1987 when Bentley Motors began selling a limited range of clothing featuring the B-in-wings logo, and not BENTLEY. It was only around 11 years later in 1998, when Bentley Clothing approached Bentley Motors offering them licence. Therefore, it seems that there was honest concurrent use of the mark BENTLEY till then but not afterwards as the evidence gives a "strong impression" that from the year 2000 Bentley Motors made a "conscious decision to develop the use of BENTLEY in relation to their range of clothing and headgear such as to increase the prominence of that sign, but only in incremental stages in the hope that no one stage would provoke a reaction from Bentley Clothing".
The Hon’ble Judge also noted that it is evident from the fact that if the luxury car manufacturer had “conducted a trade mark search and had been properly advised” when it first began selling those products, “it would have been told that BENTLEY could not be used for knitted clothing, shirts and waistcoats” given the existence of Brandlogic and its rights in the BENTLEY mark. In 1987 and well into the 1990s Bentley Motors sold clothing and headgear which did not fall within those categories.
As a result of the above, the Hon’ble court held that Bentley Motors has violated the trademark rights of Bentley Clothing by using the name BENTLEY for its own clothing line. The Hon’ble Court granted an injunction in favour of Bentley Clothing and ordered that Bentley Motors must limit its prospective clothing business in UK to “jackets, silk ties, hats and scarves” and must not sell any other clothing or headgear.
This demonstrates the power that trademarks have. Trademarks can protect the rights of the holder, even when it is a small family run business (David) against a large corporation (Goliath).
Hugo Boss, a German luxury brand was founded in 1924 by Hugo Boss. The company originally produced general clothing, however, with the rise of the Nazi party, the company began producing and selling Nazi uniforms. Later, the company ventured into men and women’s fashion clothing and soon launched a fragrance line. As on date the company owns over 1500 stores across the globe.
In 2017, an entity filed an application at the Japanese Patent Office, for a composite label containing the term ‘BOSSWASH’, applied for in Class 18 for bags and pouches. As soon as the application was published, Hugo Boss filed a notice of opposition stating that ‘BOSSWASH’ is likely to confuse the public due to its similarity to their previously registered marks which contain the term ‘BOSS’.
The JPO in its decision stated that, the applied mark when considered in its entirety is visually, phonetically, conceptually and structurally distinct from the Opponent’s marks. The JPO also, stated that, though Hugo Boss was a popular brand however the materials submitted in order to claim popularity were insufficient. Therefore, in view of the above reasons, the JPO ruled in favour of BOSSWASH, and dismissed the opposition.
The habit of ‘scrolling across the screen mindlessly’ is a vice of the social media as well as e-commerce websites like Flipkart, Amazon, Ebay, Alibaba etc. These websites have formed magnificent goodwill and brand value over the years.
Flipkart is a popular e-commerce website in India, currently owned by Flipkart Internet Private Limited (“Flipkart”). Flipkart has obtained trademark registrations for ‘FLIPKART’, ‘FLIPCART’, ‘FLIPKART.COM’, etc. in several classes. Mr. R Somasundaram filed an application for the registration of the mark ‘FLIPPINGKART’ in the class 38, which was opposed by Flipkart. The domain name ‘www.FlippingKart.com’ is also registered with GoDaddy.com Operating Company LLC by the Defendant. Flipkart therefore filed a trademark infringement suit against the Defendant in the Madras High Court Flipkart Internet Pvt. Ltd. v. Somasundaram Ramkumar. contending (as is very apparent!) that the Defendant’s mark ‘Flippingkart’ is deceptively similar to its mark ‘Flipkart’. None appeared on behalf of the defendant in the matter and thus, the court granted an ex-parte injunction order against the Defendant.
In the pursuit to ease out the procedures adopted for IP registrations, prosecutions, the Central Government proposes to amend the Design Rules related to registration of Designs under the Designs Act, 2000. The Government of India has recently published draft amendments (“the proposed Amendment”) to the Designs Rules, 2001 (“the Rules”) to seek suggestions from stakeholders. The main objective of the proposed Amendment is that it seeks to align the Indian system of Design Classification with the International System. It also seeks to make the registration process more affordable and accessible to budding entrepreneurs.
The proposed Amendments have recognized “Startup” entities for which the prescribed design registration fees will be lesser. A Startup is an entity recognized by the Startup India Initiative. The definition of a Startup also includes a foreign entity which can fulfill the criteria of turnover and period of incorporation as per the requirements of the Startup India Initiative. Thus, not only will domestic startups benefit from this, but the reduction in fees will also attract budding entrepreneurs from abroad to register designs in India.
Adoption of Locarno Classification:
One very important amendment that is proposed by this Amendment is that India should adopt the “International Classification for Industrial Designs (Locarno Classification)” published by World Intellectual Property Organization for the classification of articles for registration. This opens up a lot of additional avenues for Indian registrants as wider classification and additional fields become available for design registration. Another important function that this Amendment will serve is to bring India in harmony with the international classification system encouraging foreign applicants to apply easily. Consequently the amendment proposes to remove the domestic classification system given in the Third Schedule of the Rules.
Payment for difference in fees:
Rule 5 of the Rules specifies the fees to be paid by and method of payment for an Applicant for registration of Designs and prosecution matters. The fee for an application for registration varies depending upon the type of entity applying. It is specified in the First Schedule of the Rules. Sometimes, though the application for registration is filed in the name of a particular entity, the application/ registration may be completely assigned to another entity. For certain entities such as natural persons, startup and/ or small entities the fees is lesser than that applicable to all other types of entities. In such cases, the Amendment proposes that if an application for registration is being transferred from an entity to which lesser fees is applicable to an entity to which higher fees is applicable, the difference in fees is to be paid by the latter, that is, the New Applicant.
IP and innovation go hand in hand! In this section, we bring to you innovative ideas and products as we celebrate intellectual property being created across the globe.
If you are tired of losing/misplacing your Pen Drives every now and then, Saint Antonie is just what you need at the moment.
French product designers Claire Pondard and Léa Pereyrechip have designed an extraordinary USB drive named Saint Antonie, equipped with a crisp ‘UDP chip’ customized to fit in the space between the keys of a laptop/computer keyboard.
*We claim no copyright over the images used and the same have been used for reference and educational purposes only. Picture credits: http://claire-lea.com/#