From the desk of Dr. Mohan Dewan | Assisted by: Adv. Aboli Kherde, Adv. Sachi Kapoor & Adv. Shubham Borkar
The Indian Trade Marks Registry has released a Public Notice dated January 21, 2020 nominating a Grievance Redressal Officer at each branch of the Trade Mark Registry, situated at Mumbai, Delhi, Ahmedabad, Chennai and Kolkata. The Registry has also nominated a Supervisory Officer at Central Office, Mumbai. The Registry intends to provide a mechanism to all the concerned stakeholders so that their day-to-day procedural difficulties are easily redressed. During the TM Registry's meeting with the stakeholders, the stakeholders have expressed their need to have a specific grievance officer to look into the matter related to day to day procedural difficulties and facilitate immediate resolution of the issues regarding processing of various forms. The Notice states that in case the Grievance Redressal Officer fails to address the grievance within 2 weeks, the matter can be escalated to the next level i.e. to Supervisory Grievance Redressal Officer. The contact details of these officers can be found here.
US Chamber of Commerce’s (“USCC”) Global Innovation Policy Centre recently released its Intellectual Property Index. India ranked 40 out of the 53 participating jurisdictions. Last year India ranked 36th out of 50 participating countries. The US, the UK, Sweden, France and Germany are in the top 5 ranks on the Index. The official website of GIPC also enumerates a list of strengths and weaknesses of the participating jurisdictions. It comments upon India’s PPH program with the Japan Patent Office along with the Government’s initiatives to provide incentives in the Intellectual Property and Research & Development. The awareness about piracy and counterfeiting and its negative impact upon the industry is also quoted amongst India’s strengths. The country can however improve upon, inter alia, licensing and technology transfers; widen and make specific frameworks for the protection of biopharmaceutical IP rights and limited participation in international treaties.
‘Psilocybin’ is a naturally occurring psychedelic substance which is present in nearly 200 mushrooms. The consumption of these mushrooms leads to hallucinations that usually last for about 6 hours and the taste of the naturally occurring Psilocybin is bitter and unpalatable. Recently a California based chocolate company viz., Black Panda filed an application for the mark ‘Psilocybin’ with the USPTO for chocolates. Their website can be accessed at https://www.psilocybinchocolate.com/. The chocolates, now known as ‘Psilocybin’ does not contain any trace of the psychedelic substance. Thus, the name is deceptive and a false trade description. Any person who is conversant with the true qualities of the ‘Psilocybin’ is likely to believe that the chocolates will provide the same psychedelic effect that is provided by ‘Psilocybin’, on the other hand, a person who has consumed the chocolates first, may consume magic mushrooms believing them to be chocolates. Of course areas/shops of the availability of the 2 are majorly distinct. A similar issue had cropped up with the mark ‘Black Magic’ which was originally a brand name for a cookie but later a pharmaceutical company adopted the same mark for a laxative thus creating confusion.
The USPTO has granted registration for the wordmark ‘Psilocybin’ bearing registration no. 5963651 on January 14, 2020.
Amiri, a Los Angeles based fashion brand launched its popular MX2 Biker Jeans which included pleated leather panels and zippers near the knee. The company noticed that an identical design was reproduced by Zara and was being sold at a much lower price. Zara, a Spanish retailer is known as the world's largest apparel retailer and its global presence is remarkable.
*Picture credits: https://fashionunited.uk/news/business/amiri-sues-zara/2020012447209
The Amiri jeans in contention (displayed in the image above) were priced at $1150 whereas the alleged Zara knockoff was priced at $50. Amiri has filed a suit against Zara claiming damages to the tune of $3Million on the grounds of copyright infringement, unfair competition and infringement of commercial agreements in addition to an order to ban Zara from selling the jeans.
Amiri submitted that, Zara was selling a poor quality knockoff which will tarnish the reputation of the brand. Amiri also submitted that, by selling the jeans at a mere $50, Zara had diminished the apparent exclusivity of the jeans. As on date, Zara has pulled down the product from the web.
For further updates in the case, stay tuned!
Boehringer Ingelheim Pharma GmbH & Co.KG a German pharmaceutical company having operations all over the world and its Indian subsidiary viz. Boehringer Ingelheim (India) Pvt.Ltd. (collectively referred to as “Boehringer”) filed a suit for patent infringement at the Madras High Court, stating that Tanmed Pharma India Private Limited (“Tanmed”) was violating its granted patents bearing Nos. 243301 and 227719 by launching, making, using, offering for sale, selling, importing and / or exporting the medicinal product, Linagliptin in different forms. Tanmed, in its response to the suit, stated that it had only obtained a Drug License from the Drug Control Authority, but had not engaged in the manufacture of the drug. Also, Tanmed immediately surrendered the license to the Drug Controller when it received the suit summons. Tanmed argued that since it was not manufacturing Linagliptin and had already surrendered the License, no cause of action was present for the suit to continue. The Court appointed a Local Commissioner to visit Tanmed’s premises to ascertain whether there was any manufacturing activity related to the patented drug. The Local Commissioner found that Tanmed was not manufacturing the drug at all. Tanmed also went on to give an undertaking that it will not manufacture the drug “Linagliptin” as long as the plaintiff holds the exclusive patent right of the said drug. Since the cause did not survive after Tanmed’s undertaking, the Court dismissed the suit. Each party was asked to bear its own costs.
What one must take away from this case, is that 'a stitch in time, saves nine'. It is clear from the defendant’s act of obtaining a license for manufacturing that it intended to manufacture it. The defendant surely did not go through the pains of obtaining a drug license for the fun of it! There is of course ‘no smoke without fire’. However, the Plaintiff’s timely action, before the defendant had started manufacturing, acted as a saving grace for the defendant to give up the idea of manufacturing the patented drug and even provide an undertaking to not manufacture it in the future.
It is a trend among builders and developers to name their buildings or construction projects using elegant or inspiring terms like Golden Petals, Corals, Aspire, Paradise, Sunrise, River Views, Valleys, and so on! This ‘christening ceremony’ is common amongst builders but they fail to conduct a trademark search before adopting these names.
A dispute on these lines arose between the marks “Central Park” and “Godrej Central Park”. The proprietors of both the marks, Central Park Estates Pvt. Ltd. (“Central Park”) and Godrej Skyline Developers Pvt. Ltd. (“Godrej”) are engaged in the business of building construction and real estate. While Central Park is the registered proprietor of the trademark “Central Park”/, Godrej started using
the mark for its new project. Central Park filed a suit against Godrej at the Delhi High Court for trademark infringement and passing off. In the case of Central Park Estates Pvt. Ltd. v. Godrej Skyline Developers Pvt. Ltd., the Delhi High Court held that 2 marks are deceptively similar if the essential features of one mark are copied from the other. Godrej argued that the term “Central Park” was a generic term and was common to the trade. However, the Court held that since Godrej had itself applied for the trademark registration, it cannot now plead that the mark is generic. The Court restrained Godrej from further using the mark. This case is a classic example of developers and builders not ensuring that the marks adopted by them are available for use and are not registered trademarks of others engaged in the same trade. Development projects are commonly named using names of flowers, rivers, valleys, planets, precious stones or terms like elegance, beauty, peace, etc. which at first appear to be “common to trade”. However, this is a misconception. With the increase in awareness of trademark laws, many developers are registering their project names or building names as trademarks. Hence, a hasty christening of projects by builders/ developers may result in unintentional trademark infringement and an expensive brawl. It is therefore important to be vigilant in checking brand names for their availability before using them as project names or building names. Builders Beware!
When Shakespeare said “What’s in the name?” we are sure he was not talking about Brand Names. Brand Names are very crucial for the success and failure of a product. Selecting a brand name is a strategy that requires a lot of thought and creativity. A great brand name is one that is capable of creating a buzz, can portray the Brand Owner as market leader and can make a Brand Owner’s product stand out from the rest in the market. An error in naming can negate brand image. It can also limit Brand Owner’s opportunities if the Brand Owner intends to expand into other markets. Hence, there is no need to rush through the process; it takes equal parts of creativity, strategy, time and hard work to choose a good brand name.
There have been various incidents wherein Brand Owners deliberately chose a word with negative connotation to enable their products to be noticed immediately or to create a buzz around their brand. Examples of such incidents are Poison perfume; Hell pizza, and Monster energy drink, Criminal clothing and Fossil watches. We will deal with reasons and effects of deliberately naming brands with words carrying a negative connotation in another article.
In the present article we limit our discussion to cases wherein there was no intention on the part of the Brand Owner at the time of adopting a particular brand name. However due to certain unfortunate incidents or mishaps the brand name had a negative connotation later on.
Corona Beer and Corona Virus
This article is inspired by the news of increased Google searches with respect to Corona Beer soon after the outbreak of the new Corona Virus in Wuhan. Google trends shows that searches from January 18 to January 26, 2020 for "corona beer virus” skyrocketed to 2300 %. Similarly, searches for beer virus jumped to 744% and the same for “beer corona virus” increased by 3233 %. It is clear that people have misconceived that there is a relationship between “Corona” Beer and the new Corona Virus.
The word “CORONA” means Crown in Latin, it is the same in Spanish too, Corona Beer originated in Mexico. On the other hand, the new Corona virus has a crown like structure, hence the name Corona.
There is no actual relationship between the beer and the virus and the problem is caused by lack of awareness; however it may have serious repercussions on the brand.
For a better understanding, we will discuss a few more examples:
AYDS and AIDS
Ayds was a popular appetite-suppressant (weight loss) candy in the 70s and 80s. But then in 1981 came the then-poorly-understood deadly immune system infection, AIDS (Acquired Immune Deficiency Syndrome). Unfortunately, AIDS has the same pronunciation as AYDS and also the fact that AIDS disease caused immense weight loss in patients and AYDS being a weight loss candy added to the confusion. As a result of the confusion, sale of Ayds candies went down to 50% in a span of 7 years. Brand Owners changed the name to Diet Ayds, which wasn’t of much help and the product was eventually withdrawn from the market.
ISIS Chocolates and ISIS (Islamic State of Iraq and Syria)
ISIS is a Belgian chocolate making company established in 1923. Its founder learnt the art of making chocolates from Italy and Switzerland and named it Italo Suisse. The company changed its name from Italo Suisee to ISIS in 2013. Unfortunately, in 2014 the Islamic State of Iraq and Syria released its videos. Resultantly stores started refusing to stock ISIS chocolates and their sales declined in 2014. Later the Brand Owner changed the name again to Libeert.
Another company called Isis Pharmaceuticals Inc. which was originally named after an Egyptian goddess observed considerable drop in sales in 2015 and the Business owner decided to change the name to Ionis Pharmaceuticals Inc.
Hot Mama (now Evereve) is a women fashion retailer setup in 2004. Hot Mama catered to women aged between 25 to 55 years. Its stores were designed as a place where moms could comfortably bring their kids. However due to negative connotations attached to the term Hot Mama, the owner changed its name to Evereve in 2014.
The car Tata Tiago was previously named Tata “Zica”. Zica was an abbreviation for "zippy car". However, the car launch coincided with the outbreak of the Zika virus. Tata did not want the car name to remind people of the virus and hence changed the car’s name to Tiago.
When the word meaning got ‘Lost in Translation’
Honda Jazz was announced as Fitta, but Honda soon discovered that Fitta is a vulgar term in Swedish, Norwegian and Danish. Hence, Honda changed its name to Jazz.
When Ford introduced its compact car in 1971, it named it Ford Pinto. The name was derived from the pinto horse1 . However, the word Pinto has a negative connotation in Brazil. Till the time Ford realised it, the sales already fell and Ford had to completely rebadge all the cars with a new name "Corcel", which means horse.
While adopting a trademark/ brand name/ product name language discrepancies also cannot be ignored. The Brand Owner needs to check that in all territories that it intends to use the mark in the future, the mark does not have any negative meaning or connotation. It happens often that a company’s mark brand name/ product name is suitable for the language of its principal territory; however the same means something completely mortifying in another language. E.g. Shitto pepper sauce, Shitto does translate to pepper in Ghana but has a negative connotation attached to it in English Speaking Countries. Pee Cola, Mitsubishi Pajero, Dell Peju and Apple Siri are other such examples.
A brand name should neither be too plain nor too complex; it needs one to strike a balance between the two. One needs to be very careful while choosing brand names especially three letter marks which are generally more susceptible to consumer confusion. One needs to check whether the mark adopted is an abbreviation of an already existing entity or not. E.g. The mark RAW for fruit juices in India is an abbreviated form for Research and Analysis Wing of the Indian Government.
Similarly Central Bank of India (CBI) and Central Bureau of Investigation (CBI). Such scenarios should be avoided as far as possible.
It also needs to be checked whether the use of a three letter brand name/ product name has to be done in small characters or capital characters to avoid confusion. The products bearing the Raw Pressery mark has “RAW” written in bold capital letters which creates confusion, it should ideally have been used as “Raw” which means uncooked food.
1a horse with a coat consisting of patches of white and any other colour
Etymology is a funny subject. While stories are made of words, every word has a story. Etymology tells you that story. We have often heard or used the word ‘Palatable’ for describing something that is agreeable or acceptable. It is used in the literal sense to describe food or edibles to be ‘tasty’. Palate refers to the upper wall of the mouth. In the olden days, there was a misconception that taste buds, or the sensory organ for tasting resides on the Palate and not the tongue. Therefore, a tasty dish was referred to as ‘Palatable’. The misconception was rectified when it was discovered that taste buds are present on the tongue, but the word was carried on anyways!!
By this logic, shouldn’t the word have been ‘Tongue-able’!
Logos and trademarks always carry the ingenuity of the designer in them. This time, we bring to you the SPARTAN logo.
Most Golf club logos have a person suavely striking his golf stick in the air. What makes Spartan Golf Club’s logo unique is that the person playing Golf, if you look closely, also turns out to be the head of a Spartan. Spartans were Greek Warriors who were known for their simple living and their dedication to the life of a warrior. They are identified by their ornate and functional helmets. The logo has a curved arch on top that serves as the helmet for our Spartan and the elbow of the golfer represents the angular nose of the Spartan.
*Picture credits: https://www.ducksters.com/history/ancient_greece/sparta.php.
Do you see it now? Like we always say, we bet you cannot ‘Unsee’ it!! :D
*We do not claim copyright in any of the images in the Newsletter. These have been used for academic purposes only.