Skip to main content

Posts

Your brand crosses borders — is your trademark protected?

By
  Indian trademark law · Well-known marks · Foreign brand protection A foreign brand can walk into a courtroom in India — even without a single sale or a trademark registration here — and still win. That is the promise of the doctrine of transborder reputation. But 2025–26 judgments remind us it is a conditional promise, and conditions matter. What is transborder reputation? In a world of Instagram, international travel, and Amazon storefronts, a brand's reputation does not stop at a customs gate. The principle of transborder reputation acknowledges that goodwill can "spill over" into markets where a business has no physical footprint — through media, the internet, tourist exposure, and cross-border advertising. Indian courts have long recognised this reality. The landmark was N.R. Dongre v. Whirlpool Corporation (1996) , where the Supreme Court upheld a passing-off action by a foreign brand against a registered Indian mark, holding that international magazine advertisem...
Post a Comment
Read more
Recent posts

IPAB has allowed an appeal and granted patent to Pfizer for Tofacitinib and its salts

By
                                                    In a decision dated 21st August 2020 IPAB vide its  Order  has allowed an appeal and granted Patent  to Appellant M/s. PFIZER PRODUCTS INC., USA  for Tofacitinib and its salts. The appeal is against the   order dated 3 rd  September 2015 passed by the Controller of Patents under Section 15 of the Indian Patents Act, whereby the Appellant’s Indian patent application no. 00991/MUMNP/2003 was rejected on the ground that it is hit by section 13(1)(b) and being non-patentable under section 3(d). The Appellant requested for an urgent hearing of the matter and IPAB considered the request for urgent hearing and passed the present order.  This Patent application claimed the compound 3-{(3R,4R)-4-Methyl-3-[methyl-(7H-pyrrolo[2,3-d]pyrimidin-4-yl)-amino]-piper...
Post a Comment
Read more

Honourable Justice Manmohan Singh Tenure as Chairman of IPAB (Intellectual Property Appellate Board) extended for Another three months

By
  The Supreme Court on September 16, 2020 has extended the tenure of Honourable Justice Manmohan Singh as Chairman of IPAB (Intellectual Property Appellate Board)  for another three months.  Justice Manmohan Singh was appointed on July 2017 for a term of three years.  However as per the rules governing the appointment his term would come to an end on attaining retirement age of 65 years on 22nd September 2019. Since Government has not appointed any Chairman thereafter, on a Petition by International Association for Protection of Intellectual Property (AIPPI) the Supreme Court has extended his term for another year i.e, till 21st September 2020 as the Petitioner claimed that IPAB will be Defunct with his retirement thereby causing hardship several litigants. The Central Government has notified in March 2020 that Justice Singh will continue as the chairman of IPAB up to September 21, 2020, or until further orders, whichever is earlier.  Now with this extension, Ho...
Post a Comment
Read more

Mark used for different class of goods/services would not be detrimental to the purported distinctive character or repute

By
SUPREME COURT in it's Order dated  26 July, 2018 held that use of the mark "NANDHINI" for Restaurant Services and running Hotels is not detrimental to the repute and usage of the mark "NANDHINI" for Milk and Milk Products. VS. In  M/S. Nandhini Deluxe vs M/S. Karnataka Cooperative Milk., l ong legal battle for Trademark Registration of Nandhini Trademark for Restaurant and Hotel business has been successful for M/s. Nandhini Deluxe. The Supreme Court observed that  all the ingredients laid down in  Section 11(2)  of the Act, as explained by the Delhi High Court in Nestle India Ltd., have not been satisfied. We are not persuaded to hold, on the facts of this case, that the appellant has adopted the trade mark to take unfair advantage of the trade mark of the respondent. We also hold that use of ‘NANDHINI’ by appellant in respect of its different goods would not be detrimental to the purported distinctive character or repute of the trade ...
Post a Comment
Read more

Punitive Damages for Infringement of Trade Dress by Delhi High Court in an Interim Application

By
Delhi High Court vide its Judgement dated 31st July 2018 in  Louboutin-3 case has granted permanent injunction and punitive damages against a Delhi based retailer for infringing the famed ‘Red Sole’ trademark of Christian Loubutin.  The Plaintiff‟s "RED SOLE" trademark, i.e. , wherein a specific tone of colour red (Pantone no. 18.1663TP) is applied to the outsole of a shoe, is unique in its own accord and became known in the world of fashion only after being introduced by the Plaintiff herein as their Trade Dress. The consumers in India identify the Plaintiff as the sole proprietor of the Christian Louboutin trademarks including the "RED SOLE" trademark and any use of the said trademarks by an unrelated entity will entail taking undue advantage of the reputation and goodwill of the Plaintiff, which has been built painstakingly over the several decades; The Defendants are located in Kamla Nagar Market, New Delhi, who were found to be dealing in infringing...
Post a Comment
Read more

Hasbro, Inc. (RHODE ISLAND CORPORATION) granted Scent Trademark

By
I was always amused by the smell/scent of Hasbro Play-Doh while my kids playing with them. On 15th May 2018,  Hasbro gets U.S. trade mark Reg. No. 5,467,089 for the particular smell of Play-doh brand modeling compound for " a scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough". The Trademark Registration has gained significance since it is one of the non-conventional trademark being scent that is granted in recent years by United States Patent and Trademark office (USPTO). Other important aspect of the Trademark Registered in  International Class 28 for "Toy Modeling Compounds".  Hasbro also claimed that it is in the market since 12th September 1955 and recorded the same as first usage of the scent in the market. Our sources reveal that the present Registration of Scent Mark is one of 13 Active Registrations for Scent marks from USPTO. The rece...
Post a Comment
Read more

Tata's Herbal Tea fails to get patent protection

By
The patent office has refused to grant a patent to Tata Global Beverages (formerly known as Tata Tea) for its 'invention' regarding a process for preparation of flavoured herbal tea. Based on the opposition filed by Hindustan Unilever Limited (HUL) and TATA Tea failed to provide sufficiency of disclosure of the invention the Controller of Patents refused to grant patent.   Tata Global  Beverages, the patent application has claimed a new flavoured herbal tea composition comprising 1% to 8% of Darjeeling Broken, 10% to 50% of flavour concentrate and the rest being tea particles. Tata Global Beverages had submitted the patent filing without appropriate clarification for the unique taste for the tea composition. It was unable to find out the technical advancement of the application as compared to the existing knowledge. Thus controller had to refuse the grant of patent. Source:  http://www.financialexpress.com/article/markets/commodities/tata-global-bev...
Post a Comment
Read more