WHAT IS A WELL-KNOWN TRADEMARK?

A well-known trademark is a trademark which is widely known to the prominent section of the public and enjoys a relatively high reputation. If any other party uses that protected well-known mark on their products or services, it would be deemed a sign that the product or service is associated with the later service provider and hence would amount to infringement of trademark rights.

Any trademark which is not recognized as a well-known mark in India by the court or the trademark registrar makes it mandatory for trademark registry to fortify the well-known mark against any discordant marks, brand or any domain name.

Recognition of marks as well-known marks drift from its primary objective of trademark registration; as trademark registry is given orders to not register any marks which are virtually identical or similar to the registered well-known trademark.

FOR REGISTRATION OF A WELL-KNOWN TRADEMARK

• Relevant provisions of Trademark Act and Rules, 2017:

• Sections 11 (6)-11 (9), Trademarks Act, 1999: The Registrar shall, while determining whether a trademark is a well-known trademark, take into account any fact which he considers relevant for determining a trademark as a well-known trademark including:
• The knowledge or recognition of that trademark in the relevant section of the public, including knowledge in India obtained as a result of promotion of the trademark;
• The duration, extent and geographical area of any use of that trademark;
• The duration, extent and geographical area of any promotion of the trademark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trademark applies;
• The duration and geographical area of any registration of, or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trademark;
• The record of successful enforcement of the rights in that trademark; in particular, the extent to which the trademark has been recognized as a well-known trademark by any court or Registrar under that record.

Section – 11 (7): The Registrar shall, while determining as to whether a trademark is known or recognized in a relevant section of the public for the purposes of sub-section (6), take into account, the number of actual or potential consumers of the goods or services;

• The number of persons involved in the channels of distribution of the goods or services;
• The business circles dealing with the goods or services, to which that trademark applies.

Section – 11 (8): Where a trademark has been determined to be well-known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trademark as a well-known trademark for registration under this Act.

Section – 11 (9): The Registrar shall not require as a condition, for determining whether a trademark is a well-known trademark, any of the following, namely:—

• that the trademark has been used in India;
• that the trademark has been registered;
• that the application for registration of the trademark has been filed in India;
• that the trademark:
  1. is well known in; or
  2. has been registered in; or
  3. in respect of which an application for registration has been filed in, any jurisdiction other than India; or
• that the trademark is well-known to the public at large in India.
• Rule 124, Trademarks Rules, 2017: Determination of well-known Trademark by Registrar:
• Any person may, on an application in Form TM-M and after payment of fee as mentioned in the First Schedule, request the Registrar for determination of a trademark as well known. Such request shall be accompanied by a Statement of the case along with all the evidence and documents relied on the applicant in support of his claim.
• The Registrar shall while determining the Trademark as well-known take into account the provisions of subsections (6) to (9) of section 11 of the Trademarks Act, 1999.
• For the purpose of such determination, the Registrar may call such documents as he thinks fit.
• Before determining a trademark as well known, the Registrar may invite objections from the general public to be filed within thirty days from the date of invitation of such objection.
• In case the trademark is determined as well known, the same shall be published in the trademark journal and included in the list of well-known trademarks maintained by the Registrar.
• The Registrar may at any time if it is found that the Trademark has been erroneously or inadvertently included or is no longer justified to be in the list of well-known trademarks, remove the same from the list after providing the due opportunity of hearing to the concerned party.

Required Documents as per the Guidelines issued by TM registry in 2017:

• TM-M Form with payment of Rupees 1 Lakh. (ONLY E-filing allowed);
• A statement of the case describing the applicant’s rights in the trademark and describing the applicant’s claim that the trademark is a well-known trademark;
• Evidence of the use of the mark and annual sales turnover of the business using the mark;
• Evidence of advertisements and publicity using the mark and related costs;
• Evidence of actual or potential users of the mark;
• Evidence of knowledge or recognition of the mark in India and overseas; and
• Details of successful enforcement of rights with respect to the mark, if any, especially with respect to the mark being well known, including a copy of the judgment of an Indian court or registrar of trademarks determining the mark as being well known.
• The size of the document submitted along with a statement of the case as evidence / supporting document should be in PDF format with a resolution of 200 X 100 dpi on A4 size papers and total file size shall not exceed the limit of 10 MB.
• Any person who wants to object to the inclusion of the trademark in the list of well-known trademarks may file his objection in writing to the Registrar of Trademarks stating out the reasons for his objection with supporting documents if any.
• A copy of the objection may be communicated to the applicant for comments within the stipulated time.
• The office will communicate the decision in respect of the objections to the parties concerned.
• The final decision of the office regarding the inclusion of the trademark in the list of well-known trademarks will be communicated to the applicant.
• In case the mark is determined as well-known, the same will be notified in the Trade Marks Journal and included in the list of well-known trademarks made available on the official website. For more visit: https://www.trademarkmaldives.com/

The Delhi High Court imposed a whopping fine of Rs. 87lacs on Pure Play in the case of Skechers USA, Inc and Ors v. Pure Play sports for violating the Intellectual Property Rights of Skechers by manufacturing and distributing rip-offs of a Skechers’ GoWalk3 series shoe range. Skechers filed a case against Pure Play for which it was permitted interim injunction in May 2016. The order for the fine was decided by the Joint Registrar Raj Kumar Tripathi, according to Chapter 23 of the Delhi High Court Rules, 2018. After the order in 2015, the High Court again passed the summary judgement, even when there was no application filed for such a judgment.

Overview

Skechers filed a case against Pure Play proclaiming that Pure Play was imitating the distinctive and unique features of their footwear that were sold under the GoWalk3 series brand. They also claimed that Pure Play was trying to deceive and confuse the customers and the members of the trade with regard to the footwear’s origin and to establish a false association with the Skechers to sell their product under the name of Skechers.

Skechers not only claimed their exclusive trademark ownership but also showed GoWalk 3 series has unique elements which also included their trade dress. They provide many evidences to the court to prove the similarity and showed the deliberate attempts made by Pure Play to use their product. On the other side, Pure Play tried to prove the difference in both the company’s marks and logos, to vindicate their stand that both the products are not identical, and should not be confused as one. The defendant argued that customers tend to prefer high-ranged products by considering the price factor. They also averred that the plaintiffs haven’t registered their trade dress and designs.

Judgment

The Court passed the judgment in favor of the Skechers by granting the interim injunction. The court also stressed upon the ignorance on the part of the customer while purchasing any product. The court accepted that the GoWalk 3 series has a trade dress and unique elements, which acted as a source identifier. An injunction was granted by the court to avoid any kind of prejudice to the Skechers’ products.

Analysis

This is one of the few Intellectual Property Right cases, wherein the court passed the summary judgment. As per grounds lay in Rule 3, any party can seek for summary judgment at any time by serving the summons to the defendant. As per the Order 13A, summary judgement is passed to avoid lengthy court trials in the following case:

1. When a claim pertaining to commercial disputes is decided without the recording of the oral evidence.
2. When both the parties have no prospects of succeeding and the Court doesn’t find any reasons for not disposing of the case.

Order 13A was the latest addition to the Commercial Court Act, approved by the Cabinet, and the President on October 23, 2015. The most fascinating part of the case was that none of the parties filed an application for the summary judgement. However, Skechers wanted to file the application for the summary judgement under the Order 13A of the Code of Civil Procedure but were unable to do so because of the absence of its signatory. However, the court decided to go forward and passed the decree

This summary judgment on Skechers USA, Inc & Ors v. Pure Play overruled the previous judgement passed by the same Delhi High Court in the Bright Enterprise Private Ltd. & Anr. v. MJBizcraft LLP & Anr., passed on 4 January 2017.

It was the first case related to the proceeding of summary judgement, trademark infringement and goodwill dilutions. The court stated that “From the provisions laid out in Order XIIIA, it is evident that the proceedings before the court are adversarial in nature and not inquisitorial. It follows, therefore, that summary judgment under Order XIIIA cannot be rendered in the absence of an adversary and merely upon the inquisition by the Court. The Court is never an adversary in a dispute between parties”. The court also addressed how the summary judgement proceeding cannot happen without the filing of the trademark application under CPC, Rule 4  of Order 13 and the importance of the accused replied. The court also stressed upon that “a court may feel that the case of a Plaintiff is weak, but that is no ground whatsoever for throwing out the suit log, stock and barrel without giving the Plaintiff an opportunity of proving and establishing its case”.

Conclusion

This case was a watershed moment in the history of the summary judgement passed under Order 13A  for two reasons, first, the defendants weren’t given the chance to prove his side, and secondly, no applications were filed by the either of the plaintiffs. For more visit: https://www.trademarkmaldives.com/

The Italian fashion house Prada is still fighting a multi-million dollar battle with Florida-based alligator contractor, Caporicci USA Corp. which started in 2017 when the alligator supplier had failed to give Prada the 15,000 hatchlings it had officially paid for. To be precise, the Miami-based supplier couldn’t provide Prada with alligator hatchlings of worth $1.2 million in one case and grown alligators of worth $2 million in another case which the Italian brand uses to make its pricey accessories. When the Miami exporter of quality American alligator skins or hides turned down to refund more than $600,000 to Prada after failing miserably to serve many alligator hatchlings, the fashion label took the issue before an arbitrator in Milan.

In the proceedings of the Arbitration Court of Milan, the tribunal had discovered early this year that Caporicci had seriously breached it official agreement with Prada and had ordered to refund $633,213 for the 3,761 hatchlings it couldn’t obtain and deliver to Prada. The tribunal also ordered to replace 3,761 hatchlings found inappropriate. Since then, Prada has appealed to the Federal Court in Miami to impose and administer the Tribunal’s orders. However, Prada faced a pushback from Caporicci USA which requested the court to delay its decision till the proceedings in a different but related suit come to a conclusion.

Immediately after Prada had initiated arbitration in Milan, Caporicci began its own proceedings in late 2017 over a separate deal turning bad with Prada involving 700 young alligators and 26 full-grown alligators. In its Lawsuit filed in the State Court of Florida, Caporicci stated that it couldn’t supply a chain of alligator’s hatchlings to Prada because of a turning point in their relationship when the fashion house and one of its vendors GNP Pelli di Pezzoli Gian Andrea had allegedly bought hides and hatchlings from three alligator farms without paying Caporrici a decided-upon broker’s commission. As per Caporicci’s lawsuit, Prada and GNP Pelli had purposely and unlawfully intruded in its relationship with other alligator vendors. The alligator contractor also asserted that GNP Pelli had received an enormous amount of money from the alligator skins and had failed to pay the commission which gave rise to damages of worth $2 million.

This legal battle between the fashion house Prada and Caporicci USA Corp. is still ongoing in the Southern District Court of Florida. For More Visit:  https://www.trademarkmaldives.com/

The luxury group LVMH, Microsoft, and the Blockchain services provider startup ConsenSys have officially launched a blockchain-based product tracking system, known as “AURA”. This system is exclusively designed and developed to serve the luxury industry across the world with powerful and robust tracking and tracing services which will verify and uphold the proof of authenticity and product history of luxury goods. Operating on a consortium model, AURA allows any luxury firm to use it to offer real-time tracking services to its customers. LVMH brands like Christian Dior and Louis Vuitton are already currently involved in this project and advanced discussions are still going on to onboard other brands from the LVMH group and other luxury groups across the globe.

APP-BASED DIGITAL TRACKING

Based on Ethereum blockchain technology and using Microsoft’s Azure infrastructure, this decentralized system is set-up to create a unique identifier for every product, tracking its source of origin from raw materials to point of sale, all the way to second-hand markets. AURA uses digital tracking which allows customers to use the brand’s app while purchasing a luxury item to receive a digital certificate consisting of blockchain-based product information and details about every product’s origin, care instructions, after sales and warranty services. With this platform, purchasers can also track the life-cycle of its products including the design, raw materials, manufacturing, and distribution. While protecting creative intellectual property and identifying unique information about every product stored on a shared ledger, this technology will also hold back advertising fraud. AURA will also offer tailored-made services to build-up customer loyalty and to ensure a brand’s protection from potentially low-quality counterfeits.

CONCLUSION

Nowadays, extravagant brands are rapidly turning to blockchain platforms to confirm the provenance of their luxury good items, and AURA is undoubtedly a great innovation for the entire luxury industry which shall help in protecting the interests, integrity, and privacy of every brand. The team behind AURA is hopeful about its use by rival luxury brands too by offering them the flexibility to customize the system according to their needs. For More Visit:  https://www.trademarkmaldives.com/

A Korean-based fashion brand widely known for its eyewear — Gentle Monster has sued Kanye West’s collaborator Malik Yusef for allegedly forging Ye’s signature on contracts in addition to faking invoices and making an enormous amount of money in the process. This year in February, the South Korean eyewear brand, Gentle Monster had promoted and released a video known as “13 Music” that supposedly featured a track written and produced by Yusef and Kanye West. Post its release, Kim Kardashian had tweeted that, “Kanye is not involved and didn’t produce this song.” Furthermore, Gentle Monster had taken down “13 Music” and all the promotions associated with it.

In the lawsuit filed in the Los Angeles Country Superior Court against Malik Yusef and others, Gentle Monster has asserted that Yusef had taken an undue advantage of his seemingly close relationship with Kanye West to swindle Gentle Monster into believing that he could bring some of the world’s most famous and reputed artists together to compose and produce a number of videos which could easily increase Gentle Monster’s brand name and recognition globally. As per the report, Yusef had successfully arranged a meeting between Kanye West and Won Lee, who is the CEO of Gentle Monster US, in Jackson Hole, Wyoming. After the meeting, the suit claims that Yusef had given Won Lee a notarized Universal Music Publishing Group song agreement which authorized the release of a new track entitled “New Angels” for Gentle Monster’s campaign. The agreement came into sight along with West’s forged signature and a copy of his driver’s license which according to the lawyers of Gentle Monster was procured by Yusef without Kanye’s consent.

Gentle Monster has reportedly admitted that out of $2.5 million, it had sent $500,000 to a social agency which Gentle Monster had considered as Kanye’s West charity.

In a nutshell, Gentle Monster is now suing Malik Yusef along with his manager and business partner Burundi Partlow, and Sonja Nutall, who had introduced Won Lee to Yusef, on claims of fraud, breach of contract, and many more. The eyewear brand is also seeking damages of a sum to be determined at trial. For More Visit:  https://www.trademarkmaldives.com/

The American singer, songwriter, and actress, Ariana Grande has been accused of violating the copyright law by a paparazzi photographer, Robert Barbera. The New York-based photographer, Robert has filed a lawsuit against the pop star Ariana Grande at the U.S. District Court for the Southern District of New York by claiming that the actress has posted two pictures of herself which were clicked by him without his permission and license.

It is the latest occurrence of a celebrity going through allegations of copyright infringement on account of the pictures they post on various social media platforms. Khloe Kardashian, Gigi Hadid, Odell Beckham Jr., Jessica Simpson, and Jennifer Lopez, have also been affected and sued for similar cases.

Although the post which showed Grande in two side-by-side images wearing an oversized gray sweatshirt and thigh-high boots while carrying a clear bag with the word “Sweetener” on it has been deleted, its screenshot was presented as legal evidence to the court.

According to the lawsuit, “[Grande] is not, and has never been, licensed or otherwise authorized to reproduce, publically display, distribute and/or use the Photographs.”

Robert is now demanding either $25,000 for every unauthorized picture that Grande has posted or the profits which must have been generated after posting the pictures to her followers of more than 154 million in number on Instagram. Prior to being taken down, the post had garnered more than three million likes. For more visit: https://www.trademarkmaldives.com/

Louis Vuitton (LV), a France fashion house and luxury retail company has succeeded in dismissing the legal proceedings initiated by MGA Entertainment, the maker of “Pooey Puitton” toy purses. John Walter, the US District Judge in Los Angeles, asserted that MGA Entertainment Inc’s lawsuit didn’t show any “actual and present controversy” between the two companies due to which the case didn’t really belong in the federal court.

Last year in December, MGA had filed a carefully-worded, harsh declaratory judgment action against LV, accusing it of attempting to interfere with its sales of a poop-shaped toy purse for children known as “Pooey Puitton”. The company was actually in a fear that the French brand was waiting to fire them with a lawsuit over intellectual property rights. In its lawsuit filed, MGA also pointed to Louis Vuitton’s “history of not respecting parody rights in the US and filing vexatious lawsuits against such protected parody.” However, Judge Walter approved the dismissal of the lawsuit in its entirety with prejudice by noting in his judgment that, “The court need look only to the fact that Louis Vuitton has not sued MGA based on its trademark rights in the US, while it has initiated proceedings in France.” Walter also mentioned that MGA’s attempt to refer to a number of earlier cases against the fashion brand Louis Vuitton is not simply persuasive.

MGA has affirmed that a rational person would never misinterpret Pooey Puitton, which retailed for $59.99, for expensive and high-priced bags by Louis Vuitton. For more visit: https://www.trademarkmaldives.com/

In the past few days, a photo of Justin Bieber who is a Canadian pop-star has been at the center of the latest lawsuit that closely mirrors one involving a photo of Tom Brady. A New York-based paparazzi photographer, Robert Barbera has filed a lawsuit of copyright infringement against CBS which is an American mass media company, for allegedly violating his rights in a picture of Justin Bieber by displaying it publicly in their document of “most liked Instagram pics”. As mentioned by Robert, CBS had neither licensed the photograph from him nor taken any legal permission to publish the photograph in their article.

The media giant CBS had only embedded the Instagram post of Justin Bieber as a part of their article than taking its screenshot. The courts have also largely agreed upon this by mentioning that CBS had only embedded a photo in their article without actually producing a copy of the image because of which there is not any new display of the picture which could actually lead to violating the copyrights of Robert Barbera.

In general, the court also believes that an alleged infringer in the case of embedding never really stores an image or develops a replica and therefore can’t violate the copyright law. For More Visit:  https://www.trademarkmaldives.com/