India

“A regressive step” – outcry at new Indian government bill to abolish IP Appellate Board

The lower house of Indian Parliament has introduced a "surprise" bill that proposes to abolish India’s IP Appellate Board, a move that could have a profound impact for domestic and international trademark owners.

“A regressive step” – outcry at new Indian government bill to abolish IP Appellate Board
Asos buys Topshop and Miss Selfridge brands; Covishield injunction rejected; ICANN new breach notice – news digest
2 Feb 2021

Asos buys Topshop and Miss Selfridge brands; Covishield injunction rejected; ICANN new breach notice – news digest

In our latest round-up, we look at Philip Morris International and the US Department of Homeland Security collaborating, Playboy in talks to acquire Lovers, the battle for Birkenstock heating up, and much more.

The notorious markets you need to have on your policing radar
18 Jan 2021

The notorious markets you need to have on your policing radar

The latest USTR list provides crucial intelligence for rights holders, with eight new physical markets added.

Latest

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1 Mar 2021

Bombay High Court: owner of YOGI marks entitled to statutory protection within specific class

In a dispute over the use of the word ‘yogi’ for Ayurvedic and herbal preparations, the Bombay High Court has restrained the defendants from using the plaintiff’s YOGI mark on the grounds of trademark infringement and passing off. Read more

29 Jan 2021

UFO clothing licensee restrained from using acronym

The Delhi High Court has issued an injunction preventing a clothing manufacturer from using the acronym ‘UFO’, holding that it was potentially confusing with UFO Contemporary’s long-established mark – although it held that use of the full brand name was permissible. Read more

21 Dec 2020

Unilever takes to the streets to spread the trademark message

Viji Malkani, senior legal manager IP rights, brand protection and legal counsel foods at Hindustan Unilever Ltd, reveals how WTR’s Asia-Pacific Team of the Year team has upheld IP integrity in the face of increasing pressures and why educating the younger generation has become part of their work ethos. Read more

15 Dec 2020

Jurisdiction in trademark cases: a matter of convenience, not of absolute discretion

In this dispute involving two whisky trademarks, the Delhi High Court issued an ad interim injunction against the defendant. An interesting issue that arose before the court was whether it had territorial jurisdiction to grant such relief. Read more

Anti-Counterfeiting

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30 Oct 2020

Sony resolves PS5 trademark fight; Tiffany and LVMH end legal dispute; TPAC new member – news digest

In our latest round-up, we look at a ‘Why Brands Matter’ campaign launching, research revealing the brand risk of data breaches, Authentic Vision planning an expansion, and much more. Read more

17 Sep 2020

Fighting the enemy within: how to lessen the risk of internal counterfeiting

Ex-employees from both Louis Vuitton and Hermès have been put on trial in recent weeks for their complicity in counterfeit handbag rings. Read more

20 Aug 2020

Five ways to beat the odds and protect your brand in Asia

We shine the spotlight on some of the biggest challenges facing brands in Asia and reveal what steps WTR’s trademark elite – from Beijing to New Delhi – are taking to overcome them. Read more

1 Jul 2020

Three steps to revolutionise brand protection in India

With the authorities making a renewed effort to hold the right people accountable for IP infringement, the time is ripe for brand owners and the government to work together to crack down on counterfeiting in the country. Read more

Brand management

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16 Oct 2020

As Royal Enfield sets its sights on EU and US markets, will the Indian company revitalise the vintage UK brand?

If it can pull off the move, it will be a rare example of a heritage brand that went out of fashion in its original market, only to come back to life decades later. Read more

12 Oct 2020

Are trademark sub-licensing models workable in India? Legal and practical considerations

Sub-licensing of trademarks is a common practice in India. However, there are questions over the legality of the practice. Read more

7 Oct 2020

Sony faces PS5 trademark fight in India but legal experts reject reports that it will derail console's launch

As gamers around the world readily anticipate the release of Sony’s PlayStation 5 console, media reports suggest that Indian consumers might have to wait a little longer after a third party was discovered to have applied for the PS5 name. Read more

29 Sep 2020

Amazon calls out Prime Bike; Denmark and India pledge IP cooperation; livestream fakes arrest – news digest

In our latest round-up, we look at Deliveroo mulling a 2021 IPO, Royal Mint launching new anti-counterfeiting measures, the EUIPO signing a cooperation agreement with an SME alliance, and much more. Read more

Enforcement and Litigation

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17 Nov 2020

Times Now secures injunction against use of NEWSHOUR mark by ex-employee’s TV channel

The Delhi High Court granted Times Now’s request for an interim order restraining rival network Republic TV from using the mark NEWSHOUR, but did not interfere with Republic TV’s use of a mark coined by a former Times Now employee. Read more

2 Nov 2020

DELHIVERY decision: phonetically generic marks cannot be protected

This decision of the Delhi High Court once again exposes the dangers inherent in the adoption of descriptive marks, including those that are misspellings of descriptive terms. Read more

29 Oct 2020

Bombay High Court frowns on Future’s copying of Parle’s biscuit packaging

This order by the Bombay High Court should be welcomed by brand owners, as it reinforces that consumers make purchasing decisions based not only on brand names, but also on the overall visual presentation of the products. Read more

8 Oct 2020

McDonald’s and Amul continue trend of successful hybrid actions against fake websites

Earlier this year, the Bombay High Court set the trend of hybrid actions involving John Doe infringers, banks and registrars to fight the rise in fake websites. McDonald’s and Amul recently jumped on this trend. Read more

Government/Policy

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23 Sep 2020

Safeguarding digitised India: everything you need to know about the Personal Data Protection Bill

This guest analysis provides insight into the debate over privacy and data in India, the country’s position in comparison with international efforts and what brands need to know about the ever-shifting environment. Read more

8 Sep 2020

New guidelines set up advertising overhaul in India, including expectations of brand ambassadors

India’s newly-formed Central Consumer Protection Authority has issued extensive guidelines designed to regulate advertising and clamp down on misleading claims and practices. Read more

28 Aug 2020

Coronil trademark twist; IPOS unveils new partnerships; Banjul marks in Mozambique  – news digest

In our latest round-up, we look at Glossier securing protection for its pink pouch, Pakistan promoting the use of GIs, China issuing opinions for destroying infringing and counterfeit goods, and much more. Read more

13 Mar 2020

Coronavirus phishing warning; USPTO responds to WIPO election; Microsoft sued in Azure dispute – news digest

In our latest edition, we look at lawyers decrying ‘dumb’ and ‘gross’ coronavirus vaccine trademarks, the UK police seizing over £7 million in suspected fake goods, and much more. Read more

Law Firms

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23 Sep 2020

Flying high: registry data shows Asia-Pacific filings are skyrocketing

Filing data at the top Asia-Pacific IP offices reveals a region undergoing spectacular growth, accounting for a colossal 80% of trademark activity worldwide last year. Spearheading the effort is China – a nation with increasing influence over its neighbours, which shows no signs of slowing down. Read more

28 Aug 2020

Economies are battered but many major offices set for record trademark numbers

As the data continues to be updated, we are able to get a better understanding of the extent of the coronavirus’ impact on the trademark ecosystem. Read more

26 Jun 2020

INTA unveils new website; Unilever tea sale; Indian consumers boycott Chinese brands – news digest

In our latest round-up, we look at more brands overhauling racially-insensitive products in Asia and Australia, MARQUES launching a LGBT and gender survey, Puma and Nike continue to duke it out, and much more. Read more

14 Feb 2020

India to reassess IP laws; Amazon tops brand intimacy ranking; Valentine’s fakes warning – news digest

In our latest edition, we look at fakes markets in China being closed during the coronavirus epidemic, Netflix suffering a blow in ‘choose your own adventure’ dispute, and much more. Read more

IP Offices

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21 Sep 2020

China eclipses United States in latest Asia-Pacific filing figures – with Alibaba top of the pile on home turf

WTR crunches the numbers at the leading Asia-Pacific trademark offices to reveal the extent of China’s emergence as a regional superpower, with Alibaba leading the way among both agent and corporate filers at its home registry. Read more

31 Jul 2020

Rush for CORONA marks at the Indian Trademark Registry

The business opportunities created by the coronavirus pandemic have led many pharmaceutical companies worldwide to file for trademarks containing the word ‘corona’. In India, there are 25 pending applications for such marks in Class 5, all of which were filed between March and June 2020. Read more

3 Jul 2020

Despite controversy over claimed coronavirus cure, CORONIL may be hard to fight at the Indian registry

The trademark registry could become the focus of attention as it considers applications for the claimed coronavirus cure's name. Read more

23 Jun 2020

Unauthorised branded face masks; Rolex opposition win; Josie Maran targets Amazon seller – news digest

In our latest edition, we look at Dreyer’s Grand Ice Cream renaming Eskimo Pie, the owner of a Chinese pharmacy chain sentenced to jail for the sale of counterfeit masks, and much more. Read more

Online

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9 Jul 2020

Bombay High Court considers reliefs to be granted in fake websites case

In a case involving fake websites registered by an unknown person, the Bombay High Court has considered which reliefs could be granted against domain registrars, banks and INRegistry. Read more

10 Jun 2020

Ex parte order issued during covid-19 lockdown restrains foreign owner from using domain name internationally

The Delhi High Court has issued an ex parte order restraining US company Brainlink from using the domain name ‘hindustan.com’ and from proceeding further in its declaratory suit against HT Media before a US district court. Read more

27 Feb 2020

Delhi High Court: Amazon entitled to rely on exhaustion defence and claim safe harbour protection

In a landmark decision, the Division Bench of the Delhi High Court has set aside a decision preventing Amazon Seller Services, Cloudtail and Snapdeal from selling the goods of direct-selling entities Amway India, Oriflame India and Modicare. Read more

12 Dec 2019

Meme theft: how legal should engage with social media marketing to handle repost crises

Social media marketing departments are reposting UGC on their own sites often with little or no credit to the original creator, which should ring alarm bells for trademark counsel. Read more

Portfolio Management

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6 Oct 2020

Delhi High Court modifies ex parte ad interim injunction due to concealment of material facts

In this dispute over the use of the trademark SUJATA in India, the fact that the plaintiff suppressed and concealed material facts to mislead the court appears to have weighed against it. Read more

7 Jul 2020

Bombay High Court grants ex parte relief against defendant’s use of pharma mark

In a case involving the use of identical marks for prescription-only medicines and non-prescription products, the Bombay High Court has found that there was a clear case of trademark infringement and passing off. Read more

5 Jun 2020

BMW successfully prevents use of DMW for electric rickshaws

German multinational company BMW has obtained an ad interim injunction from the Delhi High Court against a local manufacturer of electric rickshaws. Read more

12 May 2020

Bombay High Court: plaintiffs cannot claim proprietary rights over the words ‘Marathi Bana’

In Chaurang v Shemaroo Entertainment Ltd, the Bombay High Court has rejected an application by the writer, director and producer of the Marathi Bana show for an injunction restraining the defendants from using the words ‘Marathi Bana’ for a television channel. Read more

Trademark law

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22 Jul 2020

CORONIL trademark bid dealt a blow by the courts, but the fight is far from over

Although some expected an opposition due to CORONIL misleading the public as a cure for covid-19, the order is the result of another mark claiming priority. Read more

23 Apr 2020

Procedures and strategies for anti-counterfeiting:  India

Customs currently does not treat parallel-imported or grey-market goods as prohibited goods unless they are being smuggled or imported outside their original packaging. Read more

17 Mar 2020

Trademark procedures and strategies: India

In India, trademarks are protected through a combination of both specific statutes (eg, the Trademarks Act 1999) and ancillary legislation. Read more

8 Jan 2020

The risk factor in religious marks: a study of four major jurisdictions

An Indian court recently ruled that God's name was registrable as a trademark. We spoke to experts across four key jurisdictions about the different risks brands should be aware of before registering a religious name as a mark. Read more

Find an expert

Frederik Jocqué
Trademark and Design Attorney
Ghent, Belgium
Novagraaf