Thursday, February 19, 2015

Microsoft is a Well-Known mark now; now declared!

Much debate revolves around which should be treated as a well-known mark, and which does not qualify for such “extended” protection. In a case of its own kind, the Delhi High Court has let Microsoft enjoy the celebrated status of being “well-known” amongst the public en masse.

The Plaintiff’s contentions that the company enjoys stellar reputation across the world, and enjoys a market at a global level, boasting of equally great volumes of usage have yielded in punitive damages being awarded in an ex parte case. With heavy investments having flown from the company into advertisements and brand management, the brand name is now exclusively identified and associated with the company.

The court relying on an earlier Supreme Court judgment in N R Dongre v. Whirlpool Corporation has held that Microsoft is a “well-known” trade mark, and that no one else is entitled to use the mark in a similar or dissimilar business as the mark had come to acquire unique goodwill and reputation.

The Court went on to hold that awarding punitive damages, is an appropriate vehicle for deterring infringers from engaging in illegal trade practices in their greed for business. The Court has awarded Rupees Two lakhs in terms of compensatory damages, Rupees Three lakhs in the form of punitive damages and another Fifty Thousand Rupees as costs to the suit.

With this, the brand name Microsoft joins the elite list of “well-known” marks, as maintained by the Registrar of Trade Marks. 

- Bagmisikha Puhan

Wednesday, February 11, 2015


Recently, the beverage giant Coca-Cola sought to register two hashtags as trademarks namely #cokecanpics and #smilewithacoke. These hashtags are being used on Twitter in connection with the company’s soft drinks. The company used the hashtag #cokejourney on Twitter to promote personal development among Coca-Cola fans.

Hashtags consist of the hash symbol (“#”) followed by a word or phrase. Hashtags are a useful way to categorize conversations within multiple platforms, including Twitter, Facebook and Instagram. A user clicks on the hashtag and can see the content posted by other users with the same hashtag.

Coca-Cola is not a pioneer in this area. There have been other companies who have applied to register hashtags as trademarks to protect their online campaigning. In 2014, a UK cheese company by the name Wyke Farms. They had sought to register an online competition ‘Free Cheese Friday’ as a trademark. The trademark is used only to protect the company’s online marketing campaigns.

The question that arises here is whether Coca-Cola will be able to register these two hashtags as trademarks. Hashtags can be registered like any other mark and the traditional rules apply. It certainly will be able to do so and it will be subject to how it plans to use these hashtags.  

- Nayanika Singhal

Monday, February 2, 2015

A Dotty Issue

A common problem ailing the fashion industry is copyright infringement over designs of clothing and footwear. Particularly, when retailers abroad create a piece of clothing which he might consider artistic and unique in one part of the world but in truth is already being protected under the Copyright laws in another far flung part of the world. Since ignorance of the law is no defense, these retailers have to pay the price, sometimes quite literally, for something they thought innocent.

The Olem Shoe Corp. v. Washington Shoe Corp is one such case. Olem Shoe Corporation (“Olem”) infringed Washington Shoe Company’s (“Washington Shoe”) copyrights in polka dot and zebra stripe women’s rain boot designs. The Eleventh Circuit Court relying on the certificate of registration determined that Washington Shoe’s copyrights for polka dots and zebra-striped designs are valid.

The question that arises here is of ‘willful infringement’ and if in such a case the infringer is liable to pay additional penalties. Infringement or active inducement of infringement is willful when it is done deliberately and intentionally, and with the knowledge of the existence of a copyright. The Eleventh Circuit Court held that Olem’s infringement was not willful, and thus not subject to enhanced statutory damages. The Court determined that Washington Shoe could not establish willfulness on a theory of Olem’s actual knowledge, because “there is no evidence that Olem knew of Washington Shoe’s copyrights and chose to violate them.” 

The case demonstrates that even simple designs may be protected under the law. It also demonstrates that ignorance on the part of a retailer will not protect him from copyright infringement liability.

-- Nayanika Singhal

Noodle Restaurant in a Soup

The city of San Francisco hosts two restaurants namely ‘Chubby Noodle’ and ‘Fat Noodle’. When the owners of Chubby heard of a restaurant to be named ‘Fat Noodle’ they sued them for trademark infringement. Chubby claimed that Fat Noodle was “confusingly similar” to its trademarked ‘Chubby Noodle”.

Chubby in its claims alleged that the words ‘chubby’ and ‘fat’ are in fact synonyms and notes that both restaurants’ logos incorporate a stylized bowl with noodles in the bowl. Fat Noodle, on the other hand, claims that the concept for the restaurant was conceived in 2008 which was long before Chubby existed.

Now if the aim of Chubby is to block all restaurants with their names which are synonyms of chubby, it is petty and silly to say the least. The objective of trademarks is not to breed pettiness but to actually protect unique creations. The San Francisco courts will have a huge “chow down” in their Courts soon.

-- Nayanika Singhal