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

The UBER War

Uber, the name invokes the image of the ride sharing company, in a major chunk of the metropolitan population of the world. The services are also available in the city of New York, where there already exists a Trade Mark in the name of Uber Inc., a graphic design company.

As a matter of fact, the ride-sharing company holds two registrations in the names of UBER and UBERCAB for the Classes 9, 38, 39 and 42. The company has a reputation which now raises questions against the popularity of the Senior Trade Mark held by Uber Inc. There are many registered “UBER” marks spread across the spectrum of the classified goods and services.  

Consumer confusion in the domain of Trade Mark law derived from the second user, capitalizing on the goodwill of the early user. On the other hand, “reverse confusion” is the first user loses its’ control over the reputation and goodwill, where the consumers grow to believe that the senior user’s goods are associated with that of the junior user. The existence of the junior and the senior Trade Marks for the name “UBER” can now become an exemplar for Reverse Confusion.

The UBER Inc., for graphic design, could have proceeded with the claims of trade mark dilution, if only the mark would have had been famous. The junior user being the famous one is actually only to the disadvantage of the design company. Another issue which has created tension amongst the two companies, is the fact that the graphic design company has a listed telephone number, while the cab providers do not; misguiding many consumers of the ride sharing company to the senior user of the mark. It is only a matter of time before it unfolds if the two companies are pitted against each other in terms of counter claims. 

- Bagmisikha Puhan

What's in a Name?

Brand names matter a lot. A consumer’s confusion can only be put to rest after you feed him/her with a distinctive mark to distinguish between different goods and services. An intelligible Trade Mark Attorney/Lawyer can explain to you how it is better to coin a fanciful word like “Kodak” for Cameras; and an arbitrary word like “Apple” for computers; instead of thinking of a generic name like “Aqua” for bottled water.

A trade mark or service mark determines your claim to the characteristics that identify the goods or services that your business involves with, allowing the consumers to cite the differences between what is yours’ and what is that of the competitors’.

Some names have had what is known as “inherent distinctiveness” and so have got protection without much ado, like, Kodak, Exxon, etc. And, there of course is the concept of marketing, advertising and positioning of products and services in a manner, that the brand name is etched in the minds of the eager consumers. Trade marks (inclusive of service marks) which are names or geographical terms, have to prove that they have become distinct in the market, through substantial sale figures, and advertisements; and, have said to have acquired “secondary meaning” as a consequence.

What a business house does not want is for the brand name to become a generic name. Xerox has been vocal with their slogans and advertisements, with declarations like “you cannot ‘xerox’ a document, but you can copy it on a Xerox Brand copying machine”. Despite so many efforts from their end, dictionaries have oft quoted “Xerox” in their prints.

Whenever, you decide to venture into any business with a new trade mark, consult a Trade Mark Attorney or Trade Mark Lawyer in respect of selecting an appropriate trade mark which is free from any legal encumbrances. 

- Bagmisikha Puhan

Gucci Lost Opposition

In a recent turn of events, Gucci an Italian fashion and leather goods brand has opposed a UK trademark application for a device mark claiming it to be similar to their famous GG logo. But the registrar ruled that the said device mark lacks resemblance to the GG logo and the mark does not conflict Section 5(3) (of UK Trademark Act) for protectionof well-known marks. The applicant’s device mark was also applicable to similar goods such as clothing line etc.

 Courtesy: Gucci accessories, lyst.com

Gucci has registered its GG logo via Community Trade Mark registration in EU and UK. In UK it is a registered mark for over 50 years which was described as two G’s facing each other creating a symmetric mirror image. The basis of opposition by Gucci was based on this description. But the registrar disagreed on Gucci’s claim stating that the applicant’s device was more analogous to ‘human torso’. He also argued that the consumers will pay more attention to the device per se and the perception to the similarity of the marks will be little.

Although Gucci provided many evidences to prove its point, registrar stated that the Gucci has failed to prove that Gucci’s device mark has brought a significant distinction to their brand and products upon use. This led to Gucci’s unfortunate loss in the case.

So the question here is how much is too much? What amount of similarity between the device marks makes them similar and deceptive? Although, it is also important to note that Gucci has been changing its GG logo for the purpose of rebranding and advertising, so will a differently arranged  double ‘G’ applied for the similar kind goods create confusion among consumers as a rebranded Gucci’s logo? Perhaps this question can be best answered by the consumers themselves.

Authored by Sai Ratna Manjari

Posted By Aurobinda Panda

For Biswajit Sarkar – Advocates – IP Attorney