Article
Trademark squatting – Jurisdictional perspectives
By Anoop Verma and R. Rajalakshmi
Territorial protection of trademarks often results in ‘squatting of trademarks’ in countries where the trademark does not have any presence or is not commonly known to the general public. This often leads to a reassessment of strategies and the adoption of new measures. The article in this issue of IPR Amicus notes the meaning of trademark squatting as given by the WIPO and states that if the original trademark does not enjoy cross-border reputation, it is difficult for a proprietor to protect rights in the trademark. Elaborately discussing India’s stand on trademark squatting, the authors highlight that India follows the ‘first to use’ concept and that the concept of a well-known trademark is formally recognized under the Trade Marks Act, 1999 in India. They also discuss few Court decisions for this purpose and take note of the certain specific developments in other countries. The authors conclude by stating that foreign brands must bear in mind that evidence of spillover reputation is mandatory in such cases...
Ratio decidendi
- Chocolates ‘James Bond’ a complete knock-off of ‘Gems’ – Delhi High Court notes similar packaging and confusion among children – Delhi High Court
- Patents – Divisional applications cannot be filed for claims not part of ‘claims’ – Delhi High Court
- Territorial jurisdiction of High Court in trademark dispute – Place of cause of action when not relevant – Madras High Court
- Commercial Court has jurisdiction to try disparagement suit intertwined with copyright infringement – Delhi High Court
- Trademarks – Allied/cognate goods in automobile sector – Confusion in use of marks ‘Sona’ and ‘Sonae’ – Delhi High Court
News Nuggets
- Website printouts when cannot be rejected as evidence
- Registration of mark ‘RELAXEDFIT’ allowed to proceed in respect of footwear
- Patents – Amendment during pendency of pre-grant opposition to be informed to opponent
- Design registration of an industry standard not permissible
- Trademark rectification – Suit for relief of passing off when not to be stayed
- E-commerce – ‘Latching on’ constitutes passing off
- Trademark disparagement – Advertisement stating ‘cheaper would be harmful’ when wrong
- Patents – Jurisdiction of Competition Commission
