Trademarkdhaba

Frosty Treats, Inc. v. Sony Computer Entertainment America, Inc.

"Background"
Frosty Treats, Inc. is the name of "one of the largest ice cream truck street vendors" in the United States. Their trucks uniformly feature a "Frosty Treats" logo, typically surrounded by the logos of various frozen snacks sold by the vender. Another feature of the trucks is the "Safety Clown", an image of a clown pointing children towards the back of the vehicle. In the mid 1990s, Sony released Twisted Metal 2, a video game that allows players to wreak havoc on simulated streets with a variety of vehicles - including an ice cream truck prominently featuring a logo that says "Frosty Treats". The video game ice cream truck is driven by a crazed clown known as Sweet Tooth, one of many featured in the game.

"Lawsuit"
Frosty Treats, Inc. filed a lawsuit against Sony contending that the game infringed on the company's trademarks through the use of the phrase, "Frosty Treats", as well as similarities between the video game clown and the company's own safety clown. The U.S. District Court for the Western District of Missouri granted summary judgment to Sony and dismissed the case, holding that the name could not be protected because it was generic. U.S. District Judge Scott Wright stated in his May 19, 2005 dismissal that "the various depictions of the Sweet Tooth character in defendant's Twisted Metal games and plaintiff's Safety Clown are so dissimilar that no reasonable trier of fact could conclude that they are confusingly similar."[1] Additionally, the court noted that the safety clown could not be protected because it was functional; it directed children to cross behind the van rather than in front of it. Frosty Treats appealed the dismissal to the Eighth Circuit Court of Appeals on June 15, 2005.

Source net.

A registered trade mark is infringed if used in the course of trade by the person other than the registered proprietor or permitted user of trade mark. The infringement occurs because such mark used by the one other the registered proprietor or permitted user is likely to cause confusion in the mind of public or is likely to cause impression of association with the registered trade mark and such confusion is caused because of the identity of such mark with the registered trade mark with the registered trade mark as also the similarity of goods of services covered by such registered trade mark. Such confusion can also occur because of the similarity of such mark to the registered trade mark and the identity or similarity of goods or services covered by such registered trade mark. the confusion would also be caused because a such mark's identity with the registered trade mark as well the identity of goods or services covered by such registered trade marks.

Illustrative case laws on Trademark Infringement

The plaintiffs are registered proprietors of trade marks 'CASTROL' 'INDROL' 'INDROL' 'MONOGRAME' in respect of industrial oils and greases and also held copyright in INDROL device. Infringement was alleged on ground of deceptive similarity by the use of trade mark INDROL with similar colour combination, get up and lay out in connection with similar product, i.e. brake fluids. Interim injunction granted in favour of the plaintiff and the same was confirmed by the High Court (PTC 1995, 37).

TRADE MARK CASE LAW INDIA

A registered trade mark is infringed if used in the course of trade by the person other than the registered proprietor or permitted user of trade mark. The infringement occurs because such mark used by the one other the registered proprietor or permitted user is likely to cause confusion in the mind of public or is likely to cause impression of association with the registered trade mark and such confusion is caused because of the identity of such mark with the registered trade mark with the registered trade mark as also the similarity of goods of services covered by such registered trade mark. Such confusion can also occur because of the similarity of such mark to the registered trade mark and the identity or similarity of goods or services covered by such registered trade mark. the confusion would also be caused because a such mark's identity with the registered trade mark as well the identity of goods or services covered by such registered trade marks.

Illustrative case laws on Trademark Infringement

1. Plaintiff was selling cosmetic products under the registered Trade Mark "Lakme". Defended was using the Trade Mark "Like-Me" for the same class of products. It was held that there was striking resemblance between the two wards. The two words are also phonetically similar. There is every possibility of deception and and confusion being caused in the mind of the prospective buyer of the plaintiff's products. injunction was made permanent (PTC 1996,567).

Apple is attempting to trademark the word "startup", covering a range of products and services, in a bold application filed in Australia on 27 August.
The application -- first spotted by TM Watch -- was filed by the company's Cupertino headquarters alongside the Sydney branch of law firm Baker & Mckenzie. The application seeks to use the trademark in relation to retail store services; the maintenance, installation and repair of computer hardware and other devices; educational services, including classes, workshops and seminars, and the design and development of computer hardware and software. So pretty much everything Apple does then.
Apple has actually already filed for this trademark in 2011 in both China and the US. The company was granted a preliminary trademark pending a consultation period where people could object to the trademark. Not surprisingly, objections were filed. Apple has a window to respond to those objections in the US by 20 September.

The trademark application filed in Australia falls under the same international registration as the ones filed in the US and China. This allows Apple to potentially take advantage of the Madrid system, administered by the World Intellectual Property Organisation, whereby a company can register a trademark in one of the countries that signed the Madrid agreement and it will transfer easily to other countries.

Case name:- Société des Produits Nestlé S.A. v. Cadbury UK Limited

Background

Cadbury had applied trademark registration for the colour purple (Pantone 2685C) based on filed evidence of distinctiveness acquired through use of the mark, the application was accepted and published on 30 May 2008. Nestlé opposed the application arguing that the mark was not capable of being represented graphically and as such is not registrable as a trademark. Nestlé also argued that the description of goods was too broad.

Decision

The Court stated that Sections 1(1)(a) and 3(1) of the Trade Marks Act 1994 Trade Marks Act 1994 [2] were intended to implement Articles 2 and 3 of the Trade Mark Directive Trade Marks Directive [3] which also correspond to Art. 4 and 7 of the Community Trade Mark Regulation. [4] Therefore the Court relied on a series of judgments from the Court of Justice of the European Union (CJEU).
The judge concluded ultimately in Cadbury's favour:

Since single colours per se are, as a matter of European law, capable of being signs within Art. 2 ... then, to paraphrase a little the words Cadbury have used in the description of the mark, in my judgment the colour purple (Pantone 2685C) applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of chocolate, is capable of being a sign within Art. 2. [...]
Since on the evidence the public associate the colour purple itself with Cadbury's chocolate, Cadbury are entitled to a registered trade mark for that colour on the relevant goods and that is the mark they have applied for.

CFA Institute has reached an agreement with the Institute of Chartered Financial Analysts of India (ICFAI), and its affiliated universities, that resolves the trademark litigation between the organisations. While the terms of the agreement are confidential, each party will make a website announcement providing a limited number of details to their constituents. The parties will withdraw all pending court and administrative proceedings related to this dispute.

ROYAL ORCHID HOTELS LTD v. REGISTRAR OF TRADE
MARKS & ANR [IPAB]
OA/74 & 75/2009/TM/CH & M. P. Nos.125 & 126/2012 in
O.A/74 & 75/2009TM/CH

Js. Prabha Sridevan, Chairman & V.Ravi,
[Decided on 18/06/2013]

Trademarks Act,1999 - word mark “Orchid” of the Respondent - rejection of appellant’s application to register two trademarks containing the word “orchid”- whether correct - Held, No.
Brief facts :-

The appellant had applied for the registration of two trademarks i.e. words “Royal Orchid” and “Royal Orchid Hotels” taken as a whole. The respondent is the owner of the registered trademark
“Orchid”. The Registrar of Trademarks refused the registration of the two trademarks as sought by the appellant and hence the appellant had appealed against the order of the Registrar of Trademarks to the Intellectual Property Appellate Board.
Decision: Appeal allowed.
Reason
Here one mark is “Orchid” and the other mark is “Royal Orchid” or “Royal Orchid Hotels Limited”. The individual words are not distinctive by themselves, but the appellant does not claim exclusive right to the word “Orchid” or the word “Royal”. He seeks the registration of the words “Royal Orchid” and “Royal Orchid Hotels” taken as a whole. We are unable to see how the “Royal Orchid Hotels” is similar to “Orchid”. The Registrar clearly ignored the principle by tearing the word “Orchid” out the impugned mark as a whole and arrived at the conclusion that the adoption was dishonest. The respondent had totally ignored that the appellant had adopted Royal Orchid Hotels for his company’s name even before the respondent adopted the trade mark
Orchid.
The respondent’s objections have to be rejected since if nothing else, the appellant’s company name had become Royal Orchid Hotels Limited in 1997 pursuant to a resolution dated 1996. The respondent, who claims user only from January, 1997 cannot plead that the appellant was imitating their name. When the mark is considered in its entirety, we are of the opinion that the “Royal Orchid Hotels Private Limited” and the “Orchid” cannot be confused. Further the respondent’s Orchid label is with the depiction of flower. The class of customers is of the high income group and there is no likelihood of confusion especially in the instant case where the mark relates to service. Even if the mark related to goods bought off the shelf, we doubt if, the word “Orchid” and the “Royal Orchid” will cause confusion. We are not concerned with consumer goods but with services rendered in the hotel industry. Therefore both on the ground of honesty of adoption and likelihood of confusion, we are of the opinion that the impugned order must be set aside and it is set aside.

Source: CS-july

At TRADEMARK DHABA we are aimed to help effective Management and Protection of the Intellectual Properties in India including providing assistance in Creation thereof with the help of our creative team members.
We have adopted the word DHABA in our name, just to indicate that the services for Intellectual Property Rights, at our place, is quite accessible and affordable. We believe that the knowledge and services related to Intellectual Property need not be contained to few elite corporate houses only, due to high cost of legal services henceforth in India. In contrast, India is a country with billions of creative mind capable of creating huge Intellectual Resources for individual and collective growth of the country.
Therefore we aim to create awareness about the Intellectual Property Rights among the people in general by creation of knowledge pool and providing composite and comprehensive services in the Area of IPR at affordable cost.