Tag Archives: Trademark Law

A Reminder for Online Retailers

Here’s one case that involves an online retailing businesses that is having a link with Trade mark Law – Jadebay Ltd and others v Clarke-Coles Ltd (t/a Feel Good UK) [2017] EWHC 1400 (IPEC).

However, overlooking the customary practice of online retailing methods, the Intellectual Property Enterprise Court followed the theoretical root of the Trade mark laws and over-turned such practices by upholding that‘re-use of a third party’s Amazon listing without consent to sell the same goods may, on appropriate facts, amount to trade mark infringement or passing off.

The factual matrix of this case lies as below:

In this matter there were two claimant, the first one was the statutory and common law owner of the Trade mark ‘Design Elements’ for the purpose of  “flagpoles plastic storage box garden furniture”, while the second Claimant was the sole licensee since 2011 to sell the products of the first claimant.  These products were also sold through online shopping portal namely – www.amazon.co.uk, via three listings created by the second claimant.

Usually, the common practice while listing products for sale on Amazon or any such kind of online portals are that each new listing is given a Unique Amazon Identification Number (ASIN). It is pertinent to note that an Amazon listing created by one party can be used by multiple sellers selling common product. Amazon then tends to promote the cheapest of the offerings by selecting them as the default seller, allowing consumers to review each listing in more detail.

Thus, in this case, the issue arose when the defendant listed its product under the listing created by the claimants, with a low price due to which they appeared as the default seller, attracting majority of sales from the said listing.

Interesting fact about this case is, that the claimants sued the defendants for trade mark infringement and passing off and did not even involve Amazon, who encourages sellers to use pre-existing generic ASINs where possible.

Arguments

The claimant focussed on the basic concept of rights of trademark. Firstly, the owner of the trademark has the right to prevent the third party from commercially using any sign (without the permission of the TM owner) that is ‘identical to the trade mark in respect of goods or services which are identical to those for which the mark is registered (double identity) (section 10 (1), Trade Marks Act 1994) (TMA) (section 10(1))’ or ‘ by such use of trademark that causes a likelihood of confusion or association on the part of the public (section 10(2)(b), TMA) (section 10(2)(b)).”

Secondly, the law of passing off a trade mark, which is considered as an element of Tort, the essential feature that is considered to attract this tort is the goodwill attached to the trade mark, such misrepresentation leads to likelihood of confusion among consumers due to which the claimant suffer damage as mention in the case of Reckitt & Coleman Products Ltd v Borden Inc [1990] RPC 341.

However, the defendant relied on the generality of the Amazon listing number. They claimed that since the listing was generic and did not refer to a specific brand, it could list its product under the same listing and that the brands of the competing products were significantly different as the defendant’s brand was “Feel Good UK”.

However, the claimant argued that due to the use of the same listing number namely “20ft aluminium flagpole “by Design Elements”, any consumer can link the defendant’s product as that of the claimant’s product.The defendants should have sold their products through another Unique Identity ASIN number.

The question was not whether the Defendant attached the sign or trade mark to the product or packaging itself, but whether the use of the listing in this way infringed (and/or passed off) the Claimants’ rights.

Judgement

The Intellectual Property Enterprise Court  accepted the claimant’s argument and  further observed that by having the same listing number and linking one’s goods to a competitor’s branded product listing would undoubtedly cause a misrepresentation and confusion among the consumers leading to Trademark infringement and passing off.

Conclusion

The present case has shown the online businesses a reality that the presence of Trade mark law is every where. It is another reminder that these businesses should consider their online marketing very carefully. Attaching products to an existing Amazon listing when the products are clearly not the same could potentially be an infringing act.  Moreover, as per the Objective of Trade Mark law, that is to avoid confusion in the market place, the decision of the court was not strange and perhaps was very apt.

Author: Ms. Pratistha Sinha, Intern at Khurana and Khurana Advocates and IP Attorneys and can be reached at anirudh@khuranaandkhurana.com.

References:

[1] https://www.lexology.com/library/detail.aspx?g=55745fd6-0397-4222-9d31-a3b3a8447e19

[2] https://www.rpc.co.uk/perspectives/ip/flagging-the-risk-of-a-new-type-of-trade-mark-infringement

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MYANMAR: NEW TRADEMARK LAW EXPECTED TO BE ENACTED IN 2017

For the past few years, the nation of Myanmar has been proactively working on the implementation of its first ever formal trademark law, keeping in mind that the new law will overhaul the nation’s legal framework to encourage and motivate the industries and businesses to come and invest and grow in the country [1].

The implementation of this new Trademark law has been projected for this year. Hopefully once this new trademark law becomes effective, the practices which are currently followed by the practitioners i.e. the registration of Declarations of Ownership at the Registrar of Deeds and Assurances, which is followed by the cautionary notices published in the newspaper, will then be replaced by the new modern Trademark system which will stick to International standards set by WIPO.

The new Trademark law will prove to be greatly beneficial to the brand owners and businesses as the new law will bring proper clarification to the whole trademark application process. Since the Myanmar market is on an economic rise, the new trademark law, once implemented, will be a welcome move for the businesses and their brands, thereby encouraging further growth and prosperity of their brands in Myanmar.

The New Trademark System

The new Trademark Law will be based on the first-to-file principle. The new law will have the following features:

  1. The new Trademark law will include following marks which can be protected [2]:
  • Smell and touch signs,
  • Visual marks, and
  • Perceivable sound.

The above mentioned marks are categorized further into service, trade, collective marks, and certification. Registration as a group/collection of marks will also be allowed.

  1. The new law will allow both domestic and global/foreign brand owners to apply for registration of trademarks in Myanmar. Having said that, the global/foreign applicants will have to appoint an authorized agent and this agent must be domiciled in Myanmar [2]. This agent will then represent these foreign mark owners at the Myanmar Intellectual Property Office on their behalf.

The new Trademark law will allow the trademark applications to claim priority from foreign applications/registrations.

  1. The registration process under the new trademark law will include [2]:
  • Filing of an application (where, the application must be either filed in either English or Burmese and must have a Declaration of Intention to Use)
  • Substantive examination and other formalities
  • Publication for opposition and
  • Issuance of certificate.
  1. The validity duration of the registered trademarks will be 10 years from the effective filing date and after each renewal will extend the validity by 10 years [2].
  2. The new Trademark law will also have a provision for submitting a request for a non-use cancellation against those registered trademark which are not in use for a period of 3 consecutive years [2].
  3. The new Myanmar Intellectual Property (IP) office will be created [1] to look after the operations in the new Trademark law. Additionally, new Intellectual Property Courts specialized in handling trademark litigations will be established.
  4. Enforcement:

The new Trademark law will have both civil as well as criminal liabilities for potential infringements in Myanmar.Such liabilities as far as Trademark infringement in Myanmar is concerned will have a criminal offence punishable by maximum up to 3 years of imprisonment or fines or both [3].

Another feature which is a welcome move is the possibility that a trademark owner can enforce its rights through customs. In other words, with enough reasons for alleged import, export or transit of infringing goods into, out of or via the country, the trademark mark owners will be allowed to apply to the Department of Customs for a detention or suspension order.

  1. Transition from the current to new trademark law

All those owners who have their trademarks registered under the current trademark law will be required to, within the period of three years, re-register under the new law [4].

About the Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

References

[1] http://www.wipo.int/edocs/mdocs/aspac/en/wipo_tm_tyo_2_16/wipo_tm_tyo_2_16_3_4.pdf

[2] http://dbav.org.vn/trademark-protection-in-myanmar-and-the-new-draft-trade-mark-law/

[3] www.wipo.int/ip-development/en/pdf/asean/myanmar.pdf

[4] Griffiths, AJ Park -Amanda. “New Trade Mark Laws for Myanmar Coming in 2017.”Lexology.Lexology, n.d.

 

Indonesia: Amendments in Geographical Indications law &Trademark law

Indonesia: Amendments in Geographical Indications Law &Trademark law

 

October 27, 2016 was the day when the Indonesia Government passed the new law related to both trademarks and Geographical Indications [1] which will replace the Old Trademark Law (Law No. 15 of 2001 on Trademarks) and expected to be enacted soon after the assent from the President. Lots of amendments related to registration, protection and enforcement have been incorporated into the new Geographical Indications and Trademarks law.

 

The amendments in the new Trademark Law can be categorised as [2]

 

  • Prosecution— Process
  • Prosecution—Substance
  • Enforcement (Litigation)

 

Few amendments are yet to become effective and will take a year or so for their effectiveness. Therefore, it is sure that more changes will be visible in future as far as the Trademark law is concerned.

 

The below detailed description provides you brief details about the changes in the new trademark law:

 

(a) Prosecution—Process [3]

 

  • It is now possible to electronically file trademark applications. In other words filing new trademark applications is no longer illegal.

 

  • There is no need to submit signed copy of Statement of Entitlement forms at the time of filing of trademark application. Upon submission of a trademark application form along with the depiction of the trademark with stipulated fee, the respective trademark will be granted a filing date. However, the previous practise of submitting the mentioned documents is still prevailing.

 

  • Another amendment in the procedural stage of the prosecution is that the opposition period will now take place before substantive examination. Therefore, once the trademark application has been filed, they will proceed immediately to publication for a two-month opposition period. Previously, the opposition period was three months.

 

While these amendments were incorporated to fast track the examination & prosecution process, it also enables in increasing number of bad faith applications that are published for opposition and/or registered. Bad faith applications are an ongoing problem in Indonesia and previously, at least some of them were weeded out during the examination stage. Now, with publication taking place first, i.e within 15 working days after the filing date which means that practically every application that is filed will be published. Hence, it is of utmost importance that the whole prosecution (procedural) stage of the trademark application is monitored closely.

 

(b) Prosecution—Substance [3]

 

  • According to the new trademark law the definition of what can be included in a trademark has been somewhat expanded. Now, 3-dimensional trademarks marks, sound trademarks and holograms can be accepted for registration and filing in Indonesia.

 

  • A new amendment has been made in the law i.e. two additional criteria for rejecting a trademark application has been included. These two rejection criteria are (i) misleading or (ii) deceptive elements. Additionally, the new amendment states that a trademark application can be rejected based on an earlier-filed pending application.

 

  • According to the new law registration of generic trademarks is allowed only if they are combined with some distinctive elements.

 

(c) Enforcement (Litigation) [4] [5]

 

  • According to the new trademark law in litigation process a trademark cancellation action can now be performed based on a conflict with a prior geographical indication (GI) and/or traditional knowledge (TK) element.

 

  • According to the amendment additional provisions have been provided on preliminary injunctions. The target behind for incorporating such provisions in the new law is to increase their use. However, it remains to be seen if this will occur given the requirement, among others, for the plaintiff to pay a bond to the Court equal to the value of the allegedly infringing goods, which would be forfeited if the petition is not successful.

 

  • The new amendment has nearly doubled the penalties (criminal) for all types of infringement.

 

 

  • The new amendment establishes protection for unregistered but famous trademarks by specifically stating that such marks can form the basis of a trademark infringement claim or can be used to cancel a registered mark.

Additionally, applications that originate in Indonesia can only be made once the applicant obtains a trademark registration in Indonesia as the basis of the international trademark registration.

About the Author :Shilpi Saxena, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

References

 

[1]http://www.wipo.int/edocs/mdocs/aspac/en/wipo_tm_tyo_2_16/wipo_tm_tyo_2_16_3_1.pdf

 

[2] “Indonesia: New Trademark Law.” Indonesia: New Trademark Law. IP Coster, 7 Nov. 2016. Web.

 

[3] “Indonesia’s New Trademark Law – An Overview of the Changes.” Indonesia’s New Trademark Law – An Overview of the Changes | Tilleke&Gibbins.N.p., 11 Jan. 2017. Web.

 

[4] Redfearn, Nick. “Indonesia’s New Trademark Amendments – a Summary.” Rouse – Indonesia’s New Trademark Amendments – a Summary. Rouse The Magazine, 3 Nov. 2016. Web.

 

[5] Lovita, Tania. “Indonesia’s New Law on Trade Marks and Geographical Indications.” Rouse – Indonesia’s New Law on Trade Marks and Geographical Indications. Rouse The Magazine, 31 Oct. 2016. Web.