Article
Emerging preferences in trademarks amidst COVID-19 – Analyses of registrability and other related issues
By Anusha Das
Since February 2020, the Covid-19 (also known as Coronavirus) pandemic has been a major talking point and consequently many pandemic referenced words are being used as trademarks and are being filed for registration at Trademark Registries worldwide. The article in this issue of IPR Amicus analyses the various registrability issues pertaining with ‘Covid’ or ‘Corona’ referenced trademarks filed in India and other related issues that may pose difficulties in seeking the registration. It discusses at length Sections 9(1)(a), 9(1)(b), 9(2)(a) and 11 of the Trademarks Act, 1999 while also analyzing impact on the already registered trademarks and registered company names, rise of fraud and phishing activities using Corona/Covid related domain names, and various steps taken by USA and China regarding examination of trademark filings related to the pandemic. According to the author, it will be interesting to see if Indian Trademark Registry also comes up with new guidelines for examination of similar pandemic referenced trademarks...
Ratio decidendi
- No passing off by use of words ‘Magical Masala’ allegedly similar to ‘Magic Masala’, both used for same food product – Madras High Court
- Trademarks ‘LABEBET’ and ‘LULIBET’ are phonetically, visually and structurally similar – Delhi High Court
- Trademarks – No locus to file petition under Section 124 if no pleading made on invalidity of mark – Madras High Court
- Civil Court’s jurisdiction barred in copyright suit arising from insolvency resolution plan – Delhi High Court
- Trademarks – Importance of prior registration; Interim relief when similar suit by defendant pending in another Court – Delhi High Court
- Domain name registrar cannot block access to domain name – Can only be asked to suspend registration till end of registration period – Bombay High Court
News Nuggets
- Trademarks – Statements in media regarding evaluating legal action, amount to threat
- ISKCON is a ‘well-known’ trade mark in India
- Taking suit for trial while keeping interim relief application pending
- Combination of a generic word with .com when not generic
- Patents – Teaching enabling skilled person to make some product and not all within the scope of claim not passes ‘sufficiency’ test
- Trademarks – Non-raising of plea of invalidity in written statement, fatal
