Wipro Consumer Care & Lighting has reportedly obtained an interim restraining a trademark infringement case against K.K. Lamps, a Delhi-based Company. While Wipro sells GLS lamps under the brand name ‘Safelite’, K.K. Lamps sold its product under the brand name ‘Safelife’ using similar packaging.
Section 42 of the Trademarks Act (India) applies to the assignment of a trade mark, whether registered or unregistered, not made in connection with the goodwill of the business in which the mark has been or is used.
The assignment shall not take effect unless the assignee applies to the Registrar for directions with respect to the advertisement of the assignment, and advertises it in such form and manner and within such period as the Registrar may direct.
The Act says that the timeframe within which this is to be done is: ‘not later than the expiration of six months from the date on which the assignment is made or within such extended period, if any, not exceeding three months in the aggregate, as the Registrar may allow.’
Explanation:
This Section does not apply to:
(a) an assignment of a trade mark in respect only of some of the goods or services for which the trade mark is registered accompanied by the transfer of the goodwill of the business concerned in those goods or services only; or
(b) an assignment of a trade mark which is used in relation to goods exported from India or in relation to services for use outside India if the assignment is accompanied by the transfer of the goodwill of the export business only.
Although Germany does not have anti-spamming laws, Microsoft won a case against a porn-spammer from Schleswig-Holstein who sent spam using falsified Hotmail accounts by basing its claim on trade mark (infringement) law and (unfair) competition law.
Through Class 46 and the Microsoft Press Release: http://www.microsoft.com/germany/presseservice/detail.mspx?id=532143
Eli Lilly and Company and Lilly Icos LLC v. 8PM Chemist Ltd
Patients within the USÂ bought Eli Lilly drugs cheaply outside the US. They placed an order in with a Candian company which then placed an order with a Turkish company which had genuine stocks of the drugs and would have a pharmacist check them after which the drugs would be sealed in brown boxes bearing the patients’ names and addresses. They were then sent to 8PM in England which would proceed to have the boxes sent to the US.
Eli Lilly sued 8PM for trademark infringment and was granted an interim injunction. 8PM appealed and the Court of Appeal (Lords Justices Rix and Jacob and Sir William Aldous) allowed the appeal.
Links:
[1] Judgment: http://www.bailii.org/ew/cases/EWCA/Civ/2008/24.html; [2008] EWCA Civ 24 (05 February 2008)
[2] IPKat: http://ipkitten.blogspot.com/2008/02/roundabout-trade-avoids-trade-mark.html
In the case of ITC Ltd. v. Punchgini, Inc, it was claimed that the trademark of Bukhara restaurant in New Delhi was being infringed by a restaurant name Bukhara Grill which had been opened in New York. [1] Sheppard Mullin says, “The New York State Court of Appeals concluded that while the “famous marks doctrine” itself is not recognized by New York law, New York law does provide protection to the owner of a famous mark by virtue of the owner’s prior use of the mark in a foreign country under a theory of unfair competition through misappropriation.” [2]
However, Thomas Zuber points out that ‘according to the Second Circuit’s recent ruling in ITC Ltd. v. Punchgini, Inc., No. 05-0933-cv, 2007 WL 914742 (2d Cir. March 28, 2007), there is no federal “famous marks†exception to the basic territoriality rule that the United States does not enforce trademark rights that exist only under foreign law’.
(The Ninth Circuit’s decision in Grupo Gigante S.A. de C.V. v. Dallo & Co., Inc., 391 F.3d 1088 (9th Cir. 2004) had earlier recognized the famous foreign trademark exception to territoriality).
Links:
[1] www.nycourts.gov/courts/appeals/decisions/dec07/165opn07.pdf
[2] www.intellectualpropertylawblog.com/archives/trademarks-and-trade-dress-court-finds-famous-foreign-trademarks-protectible.html
[3]www.ca2.uscourts.gov:8080/isysnative/RDpcT3BpbnNcT1BOXDA1LTA5MzMtY3Zfb3BuLnBkZg==/05-0933-cv_opn.pdf
[3] www.aipla.org/Content/ContentGroups/Issues_and_Advocacy/Amicus_Briefs1/20079/ITCbrief_Final_Revised2.pdf
[4] www.lawupdates.com/commentary/itc_ltd_v_punchgini_inc
[5] www.law.cornell.edu/nyctap/I07_0164.htm
Scrabulous is apparently a trademark and it’s been reported that the brothers had allegedly written to Hasbro for permission although they received no response from the company. The point being is that if that’s true, they obviously weren’t oblivious to IP issues.What amazes me is that, nonetheless, neither the brothers nor Facebook seem to have anticipated the possibility of this happening and taken steps to protect themselves (although Facebook does have pretty comprehensive rules for third party developers).
Link: http://www.businessstandard.com/common/storypage_c.php?leftnm=10&autono=310273