Sound Board

Our thoughts and views on the practice of Intellectual Property in India and around the world.

The petitioner had opposed the trademark applications of Respondent No. 2 for the mark “Travel Fox,” alleging its similarity to Coaster Shoes' own registered mark, TRAVEL FOX. Despite filing the notice of opposition and following due process, the petitioner claimed that the counter statement from the respondent was never served on them, though a copy of the same was uploaded on the website of the Registrar of Trade Marks.

The petitioner, M/s. Tiger Food Ingredients (P) Ltd. (formerly M/s. Manju Chemicals Private Ltd.), filed a writ petition seeking a mandamus to direct the Registrar of Trade Marks to consider their name change application (Form TM-P) dated June 5, 2024. The company's name was changed following a certificate of incorporation issued by the Ministry of Corporate Affairs on January 31, 2024. The name change application was not acted upon by the Trade Marks Registry, prompting the petitioner to…

The Jan Vishwas (Amendment of Provisions) Act, 2023 which came into effect recently on August 1, 2024 has garnered significant attention across the country. The Act, having brought amendments to various Acts of our legislation, including those related to Intellectual Property (IP) and media laws among others, primarily aims to decriminalise the provisions – aiming to shift from punitive measures like imprisonment to more lenient penalties such as fines and pecuniary penalties.

In today’s age, brand protection is of utmost importance. Now more than ever, people recognize the value of protecting their brands even beyond the jurisdiction of their home country. While the process of securing trademark protection across multiple countries can appear onerous, the Madrid Protocol streamlines this process. The Madrid Protocol is an international trademark system that enables a trademark to be protected in several countries with a single application. As of date, a trademark…

The Office of the Controller General of Patents, Designs, and Trade Marks (CGPDTM) is now grappling with a significant challenge following a judgment passed by the Calcutta High Court in the case of Visa International Ltd vs. Visa International Service. The judgment has cast doubt on the legality of orders and decisions made by the Trade Marks Registry over the past two years. What started as a quick fix to address the long-standing staff shortage at the CGPDTM has now turned into a full-blown…

Unfortunately, even when Applicants submit evidence dating back to the claimed date of use, the Learned Examiners/ Hearing officers often raise objections regarding the same during the Examination stage. One of the most common objections raised during show cause hearings is regarding the acceptability and validity of the evidence submitted, wherein despite most documents being acceptable as per the relevant provision of law, they are frequently being deemed inadequate by the Hearing officers.

In a recent decision, the Delhi High Court addressed a petition challenging the abandonment of a patent application for a "Blind-Stitch Sewing Machine and Method of Blind Stitching." The petitioner sought to restore the patent application on the account of misconduct and negligence by their Patent Agent which resulted in their patent application being abandoned. Justice Pratibha M. Singh who had presided over the case, emphasized the need for a Code of Conduct for Trademark and Patent Agents to…

Recently, we had a case wherein our Client’s IR application was provisionally refused by the Indian Registry due to the existence of an already registered identical mark. We are well aware that there are circumstances where identical/ similar marks are registered by honest users at times, however, this case seemed to be different. Upon perusal of the conflicting application, the mark (which was identical to our client’s, who is a leading business entity in foreign jurisdiction but was yet to…

As brands have begun to increasingly rely on digital platforms to reach and engage with their target audience, the risk of unauthorized use of trademarks and the sale of counterfeit products has also grown. Unauthorized pages and posts on social media can dilute a brand’s goodwill and reputation and confuse consumers. This holds especially true when it comes to counterfeit products sold on e-commerce platforms which not only pose legal risks but also threaten customer safety and satisfaction.…

A recent judgment in the case of Mountain Valley Spring India Pvt Ltd v. Baby Forest Ayurveda Pvt Ltd has reaffirmed several critical legal standards in trademark infringement and redefined the “customer of average intelligence and imperfect recollection” test considering the evolution of customer awareness and brand identities. In this case, the Plaintiff, Mountain Valley Springs India Private Limited, who are the owners of the luxury skincare brand Forest Essentials, sought for an ad interim…