Delhi HC Orders Amazon to Pay $39 Mn to Lifestyle Equities for Trademark Infringement

The Delhi High Court has ordered Amazon to pay $39 million (approximately ₹340 crore) in damages to Lifestyle Equities for infringing on its 'Beverly Hills Polo Club' trademark.

The court found that Amazon Technologies and others used a deceptively similar mark on apparel and other products sold on their platforms. The case was filed by Lifestyle Equities in 2020, and the court issued an interim injunction in October 2020, prohibiting Amazon and others from using the infringing logo.

The detailed order from Justice Prathiba M Singh is awaited.

The court issued an interim injunction in October 2020, prohibiting the use of the infringing logo and instructing Amazon Seller Services to remove the infringing merchandise. Amazon Technologies failed to appear in court and was prosecuted ex-parte.

Amazon Seller Services was removed from the list of parties as they agreed to remove any future listings of infringing products.

Cloudtail India, involved in selling the infringing products, acknowledged its liability and proposed a settlement. The court awarded damages of ₹4,78,484 against Cloudtail, representing 20% of the revenue from infringing products.

This ruling highlights the importance of trademark protection and the legal consequences of infringement.

Amazon has faced several trademark infringement cases over the years, and their responses have varied depending on the specifics of each case.

In 2017, Birkenstock, the German footwear company, accused Amazon of selling counterfeit products on its platform. In response, Birkenstock decided to stop selling its products on Amazon. Amazon took measures to improve its anti-counterfeiting efforts, including enhancing its Brand Registry program to help brands protect their intellectual property.

In 2020, Salvatore Ferragamo, the Italian luxury brand, filed a lawsuit against Amazon for selling counterfeit Ferragamo products. Amazon worked with Ferragamo to identify and remove counterfeit listings and took legal action against counterfeiters. This collaboration led to the seizure of counterfeit goods and the shutdown of counterfeit operations.

In 2019, Nike decided to stop selling its products directly on Amazon, citing concerns over counterfeit goods and unauthorized sellers. Amazon responded by enhancing its anti-counterfeiting measures and working with brands to improve the authenticity of products sold on its platform.

In general, Amazon has taken steps to address trademark infringement by improving its anti-counterfeiting measures, collaborating with brands to remove counterfeit listings, and taking legal action against counterfeiters. However, the effectiveness of these measures has been a subject of ongoing debate and scrutiny.

Apple Lost Legal Battle Against Huawei on Use of Trademark

Apple has lost a legal battle against China's Huawei to block using the 'MatePod' name as its earbuds device. Last year in January, Huawei filed a trademark application at EUIPO (European Union Intellectual Property Office) and UK IPO, for the name ‘MatePod’ with the classification including headsets and earphones.

According to a report in the South China Morning Post, the iPhone maker opposed the Shenzhen-based Huawei`s use of the "MatePod" brand in the earphone category "on the grounds that it was similar to Apple`s own trademarks for the terms Pod, iPod, EarPods and AirPods". However, the Trademark Office of the China National Intellectual Property Administration (CNIPA) found “insufficient evidence” to prove Huawei’s applications infringed upon Apple’s branding.

According to CNIPA, Apple argued that Huawei "maliciously copied" its trademarks, "which could have a negative impact on society".

The Chinese authority, however, did not find Apple`s argument compelling.

The trademark authority said that there was "insufficient evidence" that proved Huawei`s applications to be copies.

As per the report, Huawei has also been granted the MatePod trademark, although, Apple still has the right to file for additional appeals to CNIPA to go back on this decision.

Apple shipped around 72.8 million units of AirPods last year, dominating the market for true wireless headphones with a 31 per cent share, according to Counterpoint Research.

However, the global market for TWS (True Wireless Stereo) hearables saw tepid QoQ growth in Q2 2021. Apple lost considerable share in both sales volume and value despite big price drops on the AirPods.

To Protect 'Khadi' Brand Globally, India Files Trademark Registrations in 40 Countries

KVIC Secures Trademark Registrations in Bhutan, UAE & Mexico

Files Applications in 40 Countries to Protect Brand “Khadi”

Khadi and Village Industries Commission (KVIC) has recently secured trademark registrations in three countries – Bhutan, UAE and Mexico – a big stride towards protecting the identity of brand “Khadi” globally. KVIC is a statutory body formed in April 1957 by the Government of India and is under the ownership of Ministry of MSME.

Apart from these 3 countries, KVIC’s trademark applications are pending in 40 countries across the world that include the USA, Qatar, Sri Lanka, Japan, Italy, Australia, New Zealand, Singapore, Brazil and others.

While KVIC obtained the latest trademark registration in Bhutan on 9th July; trademark registration was granted in UAE on 28th June. With this, KVIC has succeeded in securing trademark registration for the first time in a Gulf country. Earlier, KVIC got the trademark registration for “Khadi” in Mexico in December 2020.

So far KVIC was having Trademark registrations for the word mark “KHADI” in 6 countries namely Germany, UK, Australia, Russia, China and EU where trademark registrations were granted in certain classes. However, with recent trademark registrations in Bhutan, UAE and Mexico, the number of such countries has gone up to nine. In these countries, KVIC has got registrations in various classes that pertain to Khadi fabric, Khadi readymade garments and village industry products like Khadi soaps, Khadi cosmetics, Khadi incense sticks among others.

It is for the first time in the history of KVIC that sustained efforts have been made in the last 5 years to protect the brand "Khadi" which was given to us by none other than Mahatma Gandhi.

Earlier this year, KVIC launched Khadi India’s official e-Commerce website having over 50,000 products under more than 500 varieties and various categories of locally made Khadi and Village Industries products.

KVIC Chairman Shri Vinai Kumar Saxena said these trademark registrations will prevent any misuse of the brand name 'Khadi' globally. He said in recent years, Khadi’s popularity has seen a massive growth in India and abroad due to Prime Minister Shri Narendra Modi’s appeal to adopt Khadi. It has, therefore, become very important for KVIC to protect the identity of Khadi and safeguard the interest of consumers and lakhs of Khadi artisans who are manufacturing genuine Khadi products.

The development assumes great significance as there have been instances of some private local entities in countries like Mexico and Germany seeking trademark registration for brand name “Khadi” in their respective countries. In Mexico, KVIC challenged the trademark application of “One Foundation Oaxaca Ac” which had applied for the 'Khadi' logo. However, the firm did not challenge KVIC’s objections and trademark registration for the word '/Khadi' and 'Khadi' logo was granted in favour of KVIC.

Similarly, in Germany, KVIC challenged a local company - Best Natural Products GmbH ("BNP"), which in 2011 already got prior rights in the mark “KHADI” and related marks in EU and other countries in different classes. After long legal battle and negotiations through the Diplomatic channel with the help of the Ministry of External Affairs, BNP has expressed its willingness to settle the trademark disputes amicably with KVIC.

Last year in September, KVIC mandated e-commerce firms like Amazon, Flipkart, Snapdeal and others to remove over 160 web links selling products in the brand name of “Khadi”. KVIC served legal notices to over 1000 firms using the brand name “Khadi India” to sell their products and thus causing damage to its reputation and the loss of work to Khadi artisans.

Minister Gives Brief Details on Steps for Granting Trademark under Startup India

The Department for Promotion of Industry & Internal Trade (DPIIT), in order to facilitate trademarks for Startups, provides 50 % concession in statutory fees for filing trademarks applications. Also, under the startup facilitation scheme, a list of facilitators is provided at Trade Marks Offices’ website (www.ipindia.nic.in) whose services may be availed by the startups for application for registration of trademark and the professional charges of such facilitators is reimbursed by the government.

A trademark application is processed in accordance with The Trade Marks Act, 1999 and The Trade Marks Rules, 2017. 

The information ( below under) are brief steps/stages for granting a trademark and it was  given by the Union Minister of Commerce and Industry, Shri Piyush Goyal, in a written reply in the Lok Sabha today.

1. Application can be submitted offline or electronically through comprehensive e-filing module,
2. After receipt of the application, the application is queued for examination, 
3. During the examination, applications are examined and an examination report is issued to the applicant with or without objections as per law. Presently examination is being done in about one month’s time from the date of filing. 
4. If no objection is noted as per law, the application moves to publication. After publication of the application details in Trade Mark Journal, any person may file opposition against the published mark within 4 months. 
5. If any objections are noted, the applicant is required to submit his response within one month from the receipt of examination report. 
6. If response is received, the same is considered by the authorised officer and the application is accepted or refused after providing due opportunity of hearing to the applicant. 
7. After acceptance and publication of the application in Trade Mark Journal, if no opposition is received within the prescribed period of 4 months from the date of publication, registration certificate is issued to the applicant within three weeks from the expiration of 4 months’ statutory period. 
8. However, if the application is opposed by any person within 4 months of publication of the application, the opposition is required to be disposed in accordance with due process of law, which is a quasi-judicial proceeding. 

The registration certificate for trademark is normally granted to the applicant within seven months from the date of filing of application, if no office objections are noted in examination and no opposition is received after publication of the trademarks application in the Trade Marks Journal. However, examination is being done in around one month time from the date of filing of the trademarks application. 

There is no strict time limit for granting a trademark, since the procedure for trademark registration is a quasi-judicial process as per the Trade Marks Act, 1999. Internal guidelines are issued from time to time for quick disposal of applications, and, if any deliberate dereliction of duty is found on the part of any officer, appropriate action is taken as per the CCS Rules.

Things To Keep In Mind When Selecting A Trademark For Startups

What is in a name….? Shakespeare once said. Well in today’s age it could be a few millions or billions of dollars. So a question that often comes in the mind of a startup/entrepreneur generally is …. What kind of a brand name should I choose that helps me rake in millions of dollars? Well the answer is quite simple… you must adopt a brand name that is distinctive and has a strong recall value...To help you answer that, we have listed below some points to ponder on when choosing a brand name;

1. The brand name should not describe the products/services being offered:
   
   One of the biggest myths going around these days is that a good brand name is one that allows the consumers to identify the nature of the products or services being offered by a Company. Well what startups and new companies adopting descriptive brand names do not realize is that when they adopt brand names which consist of words commonly used in their business circle to describe the products or services they offer they are weakening their brand value. The primary function of a trademark is to help consumers distinguish the goods or services offered by one entity from those of other entities. If the brand name being adopted is a word commonly used by entities to describe the qualities, characteristics, nature of the products/services they offer then they will be unable to stop other entities from using the same word to describe their products/services for e.g. Choco Treat in respect of chocolates and chocolate based confectionery; American Airlines for airlines etc. Brand names which are descriptive of the nature or characteristics of the products/services they offer do not generally proceed to registration as no entity can claim exclusive rights over words which are commonly used by other traders in that business to describe the products or services they offer. Hence, descriptive brand names are the weakest brand names to have.




2. The brand name could be suggestive, arbitrary or coined:
   
   While a Company or startup should not adopt brand names which are descriptive of their products or features they could adopt brand names which are suggestive e.g. MICROSOFT (suggestive of software for microcomputers), NETSCAPE (suggestive of software which allows traversing the "landscape" of the Internet). Suggestive trademarks do not directly describe the nature of the products and require some imagination, thought, or perception to reach a conclusion as to the nature of the goods.
   
   The strongest trademarks are made of words which are arbitrary and coined. Arbitrary trademarks are those which are commonly used dictionary words but which have no co-relation with the goods or services being offered under the trademark e.g. Apple-Computers, Orange-Mobile, Mango-Clothes. Coined or Invented Trademarks are those marks which have no meaning e.g. Kodak-Camera, Exxon-oil and gas company. If we were to look at the Top 10 brand names as per Forbes…you will notice that they have an extremely high recall value and have no direct correlation or connection with the goods/services they offer e.g. Apple, Google, Microsoft, Facebook, Amazon, Disney and these are either suggestive, arbitrary or coined brands.
   
   It is, therefore, advisable to adopt a brand name that is coined/invented for the simple reason that if any other entity adopts a brand name which is identical or deceptively similar to the invented/fanciful brandname even in respect of dissimilar goods or services they will could be liable for trademark infringement or passing off because they will have no reasons to justify adopting the brand name which has no meaning.



3. Conduct a pre-filing search:
   
   Once an entity has shortlisted a brand name to be used in respect of the products or services they wish to offer the next important thing they must do is to conduct a pre-filing search. The importance of a pre-filing search is to ascertain the availability of the brand name as a trademark i.e. to identify if there is any other entity that has already adopted a trademark which may be identical or deceptively similar to the brand name that the entity wishes to adopt as its trademark. If upon conducting a search no identical or similar trademark is revealed then the entity can proceed with filing the trademark application to register the brand name and commence marketing or promoting the products/services under the brand name. It is advisable to conduct a pre-filing search to ensure that the entity does not spend substantial money in promoting the brand just to be sued by another entity that had adopted a similar brand name in respect of same goods earlier in time.

These are some preliminary points that entities must keep in mind while selecting their brand name.