Ta Ta, WIPO. New Candidate for Worst UDRP Decision Ever [WIPO]

An Indian company is taking a domain battle to court after a WIPO domain panelist handed its domain owner to conglomerate Tata Sons. The domain at issue is OKTaTaByeBye.com, a travel web site based on the colloquial saying “Ta Ta”, as in bye-bye or see you later. OKTaTaByeBye.com is run by a large online travel company that operates MakeMyTrip.com.

TaTa Sons stated in its complaint that “the Respondent has not shown any demonstrable preparation to use the domain name in connection with a bona fide offering of goods and services.”

OKTaTaByeBye refuted that in its response, stating that the site is a travel journal and community site. A look at historical DomainTools thumbnails shows that the site has been operating since at least 2006 with active traveler discussion boards.

But the response by WIPO panelist Pavan Duggal is almost humorous in nature. Despite the overwhelming evidence presented by OKTaTaByeBye.com that it is a legitimate, online travel community, Duggal focuses on on how the site links back to the company’s MakeMyTrip.com site, where people can book trips online. This, according to Duggal, shows that OKTaTaByeBye.com is actually trying to use TaTa’s trademark to “fish” for new customers to its MakeMyTrip.com site. Apparently operating an online travel community that supports a related web site is not OK.

The company is discussing the fight on its blog in a post that has received 1,256 comments.

Courtesy: Domain Name Wire

Indian MDH loses to Pakistani MDH in website dispute case [WIPO]

Leading masala-maker Mahashian Di Hatti Ltd, popularly known by its brand name MDH, has lost a website address dispute case against a Pakistani firm engaged in a similar business at the World Intellectual Property Organisation.Mahashian Di Hatti had approached the Geneva-based WIPO Arbitration and Mediation Center objecting the ownership of an Internet site 'mdhfoods.com' by Pakistan's MDH Food Company.

The Indian firm contended before the Center that disputed domain name is identical and confusingly similar to its MDH mark, since it incorporates the mark in its entirety and the addition of "foods" does not detract from its distinctiveness.

Software Company [Rosetta Stone] Sues Google for Trademark Infringement [United States]

Rosetta Stone, maker of the popular foreign language software, filed a federal trademark suit against Google in Virginia Friday, alleging that one of the Web giant's major advertising programs allows companies to confuse consumers.

The suit, filed by Gibson, Dunn & Crutcher partner Terence Ross at the U.S. District Court for the Eastern District of Virginia, is just the latest to target Google for its AdWords program, which lets companies buy advertisements that run alongside its search engine results. The ads are triggered by certain keywords, and show up as "sponsored links."

According to the complaint, since 2004, Google has let companies attach their ads to trademarked keywords they do not own. So a search for Rosetta Stone might bring up the company's official Web site, as well several paid advertisements for its competitors. Google also allows companies to use those trademarked terms in the headlines of their ads.

Rosetta Stone's suit accuses Google of allowing companies to "free ride" on its brand and of "hijacking" consumers by confusing them into clicking on the wrong sites.
"Google either is misleading or will mislead consumers in innumerable different ways," the complaint states. "Accordingly, it is impossible for Rosetta Stone to cure this problem merely by pursuing remedies against Google's advertisers alone."

Google has been hit with a string of similar lawsuits over its AdWords program. In April, the 2nd U.S. Circuit Court of Appeals ruled that one of those suits could go forward after a lower court had dismissed it. The appeals court found that Google was using the trademarks in an act of commerce, giving the trademark owners the right to file a claim.

With that legal issue resolved, Gibson's Ross said that juries will have to decide whether Google's practice is likely to confuse consumers.
"There's not going to be any quick resolution of any of these" suits, he said. "You could get different outcomes from different juries over time."

Google itself appears to have expected the legal trouble. In its complaint, Rosetta Stone quotes from one the company's Securities and Exchange Commission filings from 2004, shortly after it adopted its current trademark policy.
"As a result of this change in policy, we may be subject to more trademark infringement lawsuits," the company stated. "Adverse results in these lawsuits may result in, or even compel, a change in this practice which could result in a loss of revenue for us, which could harm our business."

According to Ross, however, there seems to be no sign of Google backing down from the practice. He noted that the company started letting trademarked words into headlines, for instance, after the 2nd Circuit's ruling.

This article first appeared on The BLT: The Blog of Legal Times.

L'Oreal takes MyDollarStore to High Court over illegal imports [India]

French cosmetics and toiletries giant L’Oreal has hauled discount retailer MyDollarStore to court over issues relating to intellectual property rights (IPR) and illegal imports, it is learnt. The company has filed a case against MyDollarStore in the Delhi High Court recently.

In recent times, MNCs have been upset over the move by retailers to import top global brands, claiming that this leads to loss of business opportunity, unfair competition and product cannibalisation. However, sources said hectic parleys are on between the two parties and the talks could lead to an out-of-court settlement.

MyDollarStore is a discount store chain which set up shop in 2004 and now has 47 stores across several cities. Most of the stores are located in malls and near Big Bazaar outlets. The chain plans to scale up presence across most Big Bazaar outlets. The discount store is associated with basement bargains in the US. MyDollarStore formats price products at Rs 99 and above in India, and are perceived as expensive by bargain seekers. While products are priced at $1 (approximately Rs 48.9) at a MyDollarStore outlet in the US, the same products sell at a higher rate in India owing to transportation costs and import tariffs. L’Oreal source said the company was concerned about protecting the properties of its brands, which include quality and consumer perception. “We distribute the brand in a way that ensures a certain value around it. An unplanned distribution creates confusion or leads to an unpleasant consumer experience which may work against our brand,” the source said. L’Oreal India has recorded an attractive growth rate of over 40% plus in the country, and globally it has identified India as one of its top five markets. Sources said the company fiercely guards its right to market and distribute its brands in India.

Several MNCs have invoked the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007 Act to stop retailers from importing their foreign brands. Companies like Hindustan Unilever, L’Oreal, Lancome Perfumes, Oakley, Nivea and Mico have already registered several brands under notification No.47/2007 of the IPR Act with the Customs. Recently, Future Capital picked up 28% in Sankalp Retail Value Stores, a franchisee of the US-based discount format MyDollarStore. The format is expected to help scale up profit margins at Big Bazaar and is being set up as a ‘shop-in-shop’ concept. MyDollarStore outlets usually stock limited top brands like Coke and generally sell other lesser-known brands. But lately they have been stocking well-known brands, including that of L’Oreal like Garnier, etc. Big Bazaar & Food Bazaar, Reliance Retail, Spencer’s and MyDollarStore import sizeable consignments of top consumer brands and their variants from markets like Taiwan, Thailand, Gulf and the US. L’Oreal operates in India through its wholly-owned subsidiary L’Oreal India and has four divisions—consumer products, professional products, active cosmetics and luxury products.

Author's estate wins battle of Narnia domain name [UK]

A couple who bought a web domain name as a birthday present for their 11-year-old son have lost a battle with the estate of C.S. Lewis to keep it. Richard and Gillian Saville-Smith, from Edinburgh, paid £70 for the name www.narnia.mobi in September 2006 so that their son Comrie, who is a fan of C.S. Lewis, could use it as an e-mail address. The author's estate lodged a complaint with the World Intellectual Property Organisation, which ruled yesterday that the domain name should be transferred.

Companies had a three-month period in 2006 to express interest in .mobi website names before they became more widely available. The couple bought the Narnia name, along with a number of others, including The Queen.mobi and USPresident.mobi, “just for fun”.

Domain name disputes focus partly on whether a “cybersquatter” is using the site for commercial gain and whether trademarks are involved. Mr Saville-Smith claimed yesterday that he had done nothing at all with the site and had not tried to make any money from it.

Settle Toshiba vs Tosiba fast: Supreme Court asks Delhi High Court [India]

The Supreme Court has asked the Delhi HC to expeditiously decide the trademark dispute between the Japanese company Toshiba and an Indian company which uses the trademark Tosiba for its electrical goods.

The largest manufacturer of heavy electrical items of Japan claims that such a use infringes on its trademark Toshiba. Justice SB Sinha and Justice LS Panta said: “We would, however, request the Delhi High Court to consider the desirability of disposing of the suit filed by the appellant (Kabushiki Kaisha Toshiba) against the respondent (Tosiba Appliances Co) as expeditiously as possible”. It in its notice, the company had said: “The trademark Toshiba is such a well-known trademark in India and abroad that its use or the use of a phonetic equivalent mark in respect of electronic and electrical goods would cause immense confusion and deception amongst the purchasing public and the trade. Our clients were surprised when they recently learnt of the adoption and use of the mark Tosiba both as your trademark and an essential feature of your trading style in respect of a range of electrical goods including electric irons. The adoption of the mark Tosiba is clearly mala fide and amounts to infringement of our clients’ various registered trade marks.”

Starbucks registers trademark in several Indian languages [India]

Scalded by trademark infringement from names including Starstruck, global coffee giant Starbucks Corp. is taking no chances.

The Seattle, US-based company has trademarked the “Starbucks” brand in at least 10 Indian languages, including Tamil, Telugu, Punjabi, Bangla, Gujarati and even Urdu—almost as diverse as the states it eventually set up shop in.

It’s still unclear when Starbucks will enter India after the international coffee chain withdrew its application from the Foreign Investment Promotion Board, which approves investments into the country from abroad, in November because government officials raised objections to the majority foreign holding structure of the proposed venture. In India, overseas brands can’t hold more than 51% of any single-brand outlet. Starbucks’ overseas holding was adding up to more than that.

Stung by the objections, Starbucks decided to put on hold its India plans. With the ranks of middle-class Indian swelling, drinking coffee in outlets similar to Starbucks is becoming fashionable in India’s cities and big towns. The country already has several indigenous brands such as Barista and Cafe Coffee Day, and international ones such as Costa Coffee. But with coffee drinking turning into a fad, even those who have had little to do with coffee chains have stepped in. India’s first and most celebratedproducer of herbal beauty potions and creams, Shahnaz Husain, has registered Startstruck as a trademark, brewing up a bit of storm. Starbucks is locked in a legal battle over the similar sounding name.

Starbucks is also challenging another case in India’s Controller General of Patents, Designs and Trade Marks for a deceptively similar name. The American chain is now in 13,000 locations worldwide and if the company has its way, it will be in 27,000 more locations, including some in India.

Chewing Gum Trademark Suit Sent Back to District Court [United States]

A nearly decade-long dispute over the use of formulas for Bazooka bubble gum and other products made by Topps Co. is headed back to a district court following a decision by a federal appeals court.

The 2nd U.S. Circuit Court of Appeals reversed Southern District of New York Judge Charles Haight, finding that he erred in granting summary judgment to Cadbury Stani S.A.I.C. over rights to the formulas in parts of South America.

The decision in The Topps Co. Inc. v. Cadbury Stani, 06-5316-cv. was made by 2nd Circuit Judges Richard Cardamone and Rosemary Pooler and, sitting by designation, Southern District Judge John Keenan. Cardamone wrote for the panel in finding that the case was not ripe for summary judgment.

Topps began licensing the rights to make, sell and distribute Bazooka and other Topps brands in Argentina, Bolivia, Chile, Paraguay and Uruguay to Cadbury Stani in 1957. In exchange for royalties on Stani's sales, the company promised to share "the know-how, formulae, processes and techniques used by Topps."

In 1976, Topps and Stani reached a new agreement that called for the continued sharing of "manufacturing technology, marketing concepts and techniques, administrative and consultive assistance and trademark use" in exchange for license fees. Under this agreement, Stani would be able to sell "licensed products utilizing Topps technology."

The companies reached an amended license agreement with nearly identical language in 1980, at the same time signing an escrow agreement that called for the holding in escrow of stock certificates in an entity called Verco Holding Corp. until 1996, when they would be transferred to Stani's owner.

Stani agreed to pay $100,000 to Topps in exchange for the transfer under the agreement, which stated in the preamble that "Topps has transferred legal title to the registration in Argentina of the trademarks 'Bazooka', 'Topps' and other trademarks to the Verco Holding Corp."

The license agreement expired in 1996. Topps filed suit in 1999, claiming Stani continued to use its chewing gum formulas and that it had transferred those formulas and other Topps technology to its parent company, Cadbury. Topps claimed this was a violation of the 1980 licensing agreement.

Haight found that Stani retained the right to use the formulas after the expiration of the agreement in 1996. He granted Cadbury Stani summary judgment after finding Stani had not misappropriated trade secrets and had not breached the contract.

SC reserves verdict in Dabur trademark case [India]

The Supreme Court on Friday reserved its judgement on a petition filed by Dabur India, which sought to restrain Andhra Pradesh-based K R Industries from violating the intellectual property rights on Dabur Dant Manjan (tooth powder).

A bench headed by Justice S B Sinha reserved the verdict on Dabur's plea against a Delhi High Court order that partly dismissed its petition on alleged IPR infringement by K R Industries. Dabur had moved the High Court in 2002 alleging that K R Industries was infringing its copyright by copying similar colour combination, layout and features as that of Dabur Dant Manjan. The division bench of the High Court had directed Dabur not to combine two different causes of action infringement of copyright and selling goods in similar packaging. The High Court observed that it did not have the territorial jurisdiction to decide on the issue and asked Dabur to file a fresh petition in a competent court.

According to Dabur, it had asked K R Industries to stop manufacturing and marketing its product in a similar packaging and colour combination as that of Dabur Dant Manjan. K R Industries had denied the allegations and filed an application saying that the Delhi High Court did not have the jurisdiction to entertain the Dabur's petition.

ITC, Punchgini and Bukhara: ITC prevails as Second Circuit Court applies Unfair Competition [United States]

In ITC Limited and ITC Hotels Limited v. Punchgini Inc. USCOA 2 No. 165 (N.Y. December 13, 2007), the Second Circuit court refused to apply the doctrine of famous marks to stop the infringement of an Indian trademark ‘Bukhara’. Nevertheless, the New York Court of Appeals applied the law of Unfair Competition to protect the trademark not specifically being used in the US at that point of time. The plaintiff was running a five star restaurant in New Delhi by the name ‘Bukhara’. It had acquired “some measure of reknown among those with an avid interest in fine cuisine.” Later, they decided to open nine restaurants in different parts of the world including US. However, the two Bukhara restaurants opened in US were closed down within a short span. Few former employees of Bukhara of New Delhi opened a Bukhara Grill and Bukhara II restaurants in Manhattan. They used the same logos, style, design, recipes and even the dresses of the waiters of the original Bukhara.

The Second Circuit refused to acknowledge trademark infringement because the plaintiff had abandoned the use of the trademark in the US, though they continued to operate in India.
The New York Court of Appeals later concluded that New York law "recognizes common law unfair competition claims, but not the ‘famous’ or ‘well-known’ marks doctrine."

Unfair Competition law prohibits use of another’s trademark or indication which is identical or similar to other persons goods that are widely recognized among users and thereby causing one's goods or business to be confounded with another person's business. Accordingly, “when a business, through reknown in New York, possesses goodwill constituting property or commercial advantage in this state, that goodwill is protected from misappropriation under New York unfair competition law. This is so whether the business is domestic or foreign.” Further, it was stated that the consumers of services provided by the defendants “must primarily associate the mark with the foreign plaintiff.” The court refused to exhaustively state the factors to determine this, stating that they would “vary with the facts of each case”. However, there has to be “evidence that the defendant intentionally associated its goods with those of the foreign plaintiff in the minds of the public, such as public statements or advertising stating or implying a connection with the foreign plaintiff; direct evidence, such as consumer surveys, indicating that consumers of defendant's goods or services believe them to be associated with the plaintiff; and evidence of actual overlap between customers of the New York defendant and the foreign plaintiff.”

The case is foundational in that it represents a paradigm shift in protection of foreign trademarks in the US. They now qualify for protection even though they may not be registered in the US, the underlying principle being that commercial unfairness should be restrained whenever there is misappropriation, for the benefit of the person who holds a legitimate property right.