July 2024

Dear Readers,

We are thrilled to introduce another edition of the Aumirah Newsletter series. This Newsletter focuses solely on Trademarks. Our goal is to provide you with the latest insights and developments in the field of Intellectual Property (IP). In this edition, we explore the latest developments in the global sector, insights from team Aumirah helping you navigate the complex landscape of global Trademark laws, the latest upcoming events in IP, etc. We hope this newsletter becomes a valuable resource for you and your business.

Stay informed and enjoy reading!

Additional articles of interest

Finfluencers and the FCA: protecting brand intellectual property

Social media influencers have become pivotal in consumer marketing, but their increasing influence has raised concerns about audience vulnerability and misleading advertising practices. To address this, the Advertising Standards Authority (ASA) mandates clear disclosure of sponsored content, while the Financial Conduct Authority (FCA) focuses on ensuring financial promotions are transparent and fair. Businesses must be cautious when partnering with influencers, ensuring compliance with these regulations to avoid reputational and legal risks.


INTA argues NFTs and intangible goods are within Lanham Act’s scope

The International Trademark Association (INTA) has submitted an amicus brief to the US Court of Appeals for the Ninth Circuit in Yuga Labs, Inc. v. Ryder Ripps, Jeremy Cahen, a case that examines whether non-fungible tokens (NFTs) are considered “goods” under Section 1125(a) of the Lanham Act. The defendants argued that NFTs, being intangible software tokens, are not eligible for trademark protection. However, the district court, referencing Hermès International v. Rothschild, ruled that NFTs qualify as goods under the Lanham Act. Supporting this decision, INTA contended that the Lanham Act protects trademarks associated with any goods or services, including intangible ones like NFTs, emphasizing consumer perception and the association of trademarks with underlying assets and benefits.


Qatar Joins the Madrid System

On May 3, 2024, Qatar became the 115th member of the Madrid System by depositing its instrument of accession to the Madrid Protocol with WIPO Director General Daren Tang. This accession enhances the Madrid System’s effectiveness for global trademark protection. Starting August 3, 2024, Qatari brand owners can use the Madrid System to protect their trademarks in up to 130 countries with a single international application. Conversely, trademark holders from other member countries can now seek protection in Qatar, and those with existing international registrations can expand their coverage to include Qatar. This development offers a streamlined and cost-effective solution for cross-border brand protection within the Gulf Cooperation Council and beyond.


Tesla files trademark infringement case in Delhi High Court

Tesla Inc. has filed a lawsuit against Gurgaon-based Tesla Power India Pvt. Ltd in the Delhi High Court for trademark infringement. The court issued a notice and temporarily restrained Tesla Power from using the Tesla trademark in promotional advertisements for EV products. Tesla Inc. argued that Tesla Power’s use of the trademark causes consumer confusion and damages Tesla’s business interests. However, the court noted Tesla Inc.’s lack of urgency, as it has been in communication with Tesla Power since 2020, and allowed Tesla Power to present its case. Tesla Power clarified that it sells lead-acid batteries for conventional vehicles and inverters, not EV batteries, and that its use of the Tesla trademark was linked to a partnership with e-Ashwa. Meanwhile, Tesla Inc. is considering a $30 billion investment in India over the next five years, contingent on meeting new government EV policy requirements.


Delhi HC declares ‘Haldiram’ as well-known trademark

On April 3, the Delhi High Court declared the “Haldiram” mark as a well-known trademark for food items, restaurants, and eateries, both in India and globally. The court recognized the “Haldiram” brand’s deep roots in India’s culinary tradition and its international presence. The mark has been used in the food industry since the 1960s and has achieved significant recognition. This declaration came following a suit by Haldiram India seeking protection and acknowledgment of its mark “Haldiram” and its variations, such as “Haldiram Bhujiawala,” as well-known under the Trade Marks Act, 1999.


Hyundai files trademark for ‘Casper’ in India— Santro replacement?

Hyundai introduced the Exter in India last year to compete with the successful Tata Punch. While initially it was speculated that the Casper micro SUV, launched in South Korea, would be Hyundai’s answer to Tata Punch, Hyundai instead developed the Exter specifically for the Indian market. However, Hyundai has recently filed a trademark for the Casper in India, indicating plans to bring this quirky, SUV-like hatchback to the country. The Casper features unique design elements, such as round headlamps within a glossy silver panel and USB C-type air intake vents. This move could be seen as a strategic replacement for the discontinued Santro, reflecting Hyundai’s shift towards SUVs. Expected to be priced around Rs 5 lakh (ex-showroom), the Casper could create a new segment below the Exter and Tata Punch.


Bacardi wins appeal reviving US Trademark Office fight over ‘Havana Club’ rum

On Thursday, the 4th U.S. Circuit Court of Appeals in Richmond, Virginia, revived Bacardi’s lawsuit against the U.S. Patent and Trademark Office (USPTO) over the “Havana Club” rum trademark dispute with the Cuban government. Bacardi can now challenge the USPTO’s decision to renew Cuba’s “Havana Club” trademark, which Bacardi argued should have expired in 2006 due to a missed renewal fee, only paid after the U.S. Treasury Department’s Office of Foreign Assets Control (OFAC) issued a license in 2016. This decision overturns a 2022 ruling that dismissed Bacardi’s challenge. The court clarified that Bacardi’s challenge to the USPTO’s renewal decision can proceed, even though challenges to the registration process may be precluded. A separate Bacardi lawsuit seeking to cancel Cubaexport’s trademark remains pending.


McDonald’s loses Chicken Big Mac trademark in Europe

The Luxembourg-based General Court ruled that McDonald’s does not have the exclusive right to the term “Big Mac” for poultry products in Europe after not using it for five consecutive years. This partial victory in the long-standing trademark dispute favored the Irish rival, Supermac’s, which sought to revoke McDonald’s trademark usage rights for meat and poultry products. The European Union Intellectual Property Office (EUIPO) had initially sided with McDonald’s, but the General Court’s decision partially annulled and altered this ruling. McDonald’s retains the right to use the “Big Mac” trademark for its beef and chicken sandwiches, but the court emphasized that even well-known brands must prove genuine trademark use. Supermac’s founder, Pat McDonagh, celebrated the decision as it supports their expansion efforts in the EU.


How to resell ‘refurbished’ goods under the Trademarks Act?

In analyzing the court’s decision on the prohibition of removing and replacing the original mark under section 30(3), it becomes evident that the ruling heavily relied on arguments against de-branding put forth by the amicus curiae and insights from Annette Kur’s article. The court underscored the risk of de-legitimization associated with rebranding products for resale, as highlighted in Kur’s work, “As Good as New,” which emphasizes the importance of retaining the original mark to maintain product integrity and avoid trademark disputes. By recognizing the distinction between ‘simple’ and ‘substantial’ repairs, albeit not fully exploring it in this case, the court aimed to strike a balance between protecting trademark owners’ rights and supporting the refurbishment industry’s role in sustainability and economic accessibility. This decision underscores the significance of full disclosure in refurbished goods and its implications for both industry viability and consumer protection under trademark law.


Rethinking Initial Interest Confusion And Consumer Sophistication In The Digital Age: Unarmouring The Under Armour At The DHC

In examining recent decisions by the Delhi High Court concerning trademark disputes involving Forest Essentials and Under Armour, the concept of Initial Interest Confusion (IIC) has come under scrutiny in light of evolving consumer behavior shaped by digital commerce. Justice Dayal’s approach, as seen in these cases, reflects a nuanced understanding that modern consumers are sophisticated and conduct extensive research online before making purchasing decisions. This perspective challenges the traditional application of IIC, which focuses on initial attention rather than the entirety of the consumer journey. The Under Armour case particularly underscores Justice Dayal’s view that traditional trademark doctrines like IIC may not adequately account for contemporary consumer practices and the wealth of information available online. This prompts a reconsideration of whether IIC remains relevant in an era where consumer diligence and access to information play pivotal roles in mitigating potential confusion.


Trade Secret IP Protection & Litigation

17-18 Sept ’24

Boston, MA

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IPO 2024 Annual Meeting

22 – 24 Sept ’24

Chicago, IL

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FICPI 22nd Open Forum

25 – 28 Sept ’24

Madrid, Spain

Click for more info.

Life Sciences Strategy Summit on IP & Exclusivity

8-10 Oct ’24

Munich Germany

Click for more info.

Global Legal & IP ConfEx

23 Oct ’24

New York, NY

Click for more info.

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The contents of this message, current at the date of publication, are for reference purposes only and do not constitute legal advice. Where previous cases are included, prior results do not guarantee a similar outcome.

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