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  • Friday, July 20, 2018 6:01 AM | Akriti Dayal (Administrator)

    For a long time, EU law considered it theoretically possible to protect a fragrance in trademark law, but practically impossible. Because a trademark and even a fragrance brand had to be graphically displayable. Since the EU trademark reform in 2017, this is no longer obligatory: easy going for scent trademark protection the EU?

    No uniform jurisdiction in the EU

    Scent trademarkA look at the European jurisdiction on fragrance brands shows that there is no fundamental case law on the subject. The 2006 “Bsiri-Barbir v. Haarmann Reime” case from France is legendary. Fragrance is an application of purely technical knowledge without signs of creativity, therefore no trademark protection is possible.

    Also in 2006, the Netherlands decided exactly the opposite, in the case of Lancôme v. Kecofa (2006). Perfumes that use very different chemicals and even smell identical can be a work in the sense of copyright, they said.

    Legal basis for Protecting Scent Trademarks

    Until the EU trademark reform in 2017, the decisive question was whether an olfactory mark can meet the requirement of graphic representability under Sec. 8 (1) Marking.

    Since October 1, 2017, however, Regulation (EC) No. 207/2009 has applied – we reported ( Info Blog: Videos and sounds as EU Trade Mark ). Under this Regulation, representation of a trademark has not longer to be graphically displayable – if the trade mark can also be described in another way in such a way that the subject matter of protection is clearly and precisely defined. This leads to the interesting consideration: how to present a fragrance?

    The comparative description of a fragrance like “Scent of burnt almonds” or “Scent of a ripe strawberry” does not meet the legal requirements for the representation of an olfactory mark and has so far been rejected. The background for this is that odours are largely subjective sensory perceptions that are perceived very differently on an individual basis.

    Patent protection for fragrances

    What then would be an indication of the chemical composition? Legally, patent protection, which can be granted for chemical substances and active substances, would be an option. In Germany alone, for example, there are over 100 patent applications for laundry detergent. So why strive for protection status as scent trademark, anyway?

    Fragrance is more than its chemical composition

    The purely chemical view does not describe a scent trademark completely. A fragrance composition is a complicated mixture of several natural and synthetic fragrances, which are also released in a temporal sequence. A scent classification, which could be used comparable to the current colour classification, is not yet available. Scent samples do not provide the stability and durability required for trademark protection in the EU. On the other hand, in the U. S. it is generally possible to protect a scent as a trademark – just a few weeks ago, toy manufacturer Hasbro has received scent trademark rights from the US Patent and Trademark Office (USPTO) for the unique scent of its “Play-Doh”.

    Lack of distinctiveness

    Of course for EU scent trademarks it would be essential to be distinctive. This can be problematic, vanillin for example is largely excluded for trademark protection. It is devoid of any distinctive character for cosmetics in Class 3, as vanillin is a necessary fixative in the base note. However, distinctiveness is also an issue for the entire fragrance. Again and again bitter arguments between brand perfume manufacturers and cheaper imitators have been brought to court, mostly because of the packaging of fragrances. The more scent trademarks are granted, the more liklihood of confusion will be found.


    The new EU Trademark Regulation encourages creativity in the application for EU scent trademarks. Therefore the development of a perfume or fragrance should be documented in detail, and moreover there should be an attempt to apply for scent trademark protection. Because as soon as more fragrance brands will be protected in the EU, it will also be necessary to be able to show distinctiveness and priority one’s own fragrance.


  • Friday, July 13, 2018 9:00 AM | Akriti Dayal (Administrator)

    Online shopping has become the go-to for both consumers and businesses seeking speed and convenience. According to the latest report from the Office for National Statistics, e-commerce sales in 2016 were made up of £236 billion in website sales and £274 billion in electronic data interchange (EDI) sales or business-to-business sales.

    The BBC recently reported on the growth of the online fashion retailer Boohoo. Boohoo saw their revenues jump by 53% in the three months to the end of May, with UK revenues up by 49% and US revenues up by 75%. In a previous report in March, the company stated that pre-tax profit had risen by 40% to £181.3 million.

    The success of the online-only retailer is a stark contrast to the many household names making the headlines in recent weeks as retail brands continue to struggle in the market. Businesses that have dominated the high street for decades are being forced to announce store closures and job losses as they face difficult times. While it cannot be said that the growth in online shopping is the sole cause of the current problems facing the high street, it can be assumed that it is a contributing factor.

    For many businesses, an e-commerce presence is now a necessity, enabling them to reach a far greater percentage of potential buyers. It is important, however, that brands considering the benefits of e-commerce are prepared for the risks that operating online can bring, especially from a legal perspective.

    Businesses that are in the process of launching e-commerce platforms need to consider the actions that they need to implement to protect their brand. Copyright or trademark infringements that take place online can be more difficult to take action against.


    The difference between the Internet and the "real world" is that the Internet allows people their anonymity. If someone really wants to hide their identity online they can, and in most cases, they do so very easily.

    If a copyright or trademark infringement were to happen away from the Internet then you can take action against the infringer because you know who they are. You are able to get a court order to prevent them from doing it again, and hopefully a damages payment and your costs covered. This process does not work on the Internet. Infringements online can be difficult to take action against because you may not be able to identify the infringer and they could be anywhere in the world.

    Even if you are able to narrow down the infringer's whereabouts to a specific country then there are other issues you will need to consider. You may not be able to prove that the infringement has occurred in that jurisdiction. You may also not be able to take action because you do not have intellectual property protection in that country. You would also need to consider things like where the infringer's servers are based. If they're in another country then you may have difficulty proving the infringement. You would also need to consider the countries that the goods are being sent from and where the customers that have bought them are based.

    The issue with infringements online is that even if you do manage to take action against the infringer they can always set up another website elsewhere and still reach the same customers.

    In a lot of cases, infringers can often be identified, tackled at the source and their infringement stopped. The problem is that sellers of counterfeit goods are often serial infringers and they can be evasive.

    Due to the nature of how infringement occurs online, it's a good idea to be aware of techniques that you can utilize to protect your brand and make infringement more difficult.


    One approach to help protect your brand online is "domain name complaints". A domain name is the address that is used to access your website, e.g. Gowling WLG's domain name is "". Domain names attract the people you want to sell to and give credibility to the websites that use them.

    For example, if you come across a domain name such as "" you may think that discount handbags are genuinely on sale when they could just be counterfeits sold by anyone who has the ability to set up a website. It is common for domain names to be used in this way to commit fraud. To make sure that these domain names are not available to be used in such a way you are able to take action and have them transferred to you. For example, as Gucci's brand name is being used in the domain name then they would be able to request for the domain to be transferred to them.

    If asking for the transfer of a domain name does not work then it is possible to have them forcibly transferred to you through a domain complaint. When you register for a domain name, you have to agree to a contract with the registrar. The fine print of the contract will state a number of mandatory terms. For example, the person registering the domain will need to agree to not register or use the domain name in a way that will infringe anyone else's intellectual property rights.

    Domain name contracts also state that if there is a dispute concerning a domain name it has to be dealt with under a standard dispute resolution policy. There are several different dispute resolution policies that are dependent on the different domain extensions such as .com or While there are different policies in place, the basic premise is that the owner of a brand can take action and make a complaint and, if successful, can have the domain name transferred to them.


    If you do experience some form of copyright or trademark infringement that is having a negative impact on your business you can stop the perpetrator from gaining money from the activity by blocking the payment methods on their website. This is where you ask the payment processor (such as PayPal or Visa) to stop processing payments if websites are selling counterfeit versions of your product or services. While the infringer could move to a different processor, you are making the process of gaining money from selling your goods more difficult.

    To put a payment method block in place you can either contact the specific payment processor directly or use the International AntiCounterfeiting Coalition's (IACC) Rogueblock reporting tool which covers several different processors.


    If you are considering e-commerce, or have a platform already in place, you need to be confident that you are able to protect your brand online from copyright or trademark infringement. Even businesses who do not operate using an e-commerce platform should consider how copyright infringement online can damage your brand and relationships with potential customers. A business with a website used only for marketing purposes can still be a victim of copyright or trademark infringement.

    Our Insights and Resources are recommended for businesses considering e-commerce or concerned about protecting their copyright or trademarks online. We will update you regularly with information from our legal experts on intellectual property law, as well as other sectors and services you may be interested in.


  • Friday, July 13, 2018 8:45 AM | Akriti Dayal (Administrator)

    Meet Peter Chong, director of civil enforcement for Louis Vuitton’s IP matters in China. Chong joined Louis Vuitton’s Shanghai office in 2010 after spending three years in the company’s Hong Kong office. Managing the company’s civil litigation issues in China, he targets the counterfeit supply chain by taking civil actions against producers, distributors, retailers, market landlords/management, trading companies, and online infringers.

    One of the cases Chong handled that made it into the Quality Brands Protection Committee (QBPC)’s 2015-2016 annual best practice cases was a counterfeit case in Guangzhou, ground zero for the production and distribution of counterfeit handbags, shoes and clothes. In the case, LV initiated a joint litigation with other luxury brands against three of Guangzhou’s largest wholesale leather goods markets to create deterrence and impose on the market landlord/management a high duty of care to take effective measures to stop counterfeit sales. Another case, which earned recognition as the Supreme People’s Court 2014 Top 50 model IP case, involved the management of Anhui Baima Trade City Market and the vendors (individual landlords) who owned the shops in this market.

    Increasingly, infringers are using LV’s "Monogram" and "LV Logo" trade marks on goods that are dissimilar to LV’s luxury handbags, such as auto accessories like steering wheel and gear covers and sunshades. One strategy Chong is using to tackle this issue is to prove that LV’s trade marks are well-known in China to get cross-class protection against the dissimilar good. But this requires collecting lots of evidence.

    "Chinese courts have strict evidence requirements for well-known marks but gaining the well-known trade mark recognition offers the brand the highest level of protection," says Chong. "Sharing civil judgments on well-known trade mark recognition with LV’s Paris trade mark portfolio team can help in administrative actions against bad faith applicants."

    The challenge is getting recognition across China because the courts adopt the principles of necessity, case by case determination and passive protection. "The Chinese courts are strict when it comes to recognising well-known trade mark status as a fact and try not to determine if a mark is well-known if the court can apply other grounds to protect the mark." adds Chong.

    With infringers coming from left, right and centre, how does LV decide on which counterfeiters to target?

    By going after the big fish, the idea is to give the strongest punishment to producers and it creates deterrence to others counterfeiters who operate on a criminal scale. "By going after the big fish, the idea is to give the strongest punishment to producers and it creates deterrence to others," explains Chong.

    A counterfeiting trend that Chong observes are imitation bags with their own registered trade marks. These are situations where the infringer changes each element of the mark and applies to register their own trade mark. For instance, it might be turning the logo upside down or overlapping logos to create a similar mark. "Infringers are getting more sophisticated and the infringing producer is trying to give an air of legitimacy for an imitation pattern by using a domestic registered trade mark or even design patents," says Chong. To target these infringers, Chong must wage a sustained battle against imitation bags marketed

    under a domestic brand and prove that the imitation pattern is similar enough to LV’s trade marks and likely causes confusion.

    "The challenge in imitation cases is that determining trade mark similarity involves a subjective assessment by the judge," says Chong. "The evidence on the distinctiveness and reputation of the LV trade mark will help to prove similarity of trade mark and likelihood of confusion."

    Another recent change to China’s IP laws was the revised PRC Anti-Unfair Competition Law (AUCL) which came into effect January 1 2018. Chong will put the new law to use building upon earlier judgments in cases involving KTVs using LV’s trade marks in the interior décor of a theme room and not as a trade mark on an exterior sign. A Guilin KTV case was selected by Guangxi High Court as a 2017 Top Ten IP Case. In a Zhenjiang KTV case, Jiangsu Province High Court held that the KTV should have known that LV’s trade marks are world famous but still the KTV deliberately took a free-ride and advantage of the reputation and influence of these trade marks. "We appreciate that the courts are willing to apply the general principles in the AUCL that a business operator should not violate the general principles of honesty, trustworthiness and generally accepted business ethics," says Chong.

    Compared to 15 to 20 years ago, Chong believes that there has been an improvement in the professionalism of China’s IP protection and deterrence in the law. There are now three specialised IP courts in Beijing, Shanghai and Guangzhou and 15 IP tribunals across China. Changes to the China’s Trademark Law in 2014 clarified the circumstances of knowingly facilitating trade mark infringement or helping others to infringe, increased statutory damages from RMB 500,000 to RMB 3 million, and added punitive damages. An enforcement area that he has seen improve recently is compulsory enforcement of judgments where courts check the defendant’s assets if they do not pay the compensation ordered by the court. China has taken compulsory enforcement to a new level with a social credit system in recent years. The courts put judgment debtors on a blacklist, which bans them from gaoxiaofei (high expenditure consumption) activities such as taking high-speed train or flights, staying in four and five star hotels, and getting loans or jobs.


  • Friday, July 13, 2018 8:27 AM | Akriti Dayal (Administrator)

    The machines are taking over

    Machine Learning and Artificial Intelligence (AI) are steadily taking over every aspect of routine life including automation in the field of IP. In all aspects of life, the AI revolution is here to help us, even though the solution is removing the human broker from the workflow.

    Over the last 20 years, Machine Learning and AI have helped to change and shape the IP patent information industry. OCR (Electronic Optical Character Recognition), Machine Translations and Semantic Search are three areas where technology has already helped.

    Major patent offices are implementing technology including machine learning and AI as the future for their patent, trademark and design application workflow solutions.

    The future

    The future of the IP business is certainly technology innovation based. Potential impacts on patent workflows will come from the evolution of deep learning neural networks, integrations with data fusion and analytics platforms and image recognition processing and searching (some of this is already happening).

  • Friday, July 13, 2018 8:10 AM | Akriti Dayal (Administrator)

    The US has announced it will impose additional tariffs on $200 billion worth of Chinese imports as a trade war between the countries rages on.

    According to the US Trade Representative (USTR) Robert Lighthizer, the latest tariffs (amounting to 10%) have been imposed to prevent China from violating the IP rights of US businesses.

    Lighthizer added that China has pursued “abusive trading practices with regard to IP and innovation”.

    On Friday, July 6, the US implemented tariffs of 25% on approximately $35 billion worth of Chinese imports. The tariffs will eventually cover up to $50 billion worth of Chinese imports, specifically products related to China’s “industrial policy and forced technology transfer practices”.

    In response, China imposed tariffs on $34 billion worth of US goods, with the potential of another $16 billion worth of goods being subject to the tariffs. According to the USTR, China “did this without any international legal basis or justification.”

    US President Donald Trump then hit back against China and announced plans to impose tariffs of 10% on an additional $200 billion of Chinese imports.

    In August 2017, Trump instructed Lighthizer to investigate China’s trading practices.

    The eight-month investigation concluded that China had been “engaging in industrial policy which has resulted in the transfer and theft of IP and technology to the detriment of our economy and the future of our workers and businesses”.

    The report also found that the Chinese government “sponsors the outright theft of US technology for commercial benefit”, added Lighthizer.

    Tensions between the US and China have intensified this year—but in May, the countries agreed that they would not impose any more tariffs on each another.

    However, that same month, Trump announced the plans to impose tariffs of 25% on $50 billion worth of Chinese imports.


  • Friday, July 13, 2018 6:39 AM | Akriti Dayal (Administrator)

    A first name can be used as company name and trade name – but what if the first name Otto is also a registered famous trademark? In the case Otto mail order company against Otto’s Burger it was ruled by court yesterday, no likelihood of confusion was seen for the company’s trademark “Otto”.

    Otto loses in the brand dispute over “Otto’s Burger” – for the moment

    Yesterday, the Hamburg District Court (LG Hamburg) dismissed the mail order company Otto’s action against “Otto’s Burger” (dated 10.07.2018, not yet published, ref. 406 HKO 27/18). The German mail order company had seen an infringement of the company wordmark “Otto” and had filed suit on the grounds of infringement of trademark rights and suspicion of unfair competition. The plaintiff Otto GmbH & Co. KG is the owner of the word mark no. 30126772 “OTTO” for “wholesale and retail services for goods in classes 1 to 34” – including class 25 (“articles of clothing”). The defendant is Daniel MacGowan, owner of “Otto’s Burger”, who runs four restaurants under this name in Hamburg. The name of “Otto’s Burger” follows his statement after the name of an alleged burger inventor.

    Inventor of burgers

    According to Wikipedia Germany, the exact development of the word “hamburger” is not known. There are competing theories about the origin of the hamburger and also about the inventor of the burger. Otto Kuase is mentioned in English Wikipedia as one of the possible inventors, with White Castle, an American regional burger chain in the Midwest, being cited as the source. According to Wikipedia, five other persons are also considered possible inventors.

    The parties had been arguing about the name “Otto’s Burger” since 2015. According to information from German TV NDR, MacGowan had initially protected the name not only for the food class, but also for clothing – in order to keep the option open to later be able to sell merchandising articles under the name. Could it therefore be assumed that the traffic in question would assume that clothing under the “Otto’s Burger” brand is actually clothing under the “Otto” brand? Or that the mail order company now also operates as a burger restaurant?

    Different business fields are decisive

    The Hamburg Regional Court saw no likelihood of confusion. It was also decisive for the decision that the business fields of both companies were too different, a court spokesperson informed. There was no violation of the company’s trademark “Otto” because the guests addressed by the four burger restaurants did not associate “Otto’s Burger” with the mail-order company’s trademark.

    Otto is a common first name – therefore no risk of confusion

    In addition, the regional court pointed out that “Otto” was a common first and last name, so that there was no danger of confusion. However, naming law is increasingly a contentious issue in trademark law. Only recently, in the KENZO versus KENZO ESTATE case, the ECJ ruled in favour of the earlier trademark proprietor “KENZO”. And Kenzo is also a common first name – in Japan (Info Blog: KENZO victorious before the ECJ).

    Company Otto lost its “Otto” mark for clothing in 2005

    Another interesting aspect of this case is that Otto-Versand had already lost a trademark dispute before the Federal Supreme Court (BGH) in 2005, but with a different complaint and completely different justification for the judgement. In this case of a trade mark registered for goods, the right-preserving use required presupposes that the public establishes a direct link between the trade mark used and a specific good. The BGH found in 2005 that this was lacking in the dispute because a large number of goods – including those of well-known brand manufacturers – were offered in the catalogues bearing the “OTTO” mark. However, the decision of the Federal Supreme Court forced Otto-Versand to agree to the cancellation of the trademark for the “Otto” garments in 2005 (press release of the Federal Supreme Court No. 109/2005 I ZR 293/02 ).

    The Otto GmbH & Co. KG therefore refers to the “Otto” brand for clothing without Otto mark clothing. According to the Federal Supreme Court, however, it is not relevant whether a private label for goods is operated in this sector, but only how consumers perceive the goods sector.

    Company Otto 2013 victorious before the BGH – OTTO CAP lost

    The BGH already decided in a judgement of 31.10.2013, (Az. I ZR 49/12), over the similarity between goods and retail trade services. In this case, Otto GmbH & Co. KG brought an action against a retailer of sports fashion, including baseball caps under the names “OTTO CAP”, “OTTO Trucker Cap”. The BGH clarified that goods and retail services relating to these goods may be similar within the meaning of Sec. 14 (2) No. 2 MarkenG. And for Otto GmbH & Co. KG, the judgement resulted in a partial victory: the disputed baseball caps were actually prohibited, but not because of an infringement of the word mark “Otto”, but because of the protection of the reputation of the action mark “Otto” (pursuant to Section 14 (2) No. 3 MarkenG). Moreover, the mail order company Otto wanted to claim an infringement of its word mark “Otto” in a unique position. However, this was rejected by the BGH.

    The Hamburg Regional Court’s ruling can therefore be eagerly awaited – and not only by Otto GmbH & Co. KG, which has already announced that it reserves the right to take further legal action. Company Otto loses in the brand dispute over “Otto’s Burger” – for the moment.

    Source :

  • Friday, July 13, 2018 6:33 AM | Akriti Dayal (Administrator)

    The Japanese website hoster HP Maker won the trademark dispute against HP before the Japanese Patent Office. There was no likelihood of confusion between the two marks in the area of website creation and computer programming.

    Today at the EU-Japan Meeting, the long negotiated treaty Jefta was to be signed in Brussels, the largest free trade pact the EU has ever concluded. However, due to the heavy storms and landslides in Japan, the signing of the contract was provisionally postponed to 17 June. The EU-Japan trade agreement is designed to remove tariffs and trade barriers and counterbalance President Trump’s policy. This makes it all the more interesting to look at a recent decision in IP law in Japan.

    Brand dispute about HP in class 42

    The proceedings focused on the opposition trademark HP MAKER, which was registered by the Japanese Patent Office in Class 42 in 2017 for the “creation and maintenance of websites for third parties; computer programming”. Hewlett-Packard, the trademark owner of the HP brand and a world-renowned multinational information technology company, filed an appeal. Hewlett-Packard claimed that there was a likelihood of confusion and also pointed out that the HP brand was also known to the general public in Japan as an abbreviation for the American company. The controversial HP MAKER brand is particularly spicy, since MAKER is a manufacturer – and “HP manufacturer” would immediately trigger the association with Hewlett-Packard.

    Brand must be a source indicator

    Nevertheless, the JPO did not recognise the contradiction. The similarity of two brands is judged by their appearance, but also by the concept and the overall pronunciation of the sound. If two marks are similar in one of the points but differ in another, it is usually decided that there is no likelihood of confusion. A phonetic similarity would not be recognised as an argument between HP and HP Maker, since from a Japanese perspective a word mark is always to be considered as a whole.

    The JPO also confirmed the fame of Hewlett-Packard – but only in connection with computer-related goods as a source indicator. However, computer-related services, in particular website creation mentioned in Class 42, were not generally perceived to be associated with Hewlett-Packard and its HP brand. In addition, trademarks and listed trademarks are often considered dissimilar by the JPO as they are unlikely to be confused in terms of appearance, name and ideas – because the JPO believes that a completely different idea is generated. Finally the JPO denied any likelihood of confusion – HP lost this case.


    The larger the better-known company in a trademark dispute, the more the suspicion arises that the other trademark applicant could be a free rider. Apple also suspected the same in a recently decided case about a word mark. In this case, too, the JPO decided in favor of the Japanese smartphone manufacturer against the famous one (Info Blog: “Apple Assist Center” – Apple fails with opposition to Japanese trademark). In both cases, the famous trademark owners could not prove that they had a source indication for the disputed trademark registration. This in turn is treated in the same way in European trademark judgements: trademark protection does generally apply in relation to the exact product and to the details for which goods or services the trademark is registered or restricted.

    Are you interested in national or international brand or trademark protection?

    Please take your chance and contact us. Our lawyers are experienced in trademark and patent law, national and international law.


  • Friday, July 06, 2018 7:15 AM | Akriti Dayal (Administrator)

    Have you been seeing the PayTM logo everywhere? Outside every shop, every vegetable vendor and even at the local panwadi? Well, you have been diagnosed with the PDSD (Post Demonetization Stress Disorder). Fret not; mobile wallets are here to make all the stress go away! Among others, PayTM has already become a frontrunner in this market, having stupendously cashed in on the Government’s drive to go cashless. Little did PayTM know that its quick success has awakened an envious competitor from the Wild West.

    On November 18, 2016, PayPal instituted a Notice of Opposition in PayTM’s application under Class 36 to register its TM. PayPal is one of the world’s largest online payment services with presence in over 190 countries and the ability to transact in over 100 currencies. PayPal alleges in its notice that PayTM has misappropriated the latter’s bicolor scheme. We also have a feeling that this dispute will soon escalate into a passing off action too; wherefore we have dealt with issues beyond the scope of the opposition proceedings as well.


    Here, we shall try and analyze some of the issues involved in the present case. Let’s start with procedural objections.

    Is PayPal’s opposition plagued with laches?

    PayTM may argue that PayPal’s opposition should be rejected since it comes nearly 4 years after PayTM first started using the mark. No claims of passing off or infringement were made earlier. PayTM may also argue that PayPal has filed the opposition with a clear intention to damage the immense spurt in PayTM’s reputation after the recent demonetization in India. Having read the fine print, we believe that PayPal will take this round.

    It is true that PayTM filed its application in 2012; however, it was advertised in the TM Journal (No. 1754) only on July 18, 2016. Section 21 of the TM Act enables any person to oppose a trademark by filing Form TM-5 within 3 months of the advertisement of such mark in the TM Journal; with a maximum extension of another month. PayPal seems to have filed its notice of opposition on the very last day of this time frame on November 18, 2016. Therefore PayTM must file reply to PayPal’s opposition notice within a maximum period of three months after PayTM is formally in receipt of the opposition notice; failing which the PayTM Device Mark may be deemed abandoned.

    Can PayPal claim exclusivity over the word “Pay”?

    According to us, PayPal cannot claim exclusivity over a generic word like “PAY”. PayPal will have to prove that “PAY” has acquired a secondary meaning exclusively in relation to PayPal’s use in India. Chances to prove this seem very bleak. We can compare this decisions analyzing whether “TODAY” can be monopolized by any one newsgroup. The Delhi High Court answered in the negative because there was no evidence of them using the stand-alone term “Today” for any of their services. SpicyIP has covered this issue here. Therefore, we believe that PayTM will take this round since several other e-wallet companies use PAY in their trademarks or trade names. Similarly, the Bombay HC recently held that “SHAADI” cannot be monopolized since it’s a word of common parlance in India and would, therefore, be descriptive of online marriage portal services. Read our post on this dispute here.

    Can PayPal successfully claim exclusivity over its Bicolor Mark?

    The colour trademark is a non-conventional trademark which is still in its infancy in India. For instance, the Indian Trademark Registry rejected Cadbury’s attempt to monopolize its instantly recognizable purple packaging for lack of distinctiveness. SpicyIP has previously covered this issue here and here. Interestingly, the ‘Color Depletion Theory’ justifies the rejection of trademark protection for single color marks on grounds that protection will eventually lead to the depletion of all available colors. Read our previous post on colour trademarks here.

    However, when a combination of colours is in question, the story changes dramatically. The Delhi HC has previously extended TM protection to the distinctive green and yellow colour scheme used by Deere on its tractors. The Court held that the Defendant’s manner of using Deere’s color scheme was deceptive since the tractors manufactured by both the parties had green bodies with the wheels and seat painted in yellow.

    PayPal’s application for its particular bicolor device (pictured above) was filed in 2014 via an international registration. In its application, PayPal has stated that “…the color(s) medium blue and light blue is/are claimed as a feature of the mark. The mark consists of the word PAYPAL in stylized lettering, where the word “PAY” appears in medium blue and the word “PAL” appears in light blue.” Interestingly, this TM application has been objected to by the Indian Trademark Registry. Unfortunately, we are unaware of the exact nature of the TMR’s objections since the examination report is unavailable on the TMR website.

    Nevertheless, PayPal may still have locus to bring an action for infringement. For instance, the Delhi HC has previously held that an Applicant is entitled to file a suit for infringement even by merely filing an application for registration of the mark.

    Has PayPal acquired enough reputation enough to assert its TM rights in India?

    Next, we analyze whether PayPal has enough goodwill and reputation to prove its claims, inter alia of being a well-known mark. Two claims come into play.

    First, that PayPal has acquired an enviable reputation worldwide; such that consumers in India associate the mark (and the color-scheme) as emanating from PayPal alone. PayPal will be required to establish its reputation in the Indian market. To begin with, PayPal claims to be available in more than 200 markets. Website analyst has ranked 25th in the US and 60th across the globe in terms of overall traffic (views and clicks). These facts go a long way to show that PayPal has acquired immense trans-border reputation over a long duration.

    Indian Courts have regularly applied the doctrine of spillover of reputation to allow foreign TM owners to protect their marks in India after the Supreme Court decision in NR Dongre v Whirlpool. In particular, a strong online presence has been recognized by the Delhi HC as a legitimate indicator of such trans-border reputation. Further, the SC has also previously affirmed the Calcutta High Court’s position that such a foreign TM owner is not required to his goodwill in the Indian market to claim the protection of a globally well-known mark. We have previously covered these issues here, here, and here. Importantly, PayPal also operates the business in India through a website with an Indian domain which is marked with PayPal’s claimed bicolor device mark.

    Second, that PayPal is the prior user of the mark in India. PayPal claims to have started offering its services to Indians in 2000, making it the prior user of the mark in India. However, it must be noted that the application for the light blue and the medium blue device was filed internationally in 2014, while PayTM filed for the registration of its mark in 2012. However. PayPal claims that it has been using the device internationally since 2007.

    Therefore, we believe that PayPal most certainly has acquired immense global reputation and as such, it should be entitled to bring a suit in India for passing off its bicolor format. However, the question is: will this right lead PayPal to a desirable remedy?

    Has PayTM acquired a secondary meaning?

    PayTM has clearly benefitted from demonetization, and its recent success has brought it fame and goodwill. For instance, Bloomberg Quint notes that PayTM saw a 4.7 percent jump in its valuation in just three months. Similarly, Tech Circle reports that the currency crunch has skyrocketed PayTM’s user base to 164 million customers with nearly 40,000 merchants are signing up on the platform every day. Not to forget PayTM’s front page newspaper ad that had the Prime Minister himself modeling for the company (without his consent, of course).

    PayTM stands a fair chance to prove not only that it has accumulated goodwill in India post demonetization, but also that ‘PAYTM’ (in its bicolor format) has acquired a secondary meaning among consumers. It can rely upon the fact that many FinTech consumers have begun to use PayTM as a verb; just like Google. Fortunately for PayTM, the Indian FinTech market is quite clearly demarcated between various distinct players and ‘PAYTM’ is used by people as a verb exclusively with reference to PayTM’s services. However, sometimes this can be a precarious position to be in, as the trademark can lose exclusivity and become public juris due to the fact that it has come to be associated with the activity instead of the proprietor. Famous examples of trademark genericide are Xerox, Thermos, Escalator etc. Read our previous post on this phenomenon here

    In light of PayTM’s strong reputation and independent identity in the Indian market, we believe that it’s highly unlikely for any reasonable person to be reminded of PayPal after viewing PayTM’s bicolor mark, thereby eliminating any chance of misrepresentation or deception.


    It makes strategic sense for PayPal to attempt to enter the Indian market in a big way now since it is likely that India will be a viable market for all kinds of cashless payment services in the years to come. Importantly, in October last year, the RBI permitted 100% FDI in “Other Financial Services”, including mobile wallets under the automatic route. The RBI’s previous stringent regulations did not allow PayPal to do business in India on grounds that it was not a banking company and thus, could not be permitted to hold money. These regulations were put in place in order to ensure that such services do not become vehicles for money-laundering and tax evasion. This new development means that PayPal can now spread its wings in India, both legally as well as strategically.

    While PayPal may still have a legitimate shot at capturing the Indian market for mobile wallets, we believe that it would be unlikely that it will see any success in its trademark war against PayTM.


  • Friday, July 06, 2018 6:56 AM | Akriti Dayal (Administrator)

    Artificial Intelligence (AI) has been a technology with promise for decades. The ability to manipulate huge volumes of data quickly and efficiently, identifying patterns and quickly analyzing the most optimal solution can be applied to thousands of day-to-day scenarios. However, it is set to come of age in the era of big data and real-time decisions – where AI can provide solutions to age-old issues and challenges.

    Consider, as an example, traffic management. The first traffic management system in London was a manually operated gas-lit traffic signal, which promptly exploded two months after its introduction. Since this inauspicious start, a complex network of road closures, traffic management systems, traffic lights and pedestrian crossings have served to drive increased complexity into traveling in the City. Today traffic travels slower than ever, despite the plethora of new systems being added to better manage the system.

    AI has the potential to change this. It can harvest data on traffic volumes, historical trends and current blockages to quickly calculate the most optimal solution for traffic in London. It can do this in near real time, constantly tweaking and managing flow to deliver the best possible solution.

    This is why AI is increasingly the go to technology for organisations wanting to solve highly complex and data heavy challenges. Digital retailers are using AI-powered robots to run warehouses. Utilities are using AI to forecast electricity demand. Mobile networks are deploying AI to manage an ever-increasing demand for data. We stand on the threshold of a new age of AI powered technology.

    The Intellectual Property (IP) industry is another market where AI could have a profound effect. Traditionally powered by paper, manual searches and lengthy decision-making processes, AI can be deployed to simplify day-to-day tasks and deliver increased insight from IP data.

    Improving efficiency and reducing risk

    IP administrative tasks are one of the most time intensive and risky areas of IP. Law firms and corporate IP departments may, at any time, cover thousands of individual items of IP data, across hundreds of jurisdictions, dealing with thousands of different products. Historically this has been a significantly manual and slow process.

    Consider one single patent that a company has applied for protection for in many different countries. A network of agents, familiar with the specific processes required to gain protection in specific countries, will each help the company achieve their goal. Along the way, hundreds of items of paperwork will be generated, in multiple languages, each with their own challenges and opportunities.

    All of this information would currently be assessed manually and then input into an IP management system. Naturally enough this could easily result in many data processing errors. Now consider this across multiple patents. The opportunities for error are almost limitless. Yet for many companies IP remains its most valuable asset. A simple error in inputting a renewal date could risk losing an asset worth millions to a company. It is worth noting that the World Intellectual Property Organisation (WIPO) estimates around a quarter of patent information is wrong. The risks are therefore very evident.

    In addition, considerable time and cost accrues from the manual labour involved in inputting data. This is activity that, if it can be automated, frees law firms and IP experts to focus on more strategic issues. AI, which is highly adept at processing large sets of data quickly and accurately, can help both efficiency and accuracy. This also enables law firms and IP professionals to take on a more strategic role within the organisation, generating insight from data to help shape future company performance, whilst leaving the more mundane aspects of IP management to computers.

    By automating the submission of data and ensuring that every single item of IP has a unique identifier, correspondence from the various patent offices and agent networks can be simply sorted and searchable on demand. An AI engine can then be deployed to identify relevant information in correspondence, resulting in faster and more accurate outcomes.

    Search and analytics

    The number of IP assets globally is growing. According to the WIPO there was a 7.8% growth in patent filings between 2014 and 2015. This upward trend in filings has continued for at least 20 years. Therefore, IP documentation and resources are growing. Finding relevant information in this vast amount of data is becoming more difficult. Historically, searches have been carried out manually, with static search databases being the only support tools.

    AI and Machine Learning (ML) can not only automate the process of searching huge databases but also store and use previously collected data to improve the accuracy of future searches. AI can also be used to provide insight into a geographical or vertical market. Consider a company looking to exploit IP in new regions. It may wish to consider the best countries to file for protection. Insight into the strengths and weaknesses of markets in certain countries could be cross-referenced with competitive IP data to deliver an instant overview of the most beneficial geographies to apply for further protection. Research that would have previously taken months to achieve can be managed in minutes by deploying AI in an effective way.

    Driving insights

    A large IP portfolio is bound to have both strengths and weakness. Indeed, one of the weaknesses may be the sheer scope of the portfolio. As a patent portfolio increases in size, it becomes difficult to effectively oversee and draw insight from the portfolio. As a result, firms are not only limited to managing processes such as renewals, but also in using insight to gain a competitive advantage.

    Many IP professionals are already analyzing the value of their patent portfolio. Which patents are most effective? Which deliver most licensing revenues? In which countries? What is the value of IP to business compared to the cost of renewal? By analyzing large sets of data, AI can indicate where a company’s portfolio of IP is strongest and weakest.

    This can, in turn, shape future investment decisions in research and development, help companies understand their relative strengths and weaknesses in terms of their competitors and enable companies to understand more about the potential opportunities in new markets.


    AI is now delivering real value to companies that need to solve complex issues. Within IP management, AI can empower IP professionals. Day-to-day IP tasks can be time-consuming, but AI technology enables professionals the time to focus on more strategic decisions in their portfolio. It will also drive improved accuracy while reducing the risk of IP insight and intelligence moving on as employees do. For IP professionals, the real opportunity, however, comes from the insight that AI can provide into otherwise impenetrable and inaccessible volumes of data. AI will help IP professionals generate business insight that can open up new markets, accurately value an IP portfolio and deliver a better understanding of what and where the next generation of IP investment should come from.


    Tyron Stading is the Chief Data Officer for CPA Global, where he is responsible for creating unified data integration and analytics across all of our products and services. In 2006, Tyron founded and served as CTO for Innography, the US-based IP analytics software provider that CPA Global acquired in 2015. He was previously employed at IBM and several other high technology start-ups. Tyron earned a Computer Science degree from Stanford University and an MBA from University of Texas at Austin. Tyron has published multiple research papers on intellectual property and personally filed more than 50 patents.


  • Thursday, July 05, 2018 5:17 AM | Akriti Dayal (Administrator)

    Double patenting refers to the granting of patent protection twice for the same invention. Generally, double patenting is not permitted because an inventor could file a later application for the same invention and receive another patent term of life.

    In the U.S., double patenting is rejected under two circumstances:

    1. when the same invention is requested to be patented again; and

    2. in continuing patent applications.

    If in a continuing patent application, a claim sought for in a second patent is an obvious variation only and nothing new, a patent will not be granted. When claims of variations of an invention are patented under two separate patents, it is seen that expiration of the first patent results in an improper extension of patent rights due to an unexpired second patent. The problem associated with double patenting can be overcome by a patentee issuing a “terminal disclaimer”. A terminal disclaimer is a written statement issued by the owner or patentee stating that s/he has disclaimed the period of second issued patent that would extend beyond the expiration of the first patent.

    Double patenting also applies when there is a conflict of patent applications by two persons with regard to the same invention. When different parties claim identical invention, the Patent and Trademark Office (PTO) will require proof of first completion and the patent will granted to the party who completed the invention first.


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