Inter Miami Suffers Setback in Trademark Infringement Fight with Inter Milan

Inter Miami and Major League Soccer (MLS) have recently suffered a setback in the Trademark Infringement dispute with Serie A giants Inter Milan, as the U.S. Patent and Trademark Office (USPTO) dismissed one of the two arguments made by Miami that it should not be compelled to change its name.

On September 5, 2018, it was announced that the new Major League soccer franchise in Miami would be named Inter Miami CF – the official name Club Internacional de Fútbol Miami. As the team continued with a tradition of MLS teams copying European club titles like Real, Sporting, United, and City, the announcement raised some cries.

It also raised voices at Inter Milan, which filed a Trademark Application for its official name F.C. Internazionale Milano S.p.A in 2014 with the USPTO to get exclusive rights to use the term ‘Inter’ in the US, a move to prevent Inter Miami from marketing itself as ‘Inter.’ Inter Milan, in its application, contended that the team has become identical with the word Inter.

Despite the announcement made on September 5, MLS didn’t apply for the Trademark Registration for the name Inter Miami CF until September 25, 2018, and it wasn’t until March 2019 that MLS filed a notice of opposition to Inter Milan’s claim. The league, in the filed opposition, alleged that due to the widespread use of the word ‘Inter’ in soccer, the relevant customers don’t associate this word with one soccer team. Moreover, ‘Inter’ isn’t a source indicator for goods and services related to soccer.

The notice further claimed that the registration sought by the Applicant would damage MLS as such registration will prevent registration of ‘Inter’ with other wording even upon a showing of acquired distinctiveness in association with a soccer team.

According to many reports, Inter Milan successfully applied for a motion with the USPTO to dismiss the ‘likelihood of confusion’ claim by MLS. As the USPTO ruled, MLS claimed that several clubs worldwide use the term Inter in their name; for instance, SC Internacional of Porto Alegre, Inter Atlanta FC, FC Inter Turku (Finland), Brazil, Inter Nashville FC, NK Inter Zapresic (Croatia), Inter de Grand-Goave (Haiti), and Inter Leipzig (Germany). Nevertheless, the claim failed in showing that MLS possesses valid proprietary or ownership of the name ‘Inter.’

The USPTO ruling undermines one of the two key legal arguments of Miami. Although Inter Miami has used its right to replead the ‘likelihood of confusion’ claim and Inter Milan has filed a motion to dismiss it, the legal battle is expected to continue later this year. For more visit: https://www.kashishipr.com/ 

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Calcutta HC Grants Relief to Republic TV in Trademark Infringement Suit

The Calcutta High Court (HC) has recently granted relief to Arnab Goswami’s AGR Outlier Media Asianet News Pvt. Ltd. (plaintiff) in passing off lawsuit citing infringement of Republic TV’s trademark.

The Trademark Infringement suit had been filed against Shailputri Media Pvt. Ltd. (defendant) running an internet portal under the domain name ‘www.republichindi.com,’ obtained on May 6, 2017, the same day on which Goswami’s Republic TV was launched.

The plaintiff told the HC that even before May 2017 launch, Republic TV was advertised on a nation-wide basis for many preceding months. Moreover, the trademark for ‘Republic’ was received on November 20, 2016.

According to these facts, it was contended that the defendant had copied the trademark of the plaintiff. The plaintiff claimed that the defendant had used a domain name similar to Republic TV’s, and also ignored the legal notice sent to the defendant in this regard.

On the other hand, the defendant argued that the name of ‘Republic Hindi’ was conceptualized and implemented by itself. It was also argued that the plaintiff was looking for monopolizing the use of the term ‘Republic,’ even though it was a generic term with nothing distinctive in it. To strengthen this argument, the defendant also made reference to other media outlets using the word ‘Republic’ in their brand names, like the News Republic, online Republic Malayalam, online Republic – Tamil, and news republic India. The defendant continued by saying that the plaintiff doesn’t possess any right over the term ‘Republic’ and thus could not restrain anyone from using the same. Further, it was claimed that the defendant’s Republic Hindi portal had also been launched on May 6, 2017. Hence, the company could not have had any prior information regarding the plaintiff’s channel, which was also launched on the same day. The defendant then said that the domain name ‘www.republichindi.com’ was a reliable, concurrent, and bonafide adoption.

The Court observed the similarities between the logo of the Republic TV and the Republic Hindi, even though the two operated on different modes of media. It said that while the defendant’s claim regarding bonafide adoption of its domain name needs consideration, there’s nothing on record to clarify that it had conceptualized ‘Republic Hindi.’

The Court also observed the advertisements of March and April 2017, which show that the plaintiff had started using the mark many months before the defendant. It means the public at large was already made aware that the plaintiff would launch a TV channel under the name and logo of the ‘Republic TV,’ much before the defendant purchased the domain name ‘www.republichindi.com.’

Given all these facts and observations, the HC disposed on the plea by saying it found that the manner in which the term ‘Republic Hindi’ is being used by the defendant, the mark appears deceptively similar to that used by the plaintiff. Hence, in such circumstances, there would be an order in terms to provide relief to the plaintiff.

The plaintiff ARG in this matter was led before the HC by Senior Counsel Ranjan Bachawat and Advocate Rajarshi Dutta. While, the respondent was represented by Advocates Sayan Roy Chowdhury, Rudraman Bhattacharyya, Shuvasish Sengupta, etc.For more visit: https://www.kashishipr.com/ 

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Top Five Reforms Made to Trademark Law of Canada in 2019

After around five years of anticipation, sweeping reforms to the Trademark Law of Canada had finally come into force on 17^th June 2019. Well, these changes that have influenced the Intellectual Property (IP) industry are many in numbers, and being familiar with all of them may appear a bit arduous and frustrating. Hence, to help you to enjoy the trademark rights under the changed law with ease and without any hurdle, we have summarized some of the most vital changes that trademark owners and practitioners must consider.

Came into force on 17^th June 2019, the following are some of the crucial reforms made in Canada’s Trademark Law.

1.     Registration and Renewal Terms Are Shortened

 In comparison to the previous term of 15 years, the new registration and renewal terms under the reformed rules will be ten years. It means that any registration issued on or after 17^th June is valid for ten years. Similarly, any registration renewed on or after this date will have a renewal term of 10 years.

2.     More Non-Traditional Trademarks Are Registrable

Under the amended Trademarks Act, the applicants are allowed to file several types of non-traditional trademarks, most of which weren’t permitted before. Some of these marks include taste marks, scent marks, and marks for color per se. However, in almost all cases related to applications for non-traditional marks, there is a need to provide evidence proving that the mark was distinctive in Canada at the date of applying.

3.     Divisional Applications Are Available

As of the law (rules) amended on June 17^th, it is now possible for the applicants to divide their applications, especially to overcome objections raised during the prosecution or the opposition. It is one of the best ways to make one portion of the application to proceed towards registration while focusing on and removing issues on the remaining ones.

4.     Notification of Third-party Rights Are Involved

The Canadian Intellectual Property Office (CIPO) under these amended rules has revealed an objective to introduce a mechanism to bring third parties to CIPO’s attention. This part of the amendment is expected to have an impact on the registration of pending Trademark Applications in Canada. This mechanism, although new in Canada, it is similar to the concept of “letters of protest” available in many jurisdictions.

As the amended rules say, the procedures that do not create an inter partes proceeding are now limited to three grounds, such as:

·         Confusion with any Registered Trademark

·         Mess with any prior-filed application

·         If the registered trademark is used to define products and services in the application

Apart from this, the amendment says that written arguments or evidence of prior use will not be considered or accepted.

CIPO also indicated that if the specified mechanism is abused, it holds the right to dismiss the practice.

5.     Section 45 (Non-Use Cancellation) Has Been Targeted

 Previously, Section 45 (non-use cancellation) notice was applicable to be issued against the registration as a whole, even if the requesting candidate wants to challenge only one portion of the products or services.

Nevertheless, it is now (after the amended rules came into force) possible to get Section 45 notice issued against any subset of the assets listed in the registration. Well, this amendment is expected to result in more efficient and quicker resolutions of concerns related to such proceedings.

Another remarkable change is that CIPO itself can initiate the proceedings associated with Section 45. Note that beforehand, such proceedings were initiated only at the request of third-parties. However, it is still to be seen how and when CIPO intends to exercise this power.

Are You Ready?

After going through the above-given statistics, you are now available with almost all the information needed to obtain Trademark Registration in Canada. This up-to-date info will help you in several ways, like preventing rejection of the application, enjoying all benefits of registration for the complete term, etc. Hence, be confident and file the trademark application in Canada without any hesitation. Nonetheless, if there is any doubt, then it is better to consult any experienced Intellectual Property Law Firm or Trademark Attorney before proceeding. For more visit: https://www.kashishipr.com/

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