Dawn Ellmore Employment's Blog

IP and Legal Industry Updates


trade mark

Taj Mahal Palace is the First Indian Building to Become an Official Trade Mark

The Taj Mahal Palace was built in 1903 and acted as a triangulation point for the Indian Navy to show them the way towards the harbour.  The Taj Mahal Palace, an iconic 114-year-old building, in Mumbai, India has just become an official trade mark.  This hotel now joins the worldwide elite trademarked properties including the Empire State Building (New York, USA), the Eiffel Tower (Paris, France) and Sydney Opera House (Sydney, Australia).

This is the first time since the Trademark Act came into force in India in 1999 that a trade mark registration of an architectural design has been made.  The Indian Hotels Company (who run the Taj Mahal Palace as their flagship hotel) said that they applied for the trade mark registration in order to protect the distinctiveness of the building.


Gene Simmons Tried to Trademark Devils Horns Rock Hand Gesture but Withdrew USPTO Application

Israeli-American hard rock bass guitarist and singer for the hard rock band Kiss Gene Simmons has been in the IP news recently after he attempted to trademark a hand gesture he claimed he invented.

In the trade mark application to the United States Patent and Trademark Office (USPTO) Simmons applied for the trade mark in the context of “entertainment, namely, live performances by a musical artist; personal appearances by a musical artist”.  The trade mark that was sought was described as follows: “a hand gesture with the index and small fingers extended upward and the thumb extended perpendicular.”  This means that the claimed trade mark hand gesture was the ‘devils horns’ rock symbol but with an added thumb sticking out at the side.  It was the gesture itself that was claimed, rather than image or depiction of the gesture.  Simmons noted in the USPTO trade mark application the first date that he used/invented the hand gesture which was 14 November 1974.

Less than two weeks after filing the trade mark application with the USPTO Simmons withdrew the application.  There were several suggested obstacles with the application if it were to have proceeded, noted below:

  • hand gestures in and of themselves cannot function as trade marks.
  • the hand gesture was identical to the American Sign Language sign for “I love you”
  • John Lennon on the cover of Yellow Submarine in 1966 uses the same hand gesture backwards.
  • Simmon’s application has drawn a fair amount of criticism.


Essential Smartphone Faces Trade Mark Infringement Allegations Prior to Launch

The American computer programmer, engineer, entrepreneur and venture capitalist Andy Rubin recently announced his upcoming Essential smartphone.  Unfortunately before the product launch the company behind the Essential smartphone has been named in a trade mark infringement claim over the name Essential.

In August 2016, US based Spigen (a company that designs and manufactures cases and accessories for mobile devices) registered a Class 9 trade mark for the term “Essential.” Class 9 trade marks cover computer and technology products (including smartphones and accessories).

In the trade mark infringement complaint Spigen’s attorneys allege that the use of the term “Essential” in the Essential smartphone is a violation of Spigen’s trade mark which cause consumers confusion over the product’s origin.  They have therefore requested that Rubin’s company cease and desist from using any marks using the term “Essential”.

Disputes such as these are often settled outside of court with settlement agreements.  However if such terms cannot be agreed it could forced a rebrand of the new Essential smartphone.


Trade Mark Applications Suggest Lidl may open Future Stores in Australia

The German global discount supermarket chain Lidl has recently filed trade marks for LIDL TO GO (Lidl’s convenience assortment) and LIDL YOU (Lidl’s streaming service).

Lidl has gone on the record to say that it has no current plans to enter the Australian market despite having applied for thousands of trade marks in Australia since 2000 (when rival discount supermarket chain first set up in Australia).

In 2016 Lidl filed trade marks covering hundreds of products, contacted suppliers and held set up plan talks with the Australian government following detailed research into the retail Australian market.  In early 2017 however it was reported that Lidl’s current plans remain the expansion into the US market.


Nestlé Fails to Secure 3D KitKat Shape Mark in the UK

Transnational food and drink company Nestlé that owns and manufactures the popular confectionary brand KitKat has been trying to trademark the four fingered 3D KitKat shape in the UK for many years.  The KitKat shape has already received trade mark registration in Germany, France, Australia, South Africa and Canada.

The European Court of Justice previously ruled the four-fingered shape, breaking apart with a snap, was not distinctive enough to merit a trade mark and that such a designation would not comply with European law.  A 2016 UK High Court ruling also denied the trade mark attempt.

The issue at the heart of this case was whether or not the product’s shape was sufficiently distinctive to the brand that it would warrant any other manufacturers from using a similar format.

After months of consideration the UK Court of Appeal judges found the KitKat shape was not a “badge of origin” meaning that customers would not rely on the shape alone to identify the confectionary item, even though market research showed it to be very well known.  They also ruled that the four-finger design had “no inherent distinctiveness”.

This latest UK judgement means that competitors will now be able to produce similar shaped products without the risk of future legal challenges.

Although Nestlé has been unsuccessful at both the UK High Court and Court of Appeal Nestlé could still try to take the case to the UK Supreme Court.


TeamDrive Systems GMBH Sue Google for Trade Mark Infringement

Award winning German software company TeamDrive Systems GMBH (which makes secure, cloud-based, file-sharing software) recently asked the High Court for a European-wide injunction preventing Google Ireland Ltd and Google Commerce Ltd. from infringing its trade mark “TeamDrive” on its products.

TeamDrive Systems GMBH claim Google infringed their European Registered trade mark “TeamDrive” (obtained in 2006) for Google’s software product called “Team Drives” which offers apparently identical services.

Google had a major event in 2017 in San Francisco, USA surrounding “Team Drives” where the term “Team Drives” was used by Google in promotional materials.

In Google’s defence they say the term “Team Drives” is not used as a trade mark sense, but as a description of the function of its Google Drive Product.  Google has decided to re-brand some of its products including its Google Drive product.

No injunction has currently been granted and the outcome of the case is awaited.


High Court Ruled Apple’s IWATCH Trade Mark Invalid

The trade mark application for IWATCH was submitted by a third party and assigned to Apple in 2015.  Apple’s IWATCH trade mark was found to be invalid after the High Court’s verdict (initiated via an appeal by Apple) agreed with the IPO’s original findings of refusing the trade mark because the mark was not distinctive and was descriptive of the goods applied for.

Trade marks that are descriptive of the goods or services applied can still be registered but only if the applicant can prove the trade mark has acquired distinctive character.  Apple tried to do this by arguing that the ‘I’ prefix in their previous trademarked products (e.g. iPhone, iPod and iPad) made it distinctive of the Apple brand but the IPO did not agree with this as they felt the ‘I’ prefix denoted internet which when combined with the descriptive term ‘watch’ results in IWATCH being descriptive of a watch like device with internet function.  The High Court agreed with the IPO’s rationale and further pointed to other brands using the ‘I’ prefix (e.g.  iPlayer, iSwatch) resulting in Apple’s defence being unsuccessful meaing Apple had ultimately not shown that IWATCH had acquired a distinctive character.


How Legal is Memorabilia Containing The Pope’s Image?

There seems to have been a recent increase in tourist souvenirs and other memorabilia containing the representation of The Pope.  Some reasons for this include the great popularity of Pope Francis (the 266th and current Pope of the Roman Catholic Church) among Catholic people and the easy access to the Pope’s photographs online.  The use of unauthorised images, symbols and official coats of arms fall within the legal scope of trade mark as well as competition law for prosecution in Italy.

Protection of The Pope’s image and holy symbols are reportedly being stepped up after a statement by the Secretariat of State was released warning against unauthorised use and misuse of the image of Pope Francis.  Image right protection is particularly strong in Italy, in fact the law states:

“If the image of a person, their parents, their spouse or their children is used or published outside the cases in which use or publication is allowed by the law, or in such a way as to cause prejudice to the honour or reputation of the person themselves or their said relatives, a judicial authority upon request of the person, can repress the violation and order payment of damages.”

The Secretariat of State has also reportedly hired a law firm to monitor and repress any unauthorised third-party uses of the image of The Pope, sending cease-and-desist letters on behalf of the Vatican.

So it would seem that any memorabilia containing The Pope’s image or other holy symbols without prior authorisation from the ecclesiastical jurisdiction of the Catholic Church in Rome are illegal and should therefore be avoided.


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