PHONEPE AND BHARATPE LOCK HORNS, DIABLO TRADEMARK IN DISPUTE AND MORE

PhonePe and BharatPe Lock
Horns, Diablo Trademark in
Dispute and more
May 12, 2021
PhonePe fails to secure temporary injunction against BharatPe,
Tamil Nadu’s Matti Banana sought for GI Tagging and more
brought to you by the Trademark Attorneys at BananaIP (BIP)
Counsel

INDIAN TRADEMARK UPDATES
Delhi High Court Denies                       PhonePe’s
Injunction Against BharatPe
UPI and bank payment company, PhonePe, had recently filed an
application before the Delhi High Court, seeking an interim
injunction against its competitor BharatPe’s usage of the term
‘Pe’ as a suffix in its trademark. PhonePe claimed that by
using the term ‘Pe’ in its suffix, BharatPe had infringed
their trademarks and were attempting to free-ride on PhonePe’s
goodwill. The Delhi High Court, however, dismissed PhonePe’s
plea, holding that the term ‘Pe’ was not a distinctive
character of the mark, and the usage of the same by BharatPe
was not sufficient enough to cause confusion in the minds of
the consumers. The Court further observed that the marks were
completely different as the words ‘Phone’ and ‘Bharat’ were
not even phonetically similar. The Court in this instance
upheld the well-established principle that ‘exclusivity can
only be claimed on the entire mark and not parts thereof.’

Citation: PhonePe Private Limited v. EZY Services & Anr. [IA
8084/2019 in CS(COMM) 292/2019]

INTERNATIONAL TRADEMARK UPDATES
Blizzard Entertainment                 Opposes       Fox’s
‘Diablo’ Trademark
Internationally renowned video game developer, Blizzard
Entertainment, has recently filed a notice of opposition
before the United States Patent and Trademark Office (“USPTO”)
against Fox Media’s trademark application for the mark
‘Diablo’. Fox Media had filed the application in relation to a
character named ‘Diablo’ on its new television show
‘HouseBroken’. Blizzard Entertainment, whose video game series
‘Diablo’ was launched in 1997, also owns the trademarks
‘Diablo II’, and ‘Diablo III’ for the subsequent editions of
the game. In its opposition, Blizzard has claimed, that Fox’s
application for the mark ‘Diablo’ is contrary to federal
trademark law, as it would cause confusion and would deceive
consumers.

Wrigley Cracks             Down      on    THC-Infused
Skittles
World-famous confectionary company, Wrigley, has recently
instituted a suit before the United States District Court for
the Central District of California, against several websites,
alleging infringement of its trademark rights. Wrigley, which
owns the ‘Skittles’, ‘Starburst’ and ‘Life Savers’ brands of
candy has alleged trademark infringement by several websites,
including www.2020ediblez.com, www.ie420supply.com, and
www.oc420collection.com among others, who were selling THC
and cannabis infused products such as ‘Medicated Skittles’,
‘Starburst Gummies’ and ‘Life Savers Medicated Gummies’.
Wrigley has alleged that the sale of these products, which
nearly-identically resemble those of Wrigley’s, infringes upon
its trademark rights, and might also pose a danger to
consumers who may inadvertently consume the same, believing

them to originate from the confectionary giant.

BRAND LICENSING UPDATES
Virgin Media Partners with Southampton FC
Academy
Virgin Media has recently announced its latest campaign, the
Virgin Media Football Academy, in association with English
football club Southampton FC, to launch a series of training
videos and live sessions for students and teachers alike. The
aim of the campaign is to help teachers and pupils to restart
physical education after the prolonged school closures caused
by the COVID-19 pandemic. The sessions will concentrate on
football skills as well as nutrition and mental wellbeing,
delivered by professional coaches and players from Southampton
FC’s Academy.

TCG Entertainment Secures Deal for Ella
Fitzgerald Concert Experience
Evolution USA, the global licensing and brand management
agency of the legendary American jazz singer, Ella Fitzgerald,
has linked up with TCG Entertainment to carry the iconic
singer’s music to global audiences with a live symphony
orchestra. The shows, which will be produced by TCG
Entertainment, are set to launch in 2022, where the audience
will be able to enjoy the never seen before music, along with
the star’s greatest hits, licensed from Evolution USA. The
concerts will be performed all over the United States before
moving to international audiences.

DOMAIN NAME DISPUTE UPDATES

Mall Operator Attempts Reverse Domain
Name Hijacking
Real-estate giant, Majid Al Futtaim Properties Llc, the
operator of a chain of shopping malls in the Middle East
called ‘City Centre’, recently instituted a cybersquatting
dispute before the World Intellectual Property Organisation
(“WIPO”), against the domain name www.CityCentre.com.      The
Panel constituted by WIPO under the Uniform Domain Name
Dispute Resolution Mechanism (“UDRP”), however, observed that
the owner of the disputed domain, Domain-It, had acquired the
rights over www.CityCentre.com in 2001 itself. The Panel
further held that the expression ‘City Centre’ was a
descriptive term, and had no specific connection with Majid Al
Futtaim Properties. Therefore, the complaint was disposed of,
and the Panel found Majid Al Futtaim Properties guilty of
attempting reverse domain name hijacking.

GEOGRAPHICAL INDICATION UPDATES
Tamil Nadu Seeks GI Tag for Matti Banana
The Kanniyakumari Banana and Horticulture Farmers Producer
Company Limited, has recently filed an application for GI
Tagging of the Matti Banana, endemic to the Matti region of
Tamil Nadu. The application has been facilitated by the MSME
Intellectual Property Facilitation Centre, as well as NABARD’s
Madurai Agri Business Incubation Forum. The Matti Banana has
been used for a prolonged period of time as baby food, and is
also said to possess medicinal properties. The application
claims that the tribes of the Western Ghats have even used the
Matti banana to cure diseases such as jaundice.

Authored and compiled by Uma T.S, Shreya Chaddha & Varun
Gopalakrishnan

About   BananaIP            Counsels         Trademark
Attorneys
The Trademark News Bulletin is brought to you by the
Trademark/Copyright, IP Transactional Strategy Divisions of
BananaIP Counsels, a Top IP Firm in India. Led by Sanjeeth
Hegde, BananaIP Counsels’ trademark attorneys are among the
leading experts in the field. If you have any questions, or
need     any    clarifications,      please    write     to
contact@bananaip.com with the subject: Trademark News.

The weekly trademark news initiative is a part of their pro
bono work and is aimed at spreading trademark awareness. You
are free to share the news with appropriate attribution and
backlink to the source.

Disclaimer: Kindly note that the news bulletin has been put
together from different sources, primary and secondary, and
BananaIP’s reporters may not have verified all the news
published     in   the    bulletin.     You    may   write
to contact@bananaip.com for corrections and take down