IP News Update: March 2023

• Adidas Drops Trademark Opposition to Black Lives Matter Logo

Adidas AG (“Adidas”), a well-known sportswear brand, had previously opposed the trademark registration of the Black Lives Matter Global Network Foundation’s logo. The Foundation had filed for a yellow three-stripe logo registration at the U.S. Patent and Trademark Office. Adidas believed that the said logo was confusingly similar to its three stripes trademark. The sportswear brand seems to have dropped the opposition due to an apprehension that the public may misunderstand its trademark opposition to criticize the Foundation’s mission.

● US Supreme Court to Decide a Trademark Matter Concerning Jack Daniels

Jack Daniels, a famous liquor brand, had previously filed a trademark infringement suit against Phoenix-based VIP Products LLC. VIP, a dog toy company, had used the mark “Bad Spaniels” for chew toys and mimicked the Jack Daniel's bottle design with comical dog-themed text alterations, like replacing "Old No. 7" with "the Old No. 2, on your Tennessee Carpet" and alcohol descriptions with "43% Poo By Vol." and "100% Smelly." Jack Daniels alleged that VIP’s use of the mark was misleading and led to trademark dilution. However, the Ninth Circuit held that VIP's toy was a creative work with a "humorous message" that was entitled to First Amendment protections. Aggrieved by this decision, Jack Daniels has approached the US Supreme Court, which is yet to decide on the matter.

● Samsung Wins Jury Trial in 'S10' Trademark Lawsuit

Samsung Electronics Co., Ltd., a South Korean multinational electronics corporation, faced trademark infringement allegations from S10 Entertainment and Media LLC, which manages the pop singers Anitta and Normani. S10 Entertainment claimed that it began using the S10 mark in 2017, and Samsung’s advertising would confuse customers into thinking the brands were affiliated. The Los Angeles federal jury favored Samsung and found that S10 Entertainment had not shown that Samsung's popular smartphones were likely to cause consumer confusion and adversely affect its brand in the marketplace.

● Subway Cannot Claim Monopoly Over the Term “Sub”

The Delhi High Court in Subway IP LLC v. Infinity Food & Ors. has held that Subway cannot claim "exclusivity" or "monopoly" over the term "Sub.” The trademark dispute arose between Subway, an American multinational fast food chain, and Infinity Food, which used the brand name and logo “Suberb” with a yellow and green color scheme. Subway alleged that “Suberp” was identical to its mark, “Subway,” which the Delhi High Court denied.

● Spotify Removes Zee Music’s Songs and Albums from its Platform

Spotify has removed Indian record label Zee Music Company’s catalog after failed negotiations to renew their licensing agreement. Many popular Hindi songs including “Maiyya Mainu” from Jersey (2022), the title tracks from Kalank (2019) and Pal Pal Dil Ke Paas (2019), “Makhna” from Drive (2019), “Namo Namo” from Kedarnath (2018) and “Zaalima” from Raees (2017) and the No.1 track on Spotify in India, “Apna Bana Le” from Bhediya (2022), is no longer available on the platform. Read more about Spotify and Licensing here.

● The Weeknd Reaches a Settlement with Two Musicians

Suniel Fox and Henry Strange sued The Weeknd (real name Abel Tesfaye), a Canadian pop star, in 2021 claiming that his 2018 hit “Call Out My Name” had copied one of their songs. The two musicians had filed a copyright infringement suit at the Los Angeles federal court. They have now filed for dismissal of the case as they have reached a settlement with The Weeknd.

● Indian Patent Office Rejects Patent Renewal of J&J’s TB Drug

The Indian Patent Office has rejected a patent extension application filed by major global pharmaceutical company Johnson and Johnson (“J&J”). J&J had patented an anti-Tuberculosis (TB) drug called “Bedaquiline”, which is used to treat drug-resistant TB patients. The drug will no longer be protected beyond July 2023 in India. The rejection of the patent extension would open the doors for drugmakers to produce generic drugs at a lower price.

● Kangra Tea from Himachal Pradesh Bags the European Geographical Indication Tag

The European Commission has granted geographical indication status to Kangra tea, a unique variety grown in the Kangra district of Himachal Pradesh. Kangra tea has a rich history that dates back to the mid-19th century. The Kangra tea industry flourished in the late 19th century and became famous for its unique flavor and aroma. The tag will help producers of Kangra tea to enter the European market.