Trademark related issue.
Sandeep Didwania
(Querist) 21 January 2012
This query is : Resolved
sir, one of my friend has been selling washing soap under 'ganesh' brand for the last 8 years, but havnt registered it under TM. from last 2 years one of his competitor also started preparing same product with the same cover and selling it under the same 'ganesh' brand. recently he has registered this 'ganesh ' brand under TM. and has served a notice to my friend claiming compensation of rs. 10 lacs for using his TM. and dispose the remaining Finished product at the earliest.
sir wen he registered his brand, he gav his address as 'Jaysree soap Factory' bt now he writes 'Jaisree soap factory' at the back of his soap ....does this provide any relief to my friend....plz help.
Devajyoti Barman
(Expert) 21 January 2012
No it would be of no help. Only the registered trade mark has relief against competitor of same brand name even if the same carrying on business from earlier.
Sankaranarayanan
(Expert) 21 January 2012
yes i do agree with mr barman , if any proof related to your business is started early and used the same brand earlier ?
R.Ramachandran
(Expert) 21 January 2012
Dear Mr. Sandeep,
If your friend was using the Mark "Ganesh" for considerable period - say 8 years - then he can definitely claim prior user and stop the other one from getting the mark granted to him.
But, this should have been done when the other party applied for registration of such a mark, and the said mark was published in the Trade Mark journal by the Trade Mark Registering Authority, any party having objection to the same should have objected.
When there is no such objection, naturally the Trade Mark Authority would have granted him the trade mark.
But that is not the end of the road for your friend. Even now, he can object to the grant of the mark - post grant objection - by bringing in appropriate proofs showing that your friend was in fact using the mark for considerable time. On that basis, the Registrar of Trade Marks, if convinced will remove the registered mark from his register.
Now that the registered owner of the "Trade Mark" in question having a filed a suit, your friend has to effectively contest that also. However, to effectively contest, he should immediately approach the Registrar of Trade Marks.
It would be advisable for your friend to immediately approach a Trade Marks Attorney in his area, show the papers and documents, discuss things and to take forward the matter immediately, without losing any further time.
prabhakar singh
(Expert) 21 January 2012
I agree with lucidly expressed opinion of Mr.Ramachandran.
Raj Kumar Makkad
(Expert) 21 January 2012
I fully endorse the views of ramachandran.
Advocate. Arunagiri
(Expert) 21 January 2012
When the name "Ganesh" is in existence for a long time, he can object the grant of Trade Mark to any other person. Even now he can prefer appeal.
More over the Trade Mark normally wont be granted for the name "Ganesh" because it is a name of a god.
R.Ramachandran
(Expert) 21 January 2012
"Ganesh" can be a trade mark. For e.g. the famous "Ganesh Beedi"!
Sandeep Didwania
(Querist) 22 January 2012
But my friend came to know about this TM registration only wen he recieved a notice claiming for compensation...Can any step be taken now?
R.Ramachandran
(Expert) 22 January 2012
Dear Mr. Sandeep,
Still you are only discussing the matter here, while your friend should in fact be consulting his lawyer and really taking the matter forward.
Whatever be the situation, the fact remains that your friend has no other option left than to fight back to regain his position. If he remains silent, or still toying with the idea whether to fight or not, then take it that he has lost his valuable right for ever. If only he could succeed (there is no reason why he cannot succeed if he can prove his prior user of the "mark" to the satisfaction of the Authorities/Court), he can not only stop the other party from using the mark for ever in future, but also could possibly think in terms of recovering whatever profit that the other party might have derived by using the "mark".
Needless to mention, of course such legal fights involve money and time - and I consider it worth spending. That is all about commercial dealings!
