Trademark
Querist :
Anonymous
(Querist) 05 May 2010
This query is : Resolved
Hi
There are 2 queries
1.Suppose I m using xyzshow from year 2007 and booked a domain xyzshow.com but in the year 2008 some other company booked xyxshows.com ....this is confusing the customers...i applied for trademark xyzhow few months back....can i sue xyzshows.com?...is there any way i can stop xyzshows to discontinue their operations?
2. is booking a domain can be shown as 'user' thing.....what documents are needed to show the usage of the mark?
thank you
Raj Kumar Makkad
(Expert) 05 May 2010
If you had no trademark and some other company later on obtained it then you have got no right to obstruct such company to use his trademark because it is similar to your's long use.
It depends upon case to case which type of things can be shown in support of 'user thing'.
R.R. KRISHNAA
(Expert) 05 May 2010
Though XYZshow is used by both of you, the trade/business is most important to decide whether there is any infringement or not. If the trade/business of yours is different from your opponent then there is no question of infringement and you can register your mark.
But in case if the trade/business is more or less same or cognate you can file a complaint before the WIPO (World Intellectual Property Organization)against the use of domain name by your opponent. You may refer the WIPO website for further information on stopping your opponent from using the domainname which is similar to your tradename. Meanwhile you can apply for a trademark before the registry.
Yes booking a domain name can be shown as a way of user but you need to establish that actually you have used the particular mark in business by way of sales or any other proof.
Guest
(Expert) 05 May 2010
1.Suppose I m using xyzshow from year 2007 and booked a domain xyzshow.com but in the year 2008 some other company booked xyxshows.com ....this is confusing the customers...i applied for trademark xyzhow few months back....can i sue xyzshows.com?...is there any way i can stop xyzshows to discontinue their operations?
Trademark is different from domain name and its' registration. In your case, your opponent has obtained the name by adding a 's' after its' name (xyzshows.com), which is feasible in domain registration, whereas, in trademark such name being 'deceptively similar' can not be registered. If you can establish your prior usage, you can seek 'injunction' against your opponent from using the deceptive name.
2. is booking a domain can be shown as 'user' thing.....what documents are needed to show the usage of the mark?
Booking a domain name along with its' in-use operation status can also be shown as 'user' thing. The documents which are needed to show the usage are, (i) Any published Advertisement regarding the trade, (ii) Invoices/Bills, (iii) Agreements entered on the 'Trade Name', (iv) Other registration certificates (for eg., 'Certificate of incorporation' in case of Pvt Ltd Co., ESI & PF registrations, etc., In gist, whatever documents which establish the operation status of the business/trade can be shown as proof of your 'prior usage'.
ESTHERPRIYA
(Expert) 05 May 2010
as you dont have a registered domain or mark you can sue under passing off of a trade mark alone not under infringement of trade mark.
