|Originally posted by : Nihal Thareja
Recently I applied for registering my trademark under the name of 'MAASTICK' for my business of readymade garments and clothing. I have received an objection from a person who has been doing the business under a registered Trademark name of 'MATCHSTICK' saying that it is similar to the one I wish to get registered.
I have a different logo design and I think my name is not having a phonetic similarity with the one that is already registered. Now I have to file a reply within 30 days to submit why and how my Trademark can be registered as against the one already registered.
So I want to ask what contentions and legal points can be added to my reply which would deny the similarity and whether I can quote the decision of the courts in my reply where the courts have allowed registration of similar names of trademarks (for example NANDHINI and NANDINI)
Thanks in advance!
The trademark reflects the goodwill of a company. Hence, it is vital for you to keep in mind that you are in no way trying to 'steal' the identity of the opposing party.
The first thing that you need to put forward to the court of law is the nature of the opposing business. You will have to prove that those two products are un-identical. When you establish this point, that is when you can use the reference to the NANDHINI DELUXE CASE.
You also need to put forward the Class under which you are asking for a trademark. Your will file under Class 25: Apparels and Clothing. Make sure to put this forward, and also state the Class under which the opposing party has filed a trademark under.
You cannot claim that the pronunciation of the two companies being different. You must be aware that different states have different pronunciations, so, your contention will not be very strong in the eyes of the law.
You can also make a claim that the opposing company cannot have a trademark over the entire class of goods. This is further elaborated in the case Vishnudas Kushandas v the Vazir Sultan Tobacco Ltd. and Anr. (366 1996 SCALE (5)267). This case citation can be used in the case where you fall in the same category of class. You can state, 'that the opposing party does not have monopoly over the entire class of good, when the trademark is not being used with respect to all the goods falling under the said class.'
So, in a nutshell, you will have to study the trademark of the opposing party, and then you can move forward.
Hope this gave you enough content to start.