mubarak thakur (director) 15 February 2011

Actual Trademark Name infringment query

Dear sirs,

we had registered for a trademark for a certain name. I will not disclose the name at this point. We had applied it under section 42. It was filed on 29th jan 2009. it has already appeared in the journal on 16/08/2010.

so basically we know that it is has been approved. what i noticed is a company is blatanly advertising our name. but the only i can see is that the name sounds exactly the same when pronounced but the only thing that is there is some spelling alphabet missing (in this case only one).

eg: our name is says DEALS, they have said DEELS.

as you can see it is same. do you think we can fight this. as far as we know it is our trademark. the problem could be that this a very huge company, and we dont know how far we can be successful. As for us using the registered name, we have been doing it for the last 2 years. and this company has started using it only for the last couple of months.

please expert advice will be more than welcome. you can post here for everybody's benefit or PM me at a personal level also.

thank you in advance

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5 Replies

Narayanarao Murali (Advocate) 15 February 2011

Dear Mubarak Thakur Ji

In our Country one problem what I experienced (hope my legal professionals agree) that even a road side criminal, or a corporate chief, or a person down with chronic illness, does not disclose the details about an issue for which he needs remedy.

In your case - (1) You do not wish to disclose under what class your product or your alleged infringer product falls. (2) Whether the alleged infringer also has registered his trademark, if so is it prior to the registration of your trademark or later. This plays a crucial role. As you allege if the other party registered his trademark before yours, he can file a case against you for infringement. Normally inspite of best methods adopted by Trademark Registry at times, their could be some slips while registering the trademarks for similar products. If your product is a pan-masala and the others is Pharma product you cann not fight the case. If your product and the product of the other is same class you can appose or fight against the other party registration and similar phonetic grounds. I guess your product is listed under class 42 and not under section-42.

Though the other party has introduced his product into the market a couple of months back, he must have registered his trademark much earlier than yours. This has to be checked.

mubarak thakur (director) 15 February 2011

hello mr. murali,

i am sorry, yes it was class 42 and not section 42. it was my typing error. with regards to the trademark being registered by him. i have checked it and not found any under the name that they are advertising.

also you are right about information.

please respond accordingly.

Nagaraja B S (Corporate Commercial & IP Lawyer) 07 March 2011

Dear Mubarak,

It is good to see you have given lot of facts on the issue. It doesn't really matter whether they have registered or not. Do you have the advertisement cuttings and other things?? These can be used as exhibits & issue a caution notice.

We need to have more personalized discussion. Kindly use my below email id.

Thanks

Nagaraj

Trademark Attorney & IP Lawyer

IP Lex Global Services

Email: nagaraja_bs@iplexglobal.in

shailendra (advocate) 02 April 2011

Sir,

You want to prosecute the infringer, you need to collect the following information:-

1. Date of use of mark by infringer.

2. Whether his trademark is registered or not.

3. Class of goods ( same or not )

4. Evidence regarding loss to your business.

After ascertain above information, you should be clear that infringer's user date must be subsequent, his trademark should not be a registere trademark and class is same than you may have a fair chance.

Atul D Suryavanshi (Attorney - JC Law Firm) 01 June 2011

Mr. Mubarak Thakur ji,

Mr Narayanrao Murali has covered all the relevant information to you, which I suppose to to vey much responsive and its your turn to make decision on the same, whether to initiate prosecution proceedings or not.

We have successfully contested the TM and Patent infringement proceedings. If you wish, we would like to help to and represent you in the proceedings.

Let us know your decision on the issue.

Remember LATE IN DECISION IS FULL CHANCE TO LOSE OPPORTUNITY.

Regards,

Atul Suryavanshi

Attorney - IPR @ Justa Causa Legal Associates

Call me @ 0992352956

E-mail - justacausa.lawfirm@gmail.com