cpc

need help in filling tm5 to oppose trademark


I have registered a trademark for my small partnership Firm in class 35 (Published in Journal) and three other pending trademark in Class 16 and Class 41, Class 42.

Now someone have also registered same Trade Mark name in some other city in Class 16 and Class 41 under Advertised before Acceptance under section 20(1) Proviso. And registered the company as PVT. LTD company as well.

So could you guys help me in filing my TM5 forum by providing sample of already field TM5 forum..

Or can guide me, what I have to fill against option “Proprietor’s code No:”

Secondly could you please suggest me which one option is more effective in India filing TM5, Logging criminal complaint or civil suit?

 

 

 
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Advocate

Dear Rohan,

Firstly, AVA i.e Advertised before Acceptance does not amount to Registration of a Trade Mark and moreover the same is done for the reason of invoking opposition(s), just like the  one you are contemplating currently.

Secondly, Proprietor's Code / Agent's Code in the TM 5 form is the space allotted for identifying the person making the opposition and the same is assigned by the Trade Marks Registry.

Thirdly, one commits no crime or civil wrong by filing his Trade Mark for registration and hence no Criminal Complaint or Civil Suit will be substantial solely on this ground. TM5 is the only option you have to impede the registration of the other party. In case the registration is already done,you  can initiate a Cancellation Proceeding before the Ld. Registrar of Trade Marks in the concerned Trade Marks Registry.

I hope I am clear to you. Should there be any further question(s) please feel free to ask .:)


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Thank you so much Mr. Kaushik Saha for providing me valuable information regarding “Proprietor’s code No”.

I would like to know one more thing here, where should I submit my TM5 application ..in my nearby TM registry office or where they had filed their trademark AVA application?

My TM case scenario: Class 35 - Already Published in Journal | Class 16, 41, 42 - Still pending.. Other party filed TM in Class 16, 41 under AVA and Class 35, 42 by normal process..

So, can I file a Criminal Complaint or Civil Suit against them as they are violating my TM under class 35 as my TM already published in Journal in this class....

 Thanks in advance..

 

 

 
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Advocate

Rohan,

As I have pointed out in the third point of my earlier reply that application for registration of TM does not afford a cause of action for either civil or criminal proceeding and hence only an opposition to the proposed registration of the TM of the other party is all you can do at this stage if you are to block their registration process.

On the other hand, you may also institute a Civil Suit for Passing Off in a district court of proper jurisdiction wherein it is to be be contended that the other party, by using your prior originated and adopted TM, is pushing goods of their manufacture in the market as and for those manufactured by you and thereby hampering your goodwill.

Please note further that mere advertisement in the Trade Marks Journal does not  afford you any protection or whatsoever to you as the same is published to bring the attention of the concerned people to your TM registration application so that they may oppose it if they desire so. 

 
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Rohan,

If you want to file opposition than you will have to file TM-5 alongwith govenment fees rs. 2500/- in trademarks aregistry in which the applicant's application.

For, example I have my trademark application in trademark registry in Ahmedabad than you have to file your opposition in TM-5 in trademarks registry at Ahmedabad in prescribed form with all necessary grounds like you are the first user, your mark has been registered in respect of your trading.

You have to state your address for services along with your signatureand verifaction also.

with regrads

Hiren U. Trivedi

Trade Marks Attorney & Advocate

 
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Corporate Commercial & IP Lawyer

Dear Mr. Rohan, We can help you to file TM5 For more details Contact Nagaraj Trademark Attorney & IP Lawyer IP Lex Global Services Email: nagaraja_bs@iplexglobal.in Mob: 9902007635
 
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