cpc

notice for withdrawal of the mark


Dear Friends,

One of my client filed the application for the registration of the  mark ' M' , 10 years back and the same application still pending befor the Trade Mark registry. thereafter in 2006 my client filed one more application using the brand extension 'M+' One Company by name Z opposining the second application allegeing the said mark deceptive similar to their mark and forward the legal notice in that regard to  M+ mark.
My query
1. For the first application they had not filed the opposition and objection , still pending
2. Now they thretening my client  to withdraw the mark 'M' & 'M+' stating the marks are deceptively similar to their mark but in official search report and in examination reprot their mark is not depicting.
 Whether it will affect the registration proceedings of the mark " M' & 'M+'

presently Wheter they  having the right to oppose first apoplication ?

How i can give my answer to their notice?

kindly advise me it is very urgent

 
Reply   
 
practicing advocate

reply to the notice stating the details of the application given by your client and instruct them to withdraw the notice otherwise my client will initiate legal proceedings against you at your cost.

 
Reply   
 


Asst, Manager-Legal

Dear Ashok,

It is my considered view that, receiving treat notices for deceptive or similarity between the rival marks is common in trade business.

I understand that you have strong grounds with you to blast opposite party’s notice. Receiving deceptive similarity notices  does not fall under the preview of section 9 or 11 of Trade Marks Act,1999.

As far as your 1st application is concerned is that your application have honest right to registration under section 12 of the Act. Please refer section 12 of the Act for more details.

All you would have to do is that in your reply notice or take the following counters to defend yourself:

1.Prior user (see whether you are a prior user than your opposite party).

2. In case you are a prior user than your opposite party than you have absolute grounds to register your trademark even if it is pending from long time.

3.take a  defence under Section 12 of the Act, if you are okay with that.

4. Take a defence that you are using the said trademark from long back.

5. Mention the date of first invoice and last invoice date.

6. mention your annual transaction.

7.take a strong defence that at the time of adver... of 1st application , opposite party never oppose the said trade mark or never send the legal notice. Now to take undue advantage of your mark or in order to throw your trademark from the market , chosen to send this unsound notice, which is inadmissible in the eye of law .

2. Tell him  that you are using the trade mark from long back and field the 2nd application for brand extension, and you have now no rights to oppose or send illegal notice to us.

Also refer that ‘RIGHTS OF PRIOR USERS”.

The mark must have been used from a date prior to the use of the opposite party.

Take a defence that  “Continuously used’ must be interpreted in a practical and business sense. Please check in Mouson V/s Boehm Chitty (1884) 26 Ch D 398 at 406.

See further Thomas Bear V/s Prayag Narain (1941) 58 RPC 25 at 30 (PC) passing off case. When goods not similar sending notice fall in to the out of preview of law.

 

Dear Ashok also see section 23 (3) Non-completion of registration and refer In Cromwells Madhouse Tm (1998) RPC 511.

With best regards

Basavaraj.R     

 
Reply   
 
Advocate

The answer of Mr. Basavraj R is correct.  I add a few lines. The prior user even if unregistered has right to use the Mark.  So you are requested to file a detailed reply to the notice and to withdraw the notice and if the original first application is pending,(I dont see it is pending, since long 10 Years old), you can send a letter to the Registrar referring all these things and your usage details, Turnover, advertisements etc. Thereby protect, your client''s Interest.

 

Regards,

Rema

 
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