cpc

trademark


I am Defending One Suit filed by the company who is having glass lence factory and  their case is that my cliet is using their same manufacuring tardemark, and with followingh prayer

The Defendant their servants agents , relatives be restrained from manufacturing or carrin out any production based on the manufacturing in any way....

i am planning to take defence that y manufactiring process is dirfferent tehn their but hw to mold my defence when my clinet says that most of the companies having lence unints are having the same manufacturing process 

 
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Dear Sagar The foremost thing is that the subject matter of proceeding suit is for trademark infringement and not for the patents infringement. In trademark infrigment suit, the plaintiff can plead for restraining the defendent for the usage of trdemark on the products. The plaintiff does not have any right over the process for producing the product. This right is conferred only through patents. Thus in this case the plaintiff can pray for the restraining your client for using their trademark on the lenses being manufactured by your client, but they can't get stay on the process for preparation of lenses followed by your client, since the plaintiff does not have patent rights for the manufacturing process. Further for the trademark infringement matter, you have to find out wether the trademark is still in use by the plaintiff or has been lapsed.
 
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it is the suit for permanent injunction

 
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Dear Sir

In the suit for trademark infringement, permanent injunction can be passed for restraining the use of trademark or logo of  plaintiff's on the defendant's product. However an order cannot be passed restraining the use of particular process for manufacturing the product.

From the prima facie, it comes to see that your client is using the trademark of plaintiff on the lenses. If it will get proved in the court, then the court can pass the injunction restraining the use of that particular trademark on the defendant's product and the products in stock bearing the same trademark will be seized.

But it does not in any manner restrain your client for using the process for manufacturing the lenses. Your client can still use the same process for preparation of lenses. He can opt for another logo on the product. The best way is to get his own trademark registerd in the trademark office. 

 
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Asst, Manager-Legal

The Trade Mark Law is open for all of us to sue against unlawful user of registered trademark. Mr. sagar parab, failing infringement and passing off case does not mean that your client is imitating and manufacturing others trademark. Most of the companies will initiate infringement and passing off cases for seeking damages and restraining them form using their mark. Your defense will not work, before forming your objection/counter you should work out on the following issues carefully. 1. Have(your client) you received any treating notice from the plaintiff for infringement or passing off of their mark, prior to filing the case. 2. See whether they are registered owner/proprietor of their mark under the Trade MARKS Act. 3. If they are registered means they have rights to seek the said prayer. 4. Let me know rival marks names (your mark and their mark name). So I can frame some points, since I’m looking after all IPR matters in my company. 5. Most important things are that a.have your made official search report. b.was there any identical marks to your mark c.was plaintiff mark quoted in the official search issued by Trade MARK Registry. d.see what documents they have submitted. e.see whether your mark is ‘similar’ to their mark d. see whether your mark is ‘identical’ to their mark’. e. see whether their mark is ‘sounding’ as your mark. f.see whether their mark ‘look’ and colour’ is matching to your mark. 6. Under section 27 of Trade Marks Act,1999, if they are unregistered mark they cannot ask any claims for damages. Court only grant permanent injunction order form considering the following aspects such as: a. prima facie of the case b. Balance of convinces c. Gravity of the case d. Since it is trade mark issue so court will consider similarity between the two rival marks.

 
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Can i get case laws on this point

In the suit for trademark infringement, permanent injunction can be passed for restraining the use of trademark or logo of  plaintiff's on the defendant's product. However an order cannot be passed restraining the use of particular process for manufacturing the product.

 
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