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SathyaMRanganathan (n/a)     29 January 2011

Trademark

Dear All,

If an application is filed for registration and the same is rejected by the Examiners, what would be the next step? Also, can the mark be still used in the market without registration and on the basis of objection by examiners.



Learning

 6 Replies

Suchitra. S (Advocate)     29 January 2011

Sir, when one has applied for the TM registration, till it is registered, he can use the mark with a symbol TM written over the mark. After it gets registered, he can use "R" in a circle to show the mark is protected. 

Coming to the rejection of a trademark by the Registration office, you have to see on what grounds the mark is rejected. If can then file objections to that and explain your points of argument in front of Registrar when notified. Usually the mark will be rejected on the point that similar mark may be there already registered. In that case, you need to show how your mark is different from that mark.

SathyaMRanganathan (n/a)     29 January 2011

Hi Suchitra,

 

Ur ryt. My query was based on objection due to similarity in trademarks. In such cases, can the marketing continue to proceed without registration??? If yes, how to avoid confusion with similar brands by 2 properitors, presuming both of them are marketing the brands more than a year and making profits.

Suchitra. S (Advocate)     29 January 2011

Sir, from your reply, I suppose that you are not interested in filing objections for the rejection of mark to be registered. And I suppose you are thinking of using the mark without registration.

Well, registration of trademark is not compulsory. One can use the mark without registration as well. But in case the Company which has registered the similar mark earlier to you and using the mark on its products, thinks to sue to for infringement of their mark then, you will have to prove before court that you are using the mark well before they have registered the mark and you are having profits and also earned goodwill through that mark.  It is up to the courts to decide whether there is infringement or not based on the facts and circumstances of the case. 

In case, if you fail to prove that you are in the market earlier to them with the mark in question, then there is chance that they will prove infringement. Proprietors who have long standing in the market will not be affected by proprietors who have got the mark registered later than them. There is every chance that courts allow both of them to continue with the mark.

Chirag Bhatt (Lawyer Gujarat High Court)     30 January 2011

Its advisable to get the trademark registered though its not mandatory.

Basavaraj (Asst, Manager-Legal)     04 February 2011

Dear Ragnathnan your querey is that can the mark be still used in the market without registration and on the basis of objection by examiners:

No, you cannot use it, beaz you are well aware abour rejection of your trade mark, despite you wise to use it then you are become unauthoized use.

The best option is that find out the reason for rejection, if not restord by Registrar. Better than the late file one more application for same trade mark by claming user from the date of your earlier trade mark.

without knowing the reason for rejetion i m really cannot give more advice, pls let me the reason.

 

Regards

Basavaraj

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

Dear Mr. Ranganathan,


You can still use the trademark, which has been rejected by the Trademark examiner. However, you should be ready to face the consequences like Caution notice / Trademark Infringement letter.


For more details Contact

Nagaraj

Trademark Attorney & IP Lawyer

IP Lex Global Services

Email: nagaraja_bs@iplexglobal.in


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