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Shihab,Corporate Lawyer (LL.B M.B.A Corporate Lawyer and Management Consultant)     05 September 2011

Trademark passing off

 

I need an immediate solution, my cient XXX PVT. LTD. has intended to use XYZ TMT as their product's logo and they have already applied for trademark registration IN 2009 in class 6 the status of which is shown as "objected" in the website.  Meanwhile, an another company "ABC STEELS AND ALLOYS PVT. LTD." has announced their logo "XYZ TMT" and they are going to launch the same on 07/09/2011 and they claming as they have got trademark as they are using "TM" above their logo.  Actually, they are applied for "XYZ TM" IN CLASS 6 IN 2011 and TM status is only "new application."
 
my doubts are,
1.  If I can approach DISTRICT COURT for a stay on usage of XYZ TMT as their logo.
2.  Or what are the solutions available in other hand ?
 
 
thank you for your support and co-operation,


 5 Replies

Krishna (Professional)     06 September 2011

The prior applicant enjoys the protection (whether registered or not). Hence, your client definitely enjoys priority over the later one. However, whether your client himself is entitled or not is doubtful.

Ignoring the status of application being "Objected" you are free to take action against others as long as you can establish that your client is a prior user (irrespective of whether the Trade Mark is registered or not). Registration of trade mark is not mandatory.

1 Like

Rajesh Hazra (Mediator Mediation Counsel)     08 September 2011

Dear Friends,

You can go ahead and file an application for injunction against the TM on the ground of prior use.

1 Like

Chirag Bhatt (Lawyer Gujarat High Court)     11 September 2011

As Opposition has been filed u/s. 21 of Trademark Act 1999 by someone, the status  of your application is objected.

 if you are prior user,You can file opposition against ABC STEELS AND ALLOYS PVT. LTD company once the advertisement of their trademark is published by the registrar .

 if you are prior user,You can file a suit   for injunction u/o. 39 rule 1 and 2 of C.PC. and passing off  againt the said company.

for passing of action kindly refer section 27(2) trademark act 1999.

1 Like

Basavaraj (Asst, Manager-Legal)     16 September 2011

Dear Firend,

I understood your querey, objected means: after filing your application the Registrar shall conduct exmaninaton rpeort, thereafter you should establish your case by way of affidavit.

In case, the Registrar does not satifiy of your affidavit, your application shall be kept for perosnal hearing and it shall be shown as OBJETED,  You should wait for hearing intimation from the Registrar, oherwise you can file TM application for hearing on prioirty basis.

Once the Registrar fix the hearing you should file your user affidavit to publish your mark.

Please note: at this stage no one would file oppostion, once it got adverstiment then only public can able to file oppsotion, even ot oppostion filed by public, your status would be shown as "OPPOSED". Opposed person name will be shown in the application status. Hence, till now your application deos not receive any oppositon.

 

As far as your mark paasing off is concered, your liberity to take passing of action under section 27(2) trademark act 1999, and you can get stay but you cannot get consideration like accounts of damages.

Regards

Basavaraj.R

Heaven 2011 (SERVE FRIENDS)     24 November 2011

I fully agree with the explanation of Mr. Basavraj.


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