Trade mark-objection

Dear Querist,

Having perused facts, I am of the view that letter from TM Registry would entitle you use your logo as encircled TM. Your application may be provisionally accepted by the TMR and it shall be advertised in official gazette for public knowledge and objection, if any. If the Respondent Co. has already registered it with logo or whatever, the TMR would not have accepted your application on the ground of deceptive simillarity, not novel and undistinctiveness, etc.

Having presumed that the you have good case on merit, you may still use our Logo with the Tag Line with encircled TM and fully use it commercially, till the Respondent Co. comes up with objection.

Trust this would be fine.

Rabin Majumder

Advocate & Attorney

For Nu.Delhi.Law.Fora

New Delhi

I agree with Rabini line of advise only for some points. Praysahnti there is no violation or objection in using your company logo and tag line till objection received by other person or company. I think you could have cross checked your logo and tag line availability before applying for registration in the form of official search report on the records of TMR. In that case you could have been got clear path. It is my considered view that using or making advertisement your company logo or tag line in public does not bar under Trade Marks Act, 1999,.

The opposite party should prove that your company logo and tag line is

Similarity

Colour

Image of tag line

Confusion

Sound production

Is one of the same to their company logo and tag line.

As you said since you are making huge investment on the same, in case the opposite party has registration of the same they may sue infringement case against your company for damages of accounts in business and commercial line.

It is understood that after filing the application for registration of trademark, the person shall have use as TM only.

Better than the late consult the trademark attorney in this regard he will give inputs to gohead and to avoid unwanted litigation.

However I deny wordings of Rabin that “If the Respondent Co. has already registered it with logo or whatever, the TMR would not have accepted your application on the ground of deceptive simillarity, not novel and undistinctiveness, etc.”   Dear sir TMR would accept the application even if it is close similar mark and there is no procedure to reject the application at filing stage. TMR would send Examination report to application to sought clarification from the applicant with quoting similar mark and fix for primary hearing the same, then only come to know to TMR of deceptive similarity marks. Rejecting at this stage are very rare cases, question of deceptive similar would be decided after heard the opposite party if opposed.

Dear praysahnhti go-head and do your project till object by other person.

Regards

Basavaraj.R      

Thank you very much both of you. Your answers are definitely help me out.

Regards

Pashyanti

Dear Pashyanti,

Suggestion of both learned friends are commendable. However as far as my views are concerned I would like to add on the above views.

1. TMR might have considered your application at initial stage for registration of the trademark. However till date it cannot be assured by anyone that your TM will get registration.

2. TMR has issued a letter permitting you to use the word TM within an enclosed circle. This is issued by the TMR on acceptance of application just to show that your mark is under process of registration.

3. There is no harm in using the word tm within a circle as of now. You can freely use it.

4. However once you use it and make publication it will become known to the entire world whoever will come across that advertisement. Hence chances of objection will increase manifold.

5. It is suggested to wait till you get the final registration and the TMR issues a letter permitting you to use the word R within an enclosed circle which will show the final registration of the mark.

6. If you are willing for branding your mark, you can definitely go for it. In case of opposition (which is very certain) you can highlight the amount of money involved in that brand apart from its being distinctive and non deceptive.

Good Luck.

In trademark case, the first adopter, user shall have better rights. So I will suggest you to find out whether that builder company is using the logo with tag line prior to your company or not?

Further, registration procedure completes when you receive registration certificate. After mark is applied, its is examined by the Trademark Registry and a report containing the earlier similar marks on trademark register is issued by the Trademark Registry and the Applicant is required to give reasons why its mark should be registered and that it fulfills requirements of law by filing on affidavit evidence of use and reputation. Considering the said documents and hearing the applicant, the registry accepts mark for publication in the Official Gazate and if no objection is received within four months, the Registry issues registration Certificate.

After application u can use TM on your mark and only after registraiton you can use R in circle.

Hi pashyanti

Good Morning I do't think that your case is very serious matter.

According to me nothing would happen, as I said gohead with your plans nothing woulh happen.

The onus lines on opposite party to show the deceptive similar.

Even if they perior user they should show the prima facie similarity.

Regards

Basavaraj.R

Dear Advocate,

As per the queriest mail the matter only relates to the Punch Line and not the Logo of the Company.

I think your advice on the said matter will prevail as the query is for the Punch Line.

after getting the TM application No. from TMR, which means the application is under process for registration....so you can use the TM in circle,

It is settled law that once TM-1 application filed for registertion the Registrar would allote the number to the application for "FUTURE CORRESPONDEDENCE" only and shall not be mistaken as if the application is accepted or registered.

Regards

Basavaraj.R

Dear Sir, The TMR Once number has given for the application it is presumption that the application is under process for registration...........

Dear Mr.Pashayanti,

Please find whether the other Company is using this particular tag line much before you have started to use, if that be so, they become the 'prior user' and the it follows that the 'prior user gets the priority in registration'.Also pl check whether they have already applied for trade mark registration with that tag line. If they have applied earlier,you can find their user date claim. If they are using that tag line for number of ytears before you have started to use, it is better you avoid using it and go for a new tag line. In that case you can even 'abandon'the earlier application and file a fresh application with your new tag line. It so happens sometimes that this Company might not have applied for registration and you may not be knowing their user date. In that case the TM Registry would register your mark. But the question is that if they come to know what they would do < Even if they do not have trade mark registration and if they fall under the 'prior user' classification, de3finitely they can go for action against you for using their tag line-under Common Law..They can go for 'passing off' action.

To avoid complications in future, it is better find whether this Company is the prior user and if that be so, it is better give using that tag line and go for another one.

Dear Sir

I have applied for a trademark and got a provisional certificate from TMR. i have some query in my mind that will this brand name will be mine. since in the initial search it is showing that one person was using this but at the time of my application it was showing that this has been abanded.

also advise if some body is using the same name and he has not been registered it, so can he object that name and if yes, who will will because he has not applied or registered it.

also advise if some brand is registered in usa, can we register the same name here in india if that is available 

kindly advise.

thanks

sandeep

I have seen the various good advises given by other members which i hope would be useful.I would just add a few things.In a composite trade mark comprising of a logo and tag line the most important part is the logoThe logo should be unique and should not resemble any other logo.Further registration is not compulsoryHence in the market there are registered and unregistered trademarks. The trademarks registry searches through their records which contains registered marks and marks pending for registeration.Before you apply you have to go to themarket and ascertain whether any mark is being used to avoid later litigation.Now coming to the proceedings before the trademarks Registry.once an application is filed it is numbered and the applicant is informed that he can use the mark with TM to show that it is a pending application.Then it passes through the stage of examination and if necessary issue of examination report, hearing of the applicant and iif satisfied the advertisement of the trademark for public to oppose and depending on the outcome of opposition .registering the mark.Once the trademark is registered you can use the letterR within circle to indicate that the mark is registeredIf 

The mere fact that any other person is using a tagline similar to yours is not a big question as long as your trademark is distinct and unique.you can even change the tagline as a matter of safety to avoid unnecessary litigatiom

T.R.Subramanian

ex controller general of patents ,designs and trademarks.