- This topic has 31 replies, 16 voices, and was last updated 1 year, 5 months ago by
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UI have a product name “Adu Phalad” registered in 2009 under class 5. I got a notice today from a brand which is called “Dupha” they claim that Adu phalad contains A”du pha”lad , and hence sent me a warning notice. On our product we use the name as two words “Adu Phalad” however the trademark is one word Aduphalad, it does contain dupha in it but we make completely different product and been doing it from 15 years. Should I be worried or is this baseless as the name is contained in middle and has no association with the said company. Please help thanks!
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U> I am no lawyer but i think it’s baseless.
Think of it this way, if you were in OPs position, will this comment help?
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MCan’t you rectify your name? And make it two words separating du pha? It will atleast ensure authenticity in question as per IP Law.
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UOn our product we use two words only “ADU PHALAD”. However the trademark is one word “ADUPHALAD”
Also we trademarked it in 2009.
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MYes I am talking about the trademark only, if it can be separated then the name on your product won’t remain in question. Their warning is legally binding for trademark only. Make it two words. it is possible. I used to work in a IP Law firm but now a criminal lawyer, pretty much out of practice for your problem. Otherwise I would be happy to help you in person.
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UI can think of hundreds of brand names which contains some other brand name in them for example.
“whatsapp” it contains “sap” does that make it infringement because they are doing different things
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UPracticed IP law for a while, your next step should ideally be to reply to the legal notice and do that under guidance of a lawyer or ask the lawyer to do it for you refuting the claims.
Make sure to send the reply your lawyer will know on what basis you should be refuting. Just because the claim could be baseless does not mean you chill.
All the best
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DHello. A TM is looked at in entirety, not seperately. Secondly, what matters is that what level of deception can another TM create so as to cause confusion to a man of ordinary prudence amongst the two products.
Having said that, I am still unclear as to your mark and other party’s. If you could please elaborate Id be able to advise you better.
Don’t hesitate to send a personal message. I am an IPR advocate and I’ll try to help you as best as i can -
UTake a help from a good IP lawyer, use evidence in your favour that you have your product commercialized, you have customers, you have spent on marketing etc etc and for how long you have been using maybe the registrar can rule it in your favour under Article 12 of TM Act
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UThey have sent a formal warning and not done any case until now. Should we still send them a reply ?
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PNot a lawyer,
1. If both parties use identical trademark for different purposes (different goods and services) then court may allow such use by both right? If both have been using it for longer period (maybe 5 years or something)2. If the latest registered party can prove that earlier registered party KNEW about the use of trademark when latest registered party acquired it or within 3-5 years of registration and didn’t filed suit within 3-5 years, then earlier registered party can’t file suit on later.
I would advice consult a lawyer though. I have read this from the act some months ago but can’t definitely say if it can help with your case Or not.
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DNAL. Trademarks are registered for different classes. Also, when we file for trademark, it is published in the journal for certain days during which anyone can contest that trademark. Since you got your trademark, the other company didn’t contest your claim so they cannot do so now. But did you renew your trademark in 2019 or not? If it’s renewed and valid, you can reply to that notice with the help of trademark attorney.
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UIf it is a different class, you still have a chance. They are going to try to prove stating that both the trademarks are deceptively similar, therefore, you are profiting from their name.
Let the notice highlight products from different classes and how your customers are not purchasing your products mistaking it to be Dupha’s.
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