• Trademark

I am running a partnership firm with my brother and father as partners and has purchased a trademark registered under Class 25 a year ago from a private limited company in which all 3 of us are directors along with 3 other directors. The same has been purchased for a consideration by us from the private limited company. We have filed for assignment of trademark and the registrar has passed an orders for assignment of trademark and our firm has become legal owner as the assignment has been approved in this month.

2 of the remaining 3 directors of the private limited company from which I have purchased the trademark and who are our relatives (Uncles/my fathers brother) are using the name in some other concern and hampering my brand image.  

So, I want to know

1. Can they legally use it in some other concern as we have not given the concent. If not then what action are available to us against them.

2. My trademark is registered in class 25. If I file a suit for infringement of trademark then can they get relief in class 35 as we are not registered in class 35 and we have only applied in the same 2 years back.

3. Is class 35 for shops. If so if I file infringement suit against them then they will remove the name from the products but they can use the name as store name as I am not registered in Class 35 and sell products by a different name.

4. If class 35 is for store and I am not registered keeping the above scenario in mind can I also claim relief under section 35.
Asked 8 months ago in Intellectual Property from Kolkata, West Bengal
1) your relatives cannot use your trademark without your consent 

2) issue legal  notice to concern to refrain from using your trademark 

3) Trademark Classes (1 to 34 cover goods, and 35 to 45 services). class 25 deals with Clothing, footwear, headgear.  if you are registering a trademark for clothing, footwear, and headgearthen it would fall under class 25 

4) class 35 deals with Advertising, business management, business administration, office functions . it includes shop window dressing . it weould include retail or wholesale services for pharmaceuticals, veternitary , snitary preparations and medical  supplies 

5) file suit for infringment of trademark . court may not grant them any relief for using trademark in shop name 
Ajay Sethi
Advocate, Mumbai
33850 Answers
1880 Consultations

5.0 on 5.0

1. Trademarks like any asset can be transferred from one owner to another. The transfers could be temporary through licensing or permanent through an assignment. Assignment of a trademarks is a process in which the owner of the trademark transfers the ownership of the mark either with or without the goodwill of the business. In other words, it is transferring of proprietary rights in the property of the proprietor.  Thus once you have obtained an order for assignment of trademark, your company shall be the absolute proprietor of the said trademark, hence the usage of the same trademark by the other partners of that company even after assignment shall be illegal until it is complete assignment and not a partial assignment. 
As can be noted, transfer of proprietary rights in trademark is similar to transfer of any other asset; Trademarks are valuable assets since they quantify a company’s reputation and goodwill. 




2.  Trademark class 25 pertains to clothing, footwear, head gear. 
Class 35 includes services for advertising; business management; business administration; office functions. It includes mainly services rendered by persons or organizations principally with the object of: (1) help in the working or management of a commercial undertaking, or (2) help in the management of the business affairs or commercial functions of an industrial or commercial enterprise, as well as services rendered by advertising establishments primarily undertaking communications to the public, declarations or announcements by all means of diffusion and concerning all kinds of goods or services.
Therefore you may ascertain your position based on the clauses you have referred to herein above. 



3.  Trademark registration is based on a class system. For each class of goods or services that you register, you must pay a separate registration fee. So if you apply for a trademark for posters (Class 16) and shirts (Class 25), you must pay two fees. You must indicate the correct class at the time you are registering a trademark. If you list the incorrect class, you must start the application process over. Your registrations are restricted to those classes that encompass the goods or services you are already offering (as shown by the specimens you submit) or that you plan to offer (if you are registering on an intent-to-use basis).




4.  A trade mark can be the most valuable asset of a company and may at times be worth more than the company’s land and factory.
The primary purpose of a trade mark is to identify the goods with the person who is manufacturing them or dealing in them so that the public becomes aware of the origin of the goods.
A trade mark is a form of property and enjoys protection either under the Trade  Marks Act, 1999 if it is registered or under the common law if it is unregistered. 
An application can be made in a particular class depending upon the goods/services in relation to which the mark is being used or is proposed to be used. Multiple Class applications can also be made for the same mark. But it appears that you have applied for one particular class only.
The competent courts can be moved for grant of relief against infringement and passing off. The competent court is the District Court having territorial jurisdiction where the Plaintiff resides or carries on business or works for gain or where the infringing articles are available.
Criminal Complaints can also be filed against persons who have infringed the mark in addition to a Civil action.
T Kalaiselvan
Advocate, Vellore
23890 Answers
236 Consultations

5.0 on 5.0

If you feel that your rights are infringed due to their usage of the trade mark assigned absolutely to you by an order of the competent authority and are aggrieved by it, you can very well file a suit agaisnt them seeking relief and remedy for this.

By this suit, you dont mention the exclusive rights you have obtained  under class 25.  You can file a suit seeking the relief by directly making allegation of their usage of the trade mark that was assigned to you legally. 

Let them come out with their defence quoting the class 35 etc. You can argue that the trade mark was totally assigned to you by the order hence claiming exemption by quoting the class is not maintainable and they are liable to be punished for infringing your rights.  Lt the court decide after hearing both sides, dont guess or  imagine their acts on this even before initiating any action legal or otherwise on this. 
T Kalaiselvan
Advocate, Vellore
23890 Answers
236 Consultations

5.0 on 5.0

1. Trademark once assigned can not be used by the assignor in any other trade.
2. You're still eligible for restraint order and hence you cans eek injunction for necessary restraint order.
3.You have tofile the suit under the trade name which purchased the trademark. registration or not under class 35 is of no consideration.
4. Same as above.
5. I find n occasion for them to seek relief under class-35.
So not think much and file the suit.
Feel free to contact for further assistance on this issue.
Devajyoti Barman
Advocate, Kolkata
8970 Answers
108 Consultations

5.0 on 5.0

class 25 and 35 are interdependent . 

2) if you file suit in class 25 for infingement of trademark they can use the name under class 35 as your trademark is not regsitered under class 35 
Ajay Sethi
Advocate, Mumbai
33850 Answers
1880 Consultations

5.0 on 5.0

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