• Use of different, but similar names

I've my own business, with the name of SARGUN SAREES. I have received a notice from some other party named "SHAGUN SAREES" that we are using there name and demanding Rs. 10,00,000/- against the same and also ask to change the name.
Asked 2 years ago in Business Law from Ghaziabad, Uttar Pradesh
first of all, reply the notice with the help of lawyer and try to settle the matter amicably with them if possible, if not then try to collect the evidence of name and Style of the "Shagun Sarees"

if their name is registered in trade mark and copy rights then you may be prosecuted otherwise not.

contact a lawyer personally or over the phone for best advise.
Nadeem Qureshi
Advocate, New Delhi
3537 Answers
130 Consultations
4.9 on 5.0
1) you have to contact a local lawyer and reply to legal notice . 

2) what are the contents of the notice ? 

3) is the trademark SHAGUN  registered? 

4) have you registered trademark SARGUN ? 

5) you should register your trademark SARGUN . Registration of a trademark gives the registered owner of the mark exclusive right to use the mark in relation to goods or services for which the trademark has been granted

 
6) If you have used the    mark SARGUN in connection with sale of sarees  in the course of trade, which is identical or deceptively similar to a registered trademark for similar goods/services, the registered owner will be able to sue for infringement of a trademark.

7) you can refuse to pay Rs 10 lakhs demanded if your trademark is registered . you have to deny that words SARGUN AND SHAGUN are identically similar . if SHAGUN  has not been registered they cannot sue you for infringement of trademark
Ajay Sethi
Advocate, Mumbai
23369 Answers
1224 Consultations
5.0 on 5.0
1. Has it been mentioned in the notice that 'SHAGUN SAREES' is their registered trade mark? 

2. Or has it been mentioned that they sale their sarees as  'SHAGUN SAREES'?

3. If the said name is not claimed to be registered, then  write back to them asking for the registration details,

4. If the said name is registered, reply to the said notice that you are not using their name or anything similar to their name as 'SHARGUN SAREES' is phonetically different from 'SHAGUN SAREES' for which you are not liable to pay their demanded amount,

5. After replying their notice, it would be prudent on your part to change the name of your sarees to avoid further problem.
Krishna Kishore Ganguly
Advocate, Kolkata
12143 Answers
233 Consultations
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It is ofcourse illegal to use other's registered trade mark for selling similar product.
Krishna Kishore Ganguly
Advocate, Kolkata
12143 Answers
233 Consultations
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1. Since the legal notice has been issued to you it is incumbent that you reply to it. 

2. Infringement is done when you actually use other's trademark or quite similar trademark and run your business accordingly. In case of an action for infringement, the defendant's use of the offending mark may be in respect of the goods for which the mark is registered or similar goods.

3. Your query is silent on whether the trademark is is registered or not. If it is not registered then it should be registered forthwith. SHAGUN Sarees cannot stand on its own legs in the court if it has not been registered.

4. The claim of SHAGUN SAREES will survive only in the event that it can show that your name i.e SARGUN SAREES is deceptively similar to the name of SHAGUN SAREES. If you are held liable for infringement you may be ordered to pay damages to SHAGUN SAREES.

5. Refuse to pay the Rs.10 lakhs demanded from you. Reply to the legal notice. If you are sued then contest the case on merits.
Ashish Davessar
Advocate, Jaipur
18183 Answers
449 Consultations
5.0 on 5.0
Dear Use of different, but similar names,

I beg to differ with all my colleagues and please find the answer below

1. Shagun Sarees and Sargun Sarees are deceptively similar as far as trademark is concerned under Section 11 of the Trademarks Act, 1999. Hence, Shagun sarees are valid in sending an Advocate Notice (Cease & Desist notice)
2. Shagun sarees can file for injunction against Sargun sarees even if they have not registered their trademark but are using the trade name Shagun prior to your adoption of the trade name Shagun under Section 27(2) of the Trademarks Act, 1999 i.e., under common law remedy.
3. However, if you can prove that the adoption and use of trade name "SARGUN" is prior to the use of the trade name "SHAGUN", then you are protected under Section 34 of the Trademarks Act, 1999

Considering the cease and desist notice received by you, please go through the same and if you find that you are the prior user, then you can serve a reply to Shagun otherwise it is advisable to change your trade name as i will cost you less to do so than getting into legal hassles.

Secondly, you can refer to the case of Mahendra & Mahendra vs. Mahindra & Mahindra and also the case of T Venugopal Rao Vs. Ushodaya enterprises wherein the Apex Court has ruled in favor of the mak hich first came to use.

Here, you are dealing in the same product, same space (area) with a deceptively similar name which attracts the case of a Triple Identity and hence it is advisable to change your trade name if you cannot prove you are the prior user. for prior use, you should have bills, invoices, P/L A/c statements, Sales Tax/VAT Receipts & Registration prior to that of Shagun.

I hope the above clarifies

In case of further doubts, please do contact
Sidharth Das
Advocate, Kolkata
21 Answers
1 Consultations
5.0 on 5.0
Dear Use of different, but similar names,

You are not liable to pay the fine that has been mentioned in the Advocate Notice. Only settle the matter amicaby if you are not the prior user and if you are then take them head on in a court of law and demand compensation but ion 99% of the cases, compensation is not granted.
Sidharth Das
Advocate, Kolkata
21 Answers
1 Consultations
5.0 on 5.0

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