Hello
Withdraw the application that is pending with the status as OPPOSED. You may definitely use the logo that has been registered by the authorities.
Regards
2 applications same brand one opposed (previous one) and one registered (latest one)
I had been using a brand since 1992. The first TM application was filed in 1994 and got REGISTERED till 2004. The same application was not renewed on time and instead, the second application for the same brand was filed in 2006, the status of which is OPPOSED. In the meanwhile, the third application for the same brand (with logo) was filed in 2015, the status of which is REGISTERED. Plz confirm, if I can use the same brand, as the latest application has been registered, or do i need to consider the second application as well.
Asked 4 years ago in Intellectual Property
9 Answers
You can use the same brand
Trademark Renewal requests can be filed within six months before the expiry of registration or renewal. Before expiry of the last registration of a trademark, the Registrar will send a notice as a reminder to the registered trademark owner regarding the expiration and conditions as to the payment of the fees
if application at this stage is registered then the owner of trademark can use same .
What is the status of 2nd application ? It was objected than arguments held in support of claim and than approval or disapproval, without withdrawing same, 3rd application was invalid. Might you have not disclosed about pendency of 2nd application.
Well it is registered now after adopting same procedure, calling for objection etc. Use it now.
And from the day application, TM can be used, not mandatory that only from the date of registration TM can be use.
It is not sure if the second application was pending as ' opposed; then how your third application was sanctioned.
If there is lapse on the authority as regards the pending objection then the third registration is not valid and binding and even though you can start using the brand the objector can bring lawsuit to seek injunction on further use of the Brand.
Yes you can use same brand if last application status is registered.
No need to consider second application
Hi
You had submitted a fresh application for registration (NOT RESTORATION AND RENEWAL UNDER 25(4)) and you got the brand and logo registered effective 2015 and as such the earlier applications and opposition thereof to said application in the year 2006 is of no consequence.
As such since no notice of opposition has been filed under Section 21(1), you have been awarded a fresh TM.
If there had been any notice of opposition to your fresh application, in all probability you would not been issued fresh TM in the first place.
So you can go ahead and use the brand with logo that was filed and registered in the year 2015.
Hope this information is useful.
Indian trademark law allows filing of a trademark application in India on an 'intent-to-use' basis. However the registered proprietor of the trademark in India has to commence use of the mark within 5 years and 3 months of the date of registration.
You may ignore the second application and start using the registered trade mark
