• Trademark registered for specific State

In case if trademark "ABC"is registered on the condition that "Subject to Sale in State of Madhya Pradesh and Chattisgarh" and that trademark is being sold in Rajasthan by the similar name "CDE" which is already selling in Rajasthan and is registered for selling goods in state of Rajasthan, then 
1. what action could be taken to stop that trademark "ABC" so that it can be banned the state of Rajasthan ?
2. In case a case to be filed against "CDE" than in which court it is to be filed i.e. in High Court or District Court?
3. Can a stay be issued against "CDE" ?
Asked 7 months ago in Intellectual Property from Fatehnagar, Rajasthan
The remedy in such scenario is to file a lawsuit for injunction against the individual who has infringed the trademark. Through an injunction order the civil court can restrain him from acting in a manner that would defeat the trademark rights of the holder. The case is to be filed in the court which has jurisdiction over the place where the deceptively similar trademark is being used. 
Ashish Davessar
Advocate, Jaipur
18057 Answers
445 Consultations
5.0 on 5.0
1) trade mark CDE  used by the defendant, is not deceptively similar in all respects to that of   your trademark ABC 

2) both the trade marks are entirely different and distinct and are not similar or identical and hence no injunction would be granted 

3) in AIR 1988 DELHI 282 (P.M.Dissels Pvt. Ltd. Vs. Thukral Mechanical Works), in which, the Delhi High Court held as follows: 

"Trade and Merchandise Marks Act (43 of 1958), Ss.28(3), 31(1)--Registered proprietors of identical trade marks in different goods--Infringement of, by one of them--Grant of interim injunction in favour of other--Application by him for deleting of name of one who infringed trade mark from register during pendency of suit for perpetual injunction--Proprietary rights of both of them were protected till their names were on register--No one is entitled to take action against another--No one can be restrained from using his trade mark--Interim injunction vacated." 
Ajay Sethi
Advocate, Mumbai
23107 Answers
1213 Consultations
5.0 on 5.0
1) "ABC"is registered on the condition that "Subject to Sale in State of Madhya Pradesh and Chattisgarh"

2) CDE is being sold in Rajasthan only 

3) do you have any evidence of CDE being sold in Mp and chattisgarh? 

4) the features in a trade mark are common to a trade, is a matter of evidence which can be gone into only at the trial of the suit
Ajay Sethi
Advocate, Mumbai
23107 Answers
1213 Consultations
5.0 on 5.0
1) CDE has committed violations which are called as "Passing off" and "infringement"

There are two types of remedies are available to the owner of a trademark for unauthorized use of its imitation by a third party.

2) CRIMINAL REMEDY

In case of infringement / passing off trademark, a criminal complaint can also be filed. It may be noted that under the Provisions of the Trade Marks Act, 1999, the offences under the Act are Cognizable, meaning there by that police can register an FIR (First Information Report) and prosecute the offenders directly.

3) Civil remedies in Trademark:

# Injunction/ stay against the use of the trademark
# Damages can be claimed
# Accounts and handing over of profits
# Appointment of local commissioner by the court for custody/ sealing of infringing material / accounts
# Application under order 39 rule 1 & 2 of the CPC for grant of temporary / ad interim exparte
injunction

4) The Courts can grant injunction and direct the  authorities to withhold the infringing material / its shipment or prevent its disposal in any other manner, to protect the interest of the owners of intellectual property rights. 

5) The case should be filed against CDE in the DIstrict court in Rajasthan or at the place of registered office of ABC.

6) The courts shall grant stay against CDE, if we can give good grounds as evidence at the time of admission of our plaint. 
Rajgopalan Sripathi
Advocate, Hyderabad
869 Answers
43 Consultations
5.0 on 5.0
file a injunction suit before the district for selling of CDE, if it is selling similar name of ABC. if name may cause deception in the general public so injunction shall be granted otherwise no need to file such suit because both have different name. 
Shivendra Pratap Singh
Advocate, Lucknow
2729 Answers
41 Consultations
4.9 on 5.0

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