• Legal notice by Mercedez Benz

Hello!
Mercedez Benz sent us legal notice regarding use of thier company`s name "Benz" in our textile firm. But our company`s name has been confirmed by "Registrar of Companies" during establishment. Kindly assist us.
Thanks!!
Asked 2 years ago in Business Law from Amritsar, Punjab
Hello,
Although your company's name has been approved by ROC during establishment  Mercedes Benz can send a notice if they have any objection to your using the name Benz for your company.
You will need to reply to the notice through your lawyer as your issue falls under trademark infringement.
The standard for trademark infringement is “likelihood of consumer confusion,” or for short, “confusing similarity.” This is a very different standard from substantial similarity under copyright law.

Trademark law is not concerned about whether artistic expression has been copied. Rather, trademark law protects how a logo functions as a brand name, that is, to designate the source of goods or services. A new logo is confusingly similar to the original logo if consumers who encounter it might believe that it represents the same company. This is generally analyzed by looking at the similarity of the logos, the similarity of the parties’ respective goods and services, and several other factors, such as the strength of the original logo’s reputation, the relative sophistication of each party’s customers, etc.

In your situation, your “service is completely different (and in a different legal class) than that of the trademarked logo.” This sounds like you might have a strong argument that your new logo is not confusingly similar to the original (depending upon how the other factors in the analysis would come out). Goods and services are confusingly similar if they are related to each other in the marketplace, or if they are the types of goods/services that are generally offered by the same company.
This should be the stand you need to take in replying to the notice from Mercedes Benz.
S J Mathew
Advocate, Mumbai
1950 Answers
65 Consultations
5.0 on 5.0
1. The content of the said legal notice is required to be seen for giving proper advice,

2. Have they mentioned any section based on which they have raised the said objection?
Krishna Kishore Ganguly
Advocate, Kolkata
12055 Answers
228 Consultations
5.0 on 5.0
1.send reply to legal notice by lawyer only.

2.take help of local lawyer also.

3. send details of legal notice to get proper reply.
R.K. Nanda
Advocate, New Delhi
457 Answers
0 Consultations
3.8 on 5.0
You can reply to them through lawyer  and check with RTO of the same.see if they have a patent or trade mark on this name Benz. See to what section and on what ground such objection was made by them
Jeshma Mohandas KP
Advocate, Kozhikode
567 Answers
1 Consultations
3.5 on 5.0
1) when was notice received by you ? 

2) the contents of notice have to be perused to advice . 

3) in you r reply to notice you should mention that  name  benz is used for sale of textile products and not in sale of cars . 

4) you should mention that there is no like likelihood of consumer confusion . there is no similarity in logos , nor any similarity in products sold by the 2 companies
Ajay Sethi
Advocate, Mumbai
23145 Answers
1215 Consultations
5.0 on 5.0
Send a reply of this Legal Notice with the help of the Lawyer.
Nadeem Qureshi
Advocate, New Delhi
3522 Answers
129 Consultations
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1. What are the contents of the lawyer's notice? Have they sought liquidated damages from you, or warned you of prosecution? 

2. Although without perusing the legal notice it is not possible to suggest what your defence could be, nonetheless if your company operates in a field different from the field in which mercedez benz operates, you cannot be hauled up for infringement of trademark.

3. Please remember that mere registration of the company by the registrar does not confer on you any immunity from the trademark law.

4. If there exists no likelihood of consumer confusion then no case is made up against you.

5. Do reply immediately through your lawyer to the lawyer's notice issued to you. Failure to reply will work against you in the event mercedez benz goes to court.
Ashish Davessar
Advocate, Jaipur
18061 Answers
446 Consultations
5.0 on 5.0
Dear Legal Notice by Mercedes Benz,

Mercedes Benz is a well known trade name for which they have obtained trademark registration and copyright for their symbol. Use of any part of their name amounts to infringement. RoC is not the benchmark and their search is entirely limited to Companies only. For example, HUL (Hindustan Unilever Limited) manufactures a cosmetic PONDS but if you go to the RoC, you might get a company registration as the word PONDS will not be available in the records of Companies. However, HUL can initiate a legal suit against you for trademark infringement as PONDS is their brand and trademark protects a brand name so as to create monopoly in the market. The reason for this is very simple.... if you use PONDS, then general public will believe that you are associated with HUL and considering that PONDS has garnered a tremendous goodwill, you will get business only on the immaculate goodwill of the PONDS brand and hence to protect the brand, HUL can initiate a case against you even though you are registered with RoC because Trademark Act reigns supreme.

Further, you can go through the following case for your understanding (Please read the entire case)

However, if you can prove that you are using Benz prior to that of Mercedes Benz, then as per Section 34 of the Trademarks Act, you can fight the Advocate Notice or case thereof otherwise it is advisable to change the name.

Further, be advised that even if Mercedes Benz doesn't have a trademark or a copyright, they are entitled to protection under Section 27(2) of the Trademarks Act, 1999 which says that even if a trademark is not registered, but protection can be granted under the common law if the person filing the suit (in this case Mercedes Benz) can prove that he has garnered immaculate goodwill along with prior usage. If you cannot prove that you existing prior to Mercedes Benz, its always advisable to change the name Benz.

Again copyright subsists from the day one starts using the artistic work. Hence, in your case you stand to lose. Please be advised that unless yo can prove use prior to that of Mercedes Benz, RoC registration wont help. 

I hope the above explanations clear your doubts. 

If you have further doubts, you can call on 9903207337 for further consultations.
Sidharth Das
Advocate, Kolkata
21 Answers
1 Consultations
5.0 on 5.0
The name Benz first appeared in 1926 under Daimler-Benz. It is famous German automobile manufacturer a multi national company. Mercedez Benz is a registered trade mark. Trade mark is deemed to be a property of  the company, every trade mark is registered under the Trade Marks Act, 1999. 

As per provisions contained in Section 20 of the Companies Act, 1956, no company is
to be registered with undesirable name. A name is considered to be undesirable if it is identical with or too nearly resembling with a registered trade-mark.

Even after incorporation of the company, the Central Government has the power to
direct the company to change the name under section 22 of the Companies Act, 1956, if it
comes to his notice or is brought to his notice through an application that the name too
nearly resembles that of another existing company or a registered trademark.
Shivendra Pratap Singh
Advocate, Lucknow
2731 Answers
41 Consultations
4.9 on 5.0

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