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I am owner of "EXAMPLE" word. This Trademark word is registered on November 2021. This trademark is registered in only India.

Now one Android app in Google Play Store is using this trademark word in their App's Logo, Title and description. I filed a complaint to Google team through legal firm. But Google rejected complaint by saying

We have reviewed your submission, but are unable to determine the merits of your claim. As a result, we are unable to suspend the app at issue.

My lawyer said Given app is live on play store since July 2020, and I registered trademark in 2021, so this app can use this trademark.

I don't know about this. Is it true that any app using my trademark name before I registered it can use it?

Is there anything I can do to remove that app from play store or make developer of that app to remove trademark word from their app?

This EXAMPLE word is not registered in any country, I am the first one who registered this keyword in India.

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  • 1
    What product categories does your trademark cover?
    – George White
    Commented Jun 4, 2022 at 16:34
  • 1
    Have there been any significant changes since your lawyer's advice that makes you think they are now wrong?
    – user35069
    Commented Jun 4, 2022 at 17:41
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    You can't just go trademark a word, like "Engineering," and expect everyone else to stop using it. The product and its usage matters. The specifics matter, and you need a lawyer to navigate your specific case.
    – Tiger Guy
    Commented Jun 4, 2022 at 19:43
  • Trademark is registered in Class 9, that is mobile application for editing videos. My app is video editor and other app that uses my trademark is similar video editing app.
    – Divyesh Patel
    Commented Jun 5, 2022 at 3:43
  • @Rick I did not understand what you asked. Can you explain it more?
    – Divyesh Patel
    Commented Jun 5, 2022 at 3:58

1 Answer 1

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There are several limitations on trademark protection that the poster of this question seems to misunderstand.

First of all, trademark protection is national in scope. A trademark registered in India will, within the limits of Indian trademark law, give protection in India. But it will not give protestation in France, Germany, the UK, the US, or any other country.

Secondly, a trademark normally gives protection only against uses in the same category, or "class" of goods or services for which it has been registered. A trademark for a different type of product will have little or no effect. For example, suppose "Monduvi" is a trademark for a line of wines. That will not prevent someone using and registering it as a name for a type of automobile, or for a word processor.

If the class of use is the same, the owner of an India trademark on an app could perhaps sue the maker of a different app that uses the same or a similar name, and obtain a court order forcing the other maker to stop using or advertising that name in India. But such a judgement would not have any force outside India.

In some countries a person who used a name before someone else protected that name as a trademark will retain some rights to it. That is true in the US. I am not sure about India.

I am also not sure to what extent the Google Play Store would be subject to the jurisdiction of India, nor how the store's policies will deal with the earlier registration issue in the absence of an Indian court order binding on it.

This is exactly the sort of case where a lawyer is very helpful, and should be listened to. If one does not truest a given lawyer's work, for some reason, one can obtain a second onion.

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9
  • I only want to remove that app from India.
    – Divyesh Patel
    Commented Jun 5, 2022 at 3:46
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    So you registered a trademark, fully knowing that the name was already in use, and with evidence that you knew it was in use? That sounds very dodgy. I don’t know exactly what you have to tell the government when you register a trademark, but I’d check carefully that you haven’t committed any fraud.
    – gnasher729
    Commented Jun 5, 2022 at 11:45
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    I did not commit any fraud. That name was not registered in India, so I registered in India. They were using that keyword from 2020, but did not register in India to use here. I simply trademarked it.
    – Divyesh Patel
    Commented Jun 6, 2022 at 4:06
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    @DavidSiegel As described, the word was in use in India by another company, and OP knew it was in use. While not actually using the word himself, but the similar "Example Pro".
    – gnasher729
    Commented Jul 7, 2022 at 10:59
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    @gnasher729 In some countries, prior use without registration of even an identical mark confers no trademark protection. In others, including the US it does. I am not sure abut Indian trademark law. This may be even more true of a mark that is similar, but not identical, to the later registered mark.
    – David Siegel
    Commented Jul 7, 2022 at 12:26

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