COUNTERSTATEMENT TO OPPOSITION UNDER TRADEMARKS ACT- MODEL OF FORM TMO

04 Apr COUNTERSTATEMENT TO OPPOSITION UNDER TRADEMARKS ACT- MODEL OF FORM TMO

FORM TM-O

THE TRADE MARKS ACT, 1999

Notice of Opposition / Application for Rectification of the Register by canceling or varying

Registration of a trade mark / Counter statement / Request to refuse or invalidate a trade

Mark under Section 25(a), (b) of Geographical Indication of Goods (Regulation and

Protection)

Under the Trade Marks Act

Digitally Signed By

LOYAL CONSULTANCY

 TRADE MARKS ACT, 1999

BEFORE THE REGISTRAR OF TRADE MARKS,
TRADE MARKS REGISTRY, DELHI

COUNTER STATEMENT/

REPLY TO NOTICE OF OPPOSITION TO
APPLICATION FOR REGISTRATION OF A TRADE MARK

IN THE MATTER OF Opposition No. 3300435  to Application No. 5705339in Class 03 for the registration of Trade mark “RASCO Furnello” in the name of LOYAL CONSULTANCY.

AND

AND IN THE MATTER OF OPPOSITION THERETO filed by MARCONI DEL ZINO FURNELLO DI SANTLACUZ, having its office at Via Boldrini 10, MONTALCINO (SI) – 53024, ITALY.

WE, LOYAL CONSULTANCY, (herein after referred to as “the applicant”) a sole proprietor having its address at Plot No. 727,Block Z. Surya  Nagar, Ramnpuri,New Delhi-210058 , the applicants for registration of the Trade Mark “RASCO Furnello” hereby give notice of Counter Statement to the Opposition that the following are the grounds on which the Applicant relies for in support of the above application.

1. The applicant submits that, his concern is engaged in the business of manufacturing and trading of perfume, toilet water, gels, salts for the bath and the shower, toilet soaps, body deodorants, cosmetics namely creams, milks, lotions, gels and powders for the face, the body and the hands, sun care preparations, make-up preparations, shampoos, gels, sprays, mousses and balms for the hair styling and hair care, hair lacquers, hair styling and hair care, hair lacquers, hair colouring and hair deodorant preparations, skin care range, essential oils for personal use, dentifrices in class 03 fourth schedule of the trade marks rules, 2002 (“said rules”).
2. The applicant submits that on 16/10/2020 the applicant filed for registration of Trade mark “RASCO Furnello” (hereinafter referred to as the said Mark) vide application number 5705339 in respect of said good and also attached therewith certain documents as required and in the form and manner as provided under the Trade Marks Act, 1999 (“the said Act”). The said Application was duly accepted by the Registrar of Trade Marks and advertised in Trade Marks Journal 2973 Regular dated 09/11/202X on page number 307. The said Application is subject matter of the present opposition.
3. The applicant submits it that to distinguish their goods from the others’ goods, his concern has adopted the said Trademark “RASCO Furnello”. The applicant further submits that a through market research and market survey was conducted to ascertain whether any similar mark is which is existing and active which is to the applicant’s applied mark. When none found actually in business, then a through public search was conducted. Upon complete satisfaction that “RASCO Furnello” is not likely to attract any provision of S. 11 of trade Marks Act, 1999, the mark was applied vide form TMA. The mark was examined and duly accepted before publication in the Trademark Journal was a significant factor to prove the distinctiveness.
4. The applicant submits that he is the owner and proprietor of the said mark who have honestly adopted the said trade mark for the said goods i. e. perfume, toilet water, gels, salts for the bath and the shower, toilet soaps, body deodorants, cosmetics namely creams, milks, lotions, gels and powders for the face, the body and the hands, sun care preparations, make-up preparations, shampoos, gels, sprays, mousses and balms for the hair styling and hair care, hair lacquers, hair styling and hair care, hair lacquers, hair colouring and hair deodorant preparations, skin care range, essential oils for personal use, dentifrices in class 03. There is no intention to ride the coat-tails of the opponent’s mark. The learned Registrar of Trade Marks was satisfied with the genuine business interest of the applicant and therefore accepted the mark for publication in the aforesaid Trade Marks Journal. Therefore the opposition is frivolous and should be rejected.
5. At the outset, the Applicant states that the Opposition sought to be filed by the Opponent is frivolous, vexatious, not tenable and the registration of Trademark “RASCO Furnello” has been sought to be opposed just for the sake of opposing the same. The goods of the opponents are “wines included in class 33”. The goods are completely different similarly their use is also completely different. The Applicant’s Application for the registration of the said Trademark is bound to be accepted and registered as such. The applicant rely on the judgment of Bombay High Court, in Macleods Pharmaceuticals Ltd vs Swisskem Healthcare Anr on 2 July, 2019 held that PANDERM is not similar to POLYDERM which according to the Plaintiff is deceptively similar to the Plaintiff’s registered trademarks. The learned Judge S.J. Kathawalla said “I have observed hereinbefore that the rival word marks are not similar. There is no visual or phonetic similarity between the word marks. Hence, the question of considering the similarities between the rival cartons, as suggested by the Plaintiff, does not arise. In any event, even if I was to consider both the cartons, I do not feel that both are so similar so as to outweigh the impression of dissimilarity created by the rival word marks and thereby create any confusion or deception.”
6. The opponent’s Trade Mark “BRUNELLO DI MONTALCINO” bearing application number 1391691 in class 33 for goods “WINES”. Where applicant’s goods are made for CLASS 03 i.e. perfume, toilet water, gels, salts for the bath and the shower, toilet soaps, body deodorants, cosmetics namely creams, milks, lotions, gels and powders for the face, the body and the hands, sun care preparations, make-up preparations, shampoos, gels, sprays, mousses and balms for the hair styling and hair care, hair lacquers, hair styling and hair care, hair lacquers, hair colouring and hair deodorant preparations, skin care range, essential oils for personal use, dentifrices” which is totally dissimilar to the opponent’s Trade mark goods. The use of the goods is different. The users of the goods are different. The purpose of the goods is different. The opponent’s trade mark is “FRUNELLO DI SANTCLUZ AND “RASCO DI SANTCLUZ” but applicants mark is “RASCO FRUNNELO” a unique mark and adopted with no intention of copying others mark. The opponent’s trade mark ““FRUNELLO DI SANTCLUZ AND “RASCO DI SANTCLUZ” is totally dissimilar from applicants mark. Both the trademarks are dissimilar visually, aurally and structurally. In deciding the question of similarity between the two marks, the approach must be from the point of view of a man of average intelligence and imperfect recollection. The marks must be compared as a whole. The true test is whether the totality of the applicant’s trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the opponent’s trade mark. While ascertaining the question of deceptive similarity, the opponent is not authorized to conduct a microscopic examination and both the visual and the phonetic tests must be applied. The microscopic method of comparison has repeatedly been condemned in various decisions In the present case, all things considered, (visually and phonetically) the applicant cannot see any real tangible danger of “confusion in the mind of the public which will lead to confusion in the goods”. (Pianotist case (1906) 23 RPC 774.”
7. The applicant’s Trade Marks “RASCO FRUNNELO” is the word mark with vast difference with the opposed mark. The likelihood of the confusion must be assessed in entirety, not their shared element. The mere occurrence of letters “RASCO & FRUNNELO” in the cited trademarks will not create any confusion in the mind of average customers who are circumspect by general nature as decided by numerous case laws in the subject of Trade Marks. The applicant strongly believes that there are no questions for any person or public being misled and being led to believe that the applicant’s Trade Marks is similar to the opponents. S.J. Kathawalla said in the above mentioned case: “When this Suit came up before me for hearing for the first time, I had expressed my first impression that – there is no similarity between the rival trademarks PANDERM and POLYDERM.” Similarly the first impression created in the instant case is that both the marks are different from each other.
8. The Applicant vehemently denies each and every statement, contention, averment and allegations made by the Opponent in Paragraph No. 7 of the Form TM- O Notice of Opposition (hereinafter called the said notice) The Opponents say and submit that the Applicant’s goods under the impugned/contested deceptive trademark being cosmetics for personal use, could share the same trade channels (duty free shops, departmental stores and ecommerce) with our goods, and cater to the same consumers, resulting in unavoidable confusion and/or deception of the affected public. This statement is false as the opponent’s class of goods is 33 i.e. wines and the applicant’s class is 03 which is totally different. Our trade channel is different. The use of the goods is different. More importantly learned Registrar of Trade Marks has accepted the application and advertised in the Trade Marks Journal without raising the objections under S. 11 (1) of the Trade Marks Act, 1999. Further Opponent’s claims that, the Applicant cannot deny knowledge of our well-known marks which are being used and promoted globally for decades, with prominent and leading presence on the Internet, and in e-commerce, in general. Hence, it is evident that Applicant has deliberately misappropriated our marks for unlawful gains. We deny this statement as the applicant genuinely search the mark in public search website of Trade Mark Registry under class 03 and after that when there is no similar mark was found then only the applicant adopted and applied the trademark. Therefore the applicant denies the allegation made by the opponent in Paragraph No. 7 of the said notice. Ultimately it will be held that there is no deceptive similarity between the rival trademarks because there is no question of confusion or deception. No amount of evidence adduced to show prior user or reputation of the opponent’s mark can be of assistance to the opponent in such a situation since the whole basis of opposition is dependent on conclusion that there is deceptive similarity between the rival trademarks. In this case as the opponents’ mark is not identical or deceptively similar to the applicant’s mark there is no basis on which the opposition stands.
9. The applicant denies the allegations of the Opponent stated in Paragraph No. 8 that the applicant’s trade mark is the impugned mark could not have acquired any factual distinctiveness as the relevant date; Applicant denies this statement as the Applicant’s mark is a distinctive mark capable of distinguishing his goods therefore capable of being defined as a trade mark under the provisions of Section 2(i)(m) and 2(i)(zb) of the Trade Marks Act, 1999. The fact that the learned Registrar has accepted the Trade mark unconditionally and published in Trade Marks Journal 1973 Regular dated 09/11/2020 in the name of the Applicant is self evident fact that the applicant’s trade mark is prima facie distinctive. Therefore, the applicant states that the accusations of the opponents are frivolous not based on facts therefore liable to be rejected under S. 11(2) of the Trade Marks Act, 1999.
10. The applicant denies the allegations of the opponent made in Paragraph No.9 is that The impugned/contested mark is prohibited from registration under Section 11 as it is deceptively similar to our earlier, registered and well-known certification trademark FRUNELLO DI SANTCLUZ, which has also been accepted and advertised as a Geographical Indication by the Geographical Indications Registry, and our denomination of origin FRUNELLO DI SANTCLUZ, and the goods of the Applicant are closely related in the course of commerce. The Applicant denies the fact that registration under Geographical Indications Act is affecting the subject trademark because both the marks are different as a whole. The perception of the average customer for the goods in question does not depend on the dissection of the mark and on the examination of each feature of the mark. It turns on the feature which contributes most to the overall impression created by the whole mark. The Applicant has no intention to pass off his goods as the goods of the Opponent. The Applicant’s goods have no association with the goods of the Opponents. The trade channels through which the goods are made available are different. The fact that the learned Registrar has accepted the Trade mark unconditionally and published in Trade Marks Journal proves the fact that Applicant’s Mark is entitled to clear the bar of relative grounds of refusal in Section 9(1)(a) of the Act. Both the marks are different from each other form the following points as held in land court decisions:

a.The degree of resemblance between the marks, they are not phonetically similar and hence no similarity in idea.

1. The nature of the goods in respect of which they are used as trademarks are different.
2. There is no similarity in the nature, character and performance of the goods of the rival traders.
3. The class of purchasers is different who are likely to buy the goods bearing the marks. Their education and intelligence, and a degree of care they are likely to exercise in purchasing and / or using the goods are different from each other.
4. The mode of purchasing the goods or placing orders for the goods are different and
5. Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks are different.

From the above mentioned points it is clear that the opponent’s mark and the applicant’s mark are different from each other. Therefore the opposition is vexatious and frivolous.

11. The applicant denies the Opponent’s allegations made in Paragraph No. 10 that Due to deceptive similarity of the advertised mark with our earlier and well known marks, use of the impugned/contested trademark by the Applicant without due cause, would also take unfair advantage of and be detrimental and harmful to the distinctive character and repute of our marks. Hence, the mark under the impugned application is contrary to the provisions of Section 11(2) of the Trade Marks Act, 1999; this statement is false in view of high degree of dissimilarity in both the trade marks. Applicant denies this statement as his goods are perfume, toilet water, gels, salts for the bath and the shower, toilet soaps, body deodorants, cosmetics namely creams, milks, lotions, gels and powders for the face, the body and the hands, sun care preparations, make-up preparations, shampoos, gels, sprays, mousses and balms for the hair styling and hair care, hair lacquers, hair styling and hair care, hair lacquers, hair colouring and hair deodorant preparations, skin care range, essential oils for personal use, dentifrices in class 03 and opponent’s goods are WINES included in class 33. The true test to ascertain the capability of distinguishing the goods is whether in totality the two marks are such that it is likely to cause deception or confusion or mistake in the minds of the customers in the market place. The Registrar of Trademarks has already ascertained the fact and the allegation of the opponent is false because the Registrar has accepted and advertised the mark. The Pianotist’s case which involved comparison of two word marks has laid down the test of deceptive similarity generally applicable to all the cases. The relevant quotation is reproduced hereunder:

“You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trademarks is used in a normal way as a trade mark for the goods of the respective owners of the marks.”

While judging the applied mark and the opposed mark both by their look and sound, while considering the nature and kind of customer, it is obvious that there is no deceptive similarity between the marks therefore the therefore the opposition is vexatious and frivolous.

12. The applicant vehemently denies the allegations made by the applicant in Paragraph No.11 is that Owing to the impugned/contested trademark being deceptively similar to our earlier and well-known marks and the associated goods being similar and/or linked in course of commerce to our goods, the Applicant’s use of the advertised trademark would lead consumers to believe that the Applicant has a trade connection with us, which is a misrepresentation of our well-known and protected marks, having the consequence of “passing off” of the goods/business of the Applicant as and for those of ours. Hence, registration of the impugned/contested mark is liable to be prohibited under Section 11(3) and Section 29 of the Trade Marks Act, 1999. The above statement of the opponent has no relevance due to the fact that Applicants’ mark is distinctive and as such there is no point of confusion which is likely to be created in the minds of dealer, customers and public in general. The applicant is making here clear once for all that applicant is not passing off his goods with opponents.

13.Further, Applicant denies the statement made in the paragraph No.12 that the impugned/contested mark being deceptively similar to the opponent’s well-known marks, and also adopted for goods closely related to the opponent’s and for which opponents’  marks are well-known globally including in India. The applicant denies the allegation that the Applicant does not appear to have come with “clean hands” and bona fide intention in seeking registration of the impugned/contested mark and as such the application is to be regarded as made in “bad faith”. The Applicant’s denies the statement and states that the Mark is a not synonym of the Opponent’s Trade Mark. Nothing has been done by the Applicant with the intention of coming as close as possible to the Opponent’s Trade Mark. The applicant has not filed his trademark with a dishonest intention and in bad faith with the purpose of encashing upon / riding upon the reputation and goodwill earned by the Opponent in respect of the Opponent’s Trade Mark. So there is no chance of confusion and association will create in the minds of customer.

1. Applicant denies the statement in Para No.13 is Opponents’ said The advertised mark has been filed on the basis of “proposed to be used” and being mala fide from the very inception, would not entitle the applicant to claim any relief under Section 12 of the Act. Applicant states that a settled principle of law that two marks should be judged by their look and sound. They should be compared and considered by the goods to which they are applied and the nature and kind of customers. Considering all the surrounding circumstances the learned Registrar decided to accept and publish the applicant’s mark as an accepted trademark application therefore the Applicant’s Mark is entitled for registration which shall not deceive the public or cause confusion at any cost due to the fact that the applicant’s goods in class 3 are different from opponents said goods in class 33.
2. The Applicant states that the mark is adopted honestly and there is no intension to create any confusion in the mind of customers. The applicant has no ulterior motive while devising his word mark that is graphically, visually, aurally and structurally different from the opponents trade mark. Both the trademarks are so different from each other taking goods as a whole that there will not be any association in the minds of the members of the trade. Looking at both the trademarks average consumers will never consider that there is some relationship between the applicant and the opponent’s trade mark so no need to say that there would be a wrong and incorrect inference or surmise. Thus, the opposition should be rejected and the applicant’s trade mark should be registered. The applicant will suffer irreparable loss and injury if the trademark is denied to him. The applicant has adopted his word mark substantially different from the opponent therefore there is no question of fraudulent and dishonest intention. The applicant truly believes that no injury will cause to the opponent if applicant’s mark is registered as both the marks are substantially different from each other as decided by the learned Registrar of Trademarks.
3. The applicant states that the opposition filed is not tenable and is liable to be rejected at the outset. There is no circumstance in the instant case under which the accepted mark can be withdrawn from the register under Trade Marks Act, 1999 in view of different class of goods.
4. The fact is that the applicant has adapted the said trade mark with honesty, integrity and bonafied intention therefore fully qualifies the spirit of the preamble of the Trade Marks Act 1999 so that the applicant vehemently denies the allegations stated in Paragraph No. 24. The Applicant submits that the Opponent has not only misunderstood the scope of provision of the said Act for filing of the Notice of Objection to the said Trade Mark after publication in Journal but also has been overzealous in the filing of the purported Notice of Opposition.
5. The applicant seriously wants to start the business of his concern uninterruptedly, with honest and bonafied intentions therefore his said trade mark is fully qualified for registration according to S.2, 9, 11, 12, 18 and 29 of the said Act. The Applicant submits that the Opponent sought to take shelter under said provisions by interpreting the same in their own way with malafide intent to mislead the Hon’ble Registrar. The Applicant submits that the Opponent has gone too far to seek the kind of refuge and misinterpreted the aforesaid provision of the said Act, and hence the Opposition application deserves to be dismissed.
6. The Applicant strongly denies that Opponent has made out any case for exercise of Hon’ble Registrar’s discretion in favour of the Opponent by denying the registration of the mark applied for in the said Application as alleged. The Applicant denies the allegation that to maintain the purity of the Register and in the interest of the general public, it is a fit and proper case for the exercise of the Registrar’s discretion in favour of the Opponent by denying registration of the mark applied for in the instant application as alleged. On the contrary, the Applicant submits that the registration of the said mark would not cause any prejudice to purity of Register and interest of the general public. The Applicant submits that on the other hand, denial of registration of the Applicant’s applied mark will seriously affect the Applicant’s right to carry on trade and business to attain prestige and dignity in eyes of the society and reputation and status in public realm. The Applicant submits that the Opponent has no case on merits and as such indulged into reckless contentions as contended Notice of Opposition. The Applicant, therefore, submits that aforesaid conduct of the Opponent amply demonstrates the falsity and dishonesty of the Opponent’s Notice of Opposition and the claims made therein.
7. It is respectfully submitted that Both the Mark and goods is different from each other there is no scope of confusion in any stage. The Opponent has approached this Hon’ble Forum with malafide intention and the captioned Opposition proceeding is an abuse of the process of the law and as such the Opponent is not at all entitled to relief claimed in the said Notice of Opposition and same is liable to be dismissed with heavy compensatory costs.
8. In overall view of the matter, the Applicant submits that the Notice of Opposition fails to state a claim upon which relief can be granted. The Applicant also submits that the Opponent has not made out any case at all, on merits or otherwise. If any indulgence is granted to the Opponent, then it will cause grave harm and prejudice to the Applicant. The balance of convenience is in favour of the Applicant and as such the question of harm and prejudice caused to the Opponent arise at all.
9. The Applicant craves leave to file additional counter statement and/or modify, alter, amend to and/or add to present counter statement.
10. In the aforesaid circumstances, the Applicant states and submits that the Opponent is not entitled for any of the reliefs claimed in the Notice of Opposition.
11. The Applicant, therefore, prays that:
12. The Notice of Opposition No. 3300435 filed by the Opponent against registration of the mark “ RASCO FRUNNELO “, applied under Application No. 4705221 in Class 03 of the Fourth Schedule of the said Rules in the name of LOYAL CONSULTANCY be set aside.
13. the Application No. 5705339 filed in Class 03 of the Fourth Schedule of the said Rules for registration of trademark of the mark “RASCO FRUNNEL” in the name of LOYAL CONSULTANCY be ordered to be registered on expiry of statutory period of 4 months from the date of the publication in Journal;

iii. Costs of these proceedings be provided for.

1. Any other further reliefs as the nature and circumstances of the case may require be granted.

All communications in relation to these proceedings may be sent to the following address of the Opponent in India:

Address:

Plot No. 727,Block Z. Surya  Nagar,

Ramnpuri,New Delhi-210058

Digitally signed by

LOYAL CONSULTANCY

Dated 04.04.021

To,

The Registrar of Trade Marks,

Office of the Trade Marks Registry at Delhi.

VERIFICATION

I, LOYAL CONSULTANCY having address at Plot No. 727,Block Z. Surya  Nagar, Ramnpuri,New Delhi-210058 o hereby verify that the statements and submissions made in paragraphs 1 to 23 of this Counter Statement are based on the information, documents provided to me and I believe them to be true and correct; the statements made in paragraphs 24 (i) to (iv) of this Counter Statement are the prayers to the Learned Registrar.

Dated this 4^th April 2021.

Digitally signed by

LOYAL CONSULTANCY