MODEL COUNTER STATEMENT TO THE NOTICE OF OPPOSITION- TMO- TRADEMARKS ACT 1999

09 Apr MODEL COUNTER STATEMENT TO THE NOTICE OF OPPOSITION- TMO- TRADEMARKS ACT 1999

FORM TM-O

THE TRADE MARKS ACT, 1999

Notice of Opposition / Application for Rectification of the Register by cancelling 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. 5500500 to Application No. 1234567 in Class 05 for the registration of Trade mark “ZXN” in the name of LOYAL CONSULATACY.

AND

AND IN THE MATTER OF OPPOSITION THERETO filed by ZXL Marketing Sdn Bhd., having its office at NAZAMA HXL, 123 NIGERIA.

LOYAL CONSUTLANCY, (herein after referred to as “the applicant”) a sole proprietor having its address at Plot no.10,  Mahala No.66, Thakruli  BazarNehri Nagar, Navi Mumbai, the applicants for registration of the Trade Mark “NXN” 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 Pharmaceuticals included in class 5 fourth schedule of the trade marks rules, 2002 (“said rules”).
2. The applicant submits that on 03/11/2020 the applicant filed for registration of Trade mark “BXN” (hereinafter referred to as the said Mark) vide application number 5529256 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 2053 Regular dated 18/01/2020 on page number 608. 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 “BXN”. 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 “BXN” 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. Pharmaceuticals included in class 5. 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 “BXN” has been sought to be opposed just for the sake of opposing the same. The Trademark of the opponents is “ZXL”. 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 “BXN” bearing application number 933284 in class 05 for goods “Herbal Preparations, Food Supplements Included in Class 5.” The opponent’s trade mark is “” but applicant’s mark is “ZXL” a unique mark and adopted with no intention of copying the opponent’s mark. The opponent’s trade mark “ZXL” 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 “BXN” 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 “XN” 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. 13 of the Form TM- O Notice of Opposition (hereinafter called the said notice) The Opponents say and submit that the Applicant’s impugned mark was applied for registration only on November 03, 2020 and has not even been used which is evident from the fact that the impugned mark has been applied on proposed to be used basis. This statement is false as the Applicant’s is newly starting his business. The fact is that the applicant has adapted the said trade mark with honest and bonafied intention therefore fully qualifies the spirit of the preamble of the Trade Marks Act 1999. 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. The applicant genuinely search the mark in public search website of Trade Mark Registry under class 05 and after that when there is no similar mark was found then only the applicant adopted and applied the trademark. 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. 14 that the Opponent submits that according to Section 11 of the Trade Marks Act, 1999, the registration of a mark may be refused on the basis of identity or similarity with an earlier trade mark. The applicant’s Mark is NXN (word mark) but the Opponent’s mark is “ZXL” in their both look there is no resemblance of identity similarity. The fact that the learned Registrar has accepted the Trade mark unconditionally and published in Trade Marks Journal 1983 Regular dated 18/01/2021 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.15, is that the impugned mark is not registrable under Sections 9, 11, and 18 of the Act. The Applicant denies the fact that both the marks are different. 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. 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 from the following points as held in land court decisions:
11. There is no resemblance between the marks.
12. The nature of the goods in respect of which they are used as trademarks are different.

c.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.

1. The mode of purchasing the goods or placing orders for the goods are different and
2. 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. 16 that the Application for the impugned trade mark violates the provision of Section 9(1)(a) of the Act and deserves to be refused. The applicant denies that his mark BXN (word mark) is a colourable imitation of the Opponent’s label mark is

“” .  The applicant denies the fact that his word mark ZXL is devoid of any distinctive character and is incapable of distinguishing the goods from the goods of the Opponent and therefore, does not qualify for registration under Section 9(1)(a) of the Act. This statement is false in view of high degree of dissimilarity in both the trade marks. Applicant denies this statement that goods of the opponents’ mark and the applicant’s mark are similar. The applicant’s goods are only “pharmaceuticals” but the opponent’s goods are herbal preparations, food supplements included in class 5.  The use, users, purpose and customer relation of the goods under both the marks are different. 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 prescribed 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 of them both by the look and by the 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. Infact, you must consider all the surrounding circumstances: and you must further consider what is likely to happen if each of those trade marks is used in the normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be confusion -that is to say – not necessarily that one will be injured and the other will gain illicit benefit, but there will be confusion in the mind of the public, which will lead to confusion in the goods – then you may refuse the registration, or rather you must refuse the registration in that case”.

In the light of the above land mark judgment 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.

15. The applicant vehemently denies the allegations made by the applicant in Paragraph No.17,18 & 19 the impugned trade mark application violates the provisions of Section 9(2)(a) of the Act, as it is of such nature as to deceive the public or cause confusion with respect to the origin of goods, hence should be refused registration. 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. Therefore the allegation of deceptive similarity and passing of is false and unfounded.
16. Further, Applicant denies the statement made in the paragraph No.20 and 21 that the applicant’s mark is identical with and similar to the opponent’s earlier well-known marks. The Opponent may have diverse businesses extending into diverse goods but the applicant has not taken any unfair advantage of the opponent’s trade mark. The applicant’s trademark is not detrimental to the distinctive character and repute of the opponent’s trademark. The applicant denies the allegation that the Applicant Mark is a 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 that will be created in the minds of customer. Looking at both the trademarks 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 any kind of advantage will go to the applicant.
17. Applicant denies the statement in Para No.22 made by the applicant who alleged that the applicant has applied his Trademark NXN in the bad faith. The applicant denies that as per the provisions of Sections 11(6), 11(7) and 11(9) of the Act, the applicant’s trademark should be refused registration and opponent’s trademark should be protected as a well-known mark. Applicant states that a settled principle of law that two marks should be judged by their look and sound. 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. Opponent’s trade mark is “” and applicant trade mark is “NXN” there is no confusion in both marks here the applicant’s honesty is visible. The Applicant states that the mark is adopted honestly and there is no bad faith intension to create any confusion in the mind of customers.
18. The applicant denies the statement in paragraph No.23. There is no scope of Section 102(1) or Section 103 of the Act applicable to the applicant. The applicant has never falsified opponent’s Trade Mark because both the Trademarks are different as decided, accepted and advertised by the learned Registrar of Trademarks. Therefore the provision of 102(1) or Section 103 is not applicable in the instant dispute. The opponent may be prior user of mark “ZXL” label mark but that is totally different from applicant’s word mark ZXL.

16.The applicant is serious to commence his business upon the registration of his trade mark  uninterruptedly, openly, extensively and increasingly. The acceptance of trademark by the learned registrar is the proof of the applicant’s 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.

1. The Applicant denies the statement made in the paragraph No. 24 to 25 i.e. The applicant has adopted his trademark with lawful and bona fide intention. There is no attempt made by the applicant to ride on the coat-tails of good-will and reputation of the Opponent. There is no foregoing and the tangible risk of confusion that may arise by the use and registration of the Applicant’s mark. There is no ground on which the Registrar should exercise his discretion under Section 18(4) of the Act in favour of the Opponent and against the Applicant. The applicant states that 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. Also the goods of the Opponent’s are totally different i.e. HERBAL PREPARATIONS, FOOD SUPPLEMENTS. The Both applicant’s and opponent’s Trade Mark is also different 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.
2. The applicant states that the opposition filed is not tenable and is liable to be rejected at the outset. The Opponent’s has no point of grounds therefore in each and every paragraph they have repeated the same things. 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.
3. 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. 26. 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.
4. 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.
5. It is respectfully submitted that Both the Mark is different from each other there is no scope of confusion in any stage. The opponent’s trade mark is device mark i.e. ZXL and the applicant’s trade mark “BXN” word mark. Opponen’s goods are HERBAL PREPARATIONS, FOOD SUPPLEMENTS INCLUDED IN CLASS 5 whereas the Applicant’s goods are pharmaceuticals. 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.
6. 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.
7. The Applicant craves leave to file additional counter statement and/or modify, alter, amend to and/or add to present counter statement.
8. 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.
9. The Applicant, therefore, prays that:
10. The Notice of Opposition No. 5500500 filed by the Opponent against registration of the mark “ NXN “, applied under Application No. 5529256 in Class 05 of the Fourth Schedule of the said Rules in the name of DURGESH KUMAR TRIPATHI be set aside.
11. the Application No. 5529256 filed in Class 05 of the Fourth Schedule of the said Rules for registration of trademark of the mark “NXN” in the name of LOYAL CONSULATANCY 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:

Plot no.10,  Mahala No.66,

Thakruli  BazarNehri Nagar,

Navi Mumbai

Digitally signed by

LOYAL CONSUTLANCY

Dated 10.04.021

To,

The Registrar of Trade Marks,

Office of the Trade Marks Registry at Delhi.

    VERIFICATION

I, LOYAL CONSULTNACY  having address at Plot no.10,  Mahala No.66, Thakruli  BazarNehri Nagar, Navi Mumbai  do 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 10^th April 2021.

Digitally signed by

LOYAL Consultancy