Trademark Opposition tricks

It is submitted that as the applied mark is adopted in good faith with an honest intention and is unique, different, distinctive and creative, created, composed, invented, designed, stylized and developed by the applicant and totally new to the world.

It is further submitted that the applicant has duly filed for registration of the applied mark and the Learned Registrar has accepted and advertised the applied mark after thorough perusal and examination of the applied mark on merits and hence the opponent’s claim in the present notice of opposition is completely dishonest and wrongful. Thus, neither the opponent nor the public is going to be affected in any manner and the purity of Trademark Register is nowhere going to be affected after registration of the applied mark.

It is submitted that the merits, eligibility and qualification of the applied mark has been discussed extensively in the preceding paragraphs and not repeated herein for the sake of brevity and further the un-substantiated claims of earlier use or well-known status has already been discussed extensively and hence not repeated herein.

1. That the Contents of Para No-10 of the Notice of Opposition are denied for being wrong, false, baseless and bad in law. It is strongly denied that the mark of the Applicants was only proposed to be used on the date of the application and no harm will be caused to the Applicants, if the mark is refused registration. It is further denied that if the mark of the Applicants is allowed to be registered, then irreparable harm, loss and injury will be caused to the Opponents, as there will be deception and confusion in the minds of the customers. It is vehemently denied that there has been no special circumstance in the present case which requires any consideration by the Ld. Registrar. It is also denied that the applicant is not entitled to any relief as envisaged under Section 12 of the Act.

It is submitted that the application for registration of applied mark was advertently filed on proposed to be used basis but the applicant is continuously using the applied mark since a long time and also promoting the same on its reputed website www.exampraxis.com.

Further the applicant has already invested a huge amount of money in promotion, advertisement and marketing of the applied mark including a heavy investment in development of website and web-based application of learning and hence there will be irreparable loss and damages if the present application is not granted registration.

Further stark dissimilarities between the rival marks added with highly dissimilar services of the applicant and opponent there is a prominent non-association between the rival marks coupled with impossible confusion on the part of general public and hence the applicant will not suffer any loss or damages in neither its business nor its reputation and hence the present opposition may be rejected summarily.

1. That the Contents of Para No- 11 of the Notice of Opposition are misconceived, misleading, unjustified and bad in law and hence denied. It is strongly denied that the premises aforesaid, the provisions of Sections 9, 11, 12 and 18 of the Act clearly constitute a bar against registration of the mark applied for.

It is submitted that the present case of applied mark is a fit and genuine case for trademark registration which has been extensively discussed in preceding paragraphs and not repeated herein for sake of brevity and hence the application of 9, 11, 12, and 18 of the Trade Marks Act, 1999 is ruled out

1.  That the Contents of Para No-12 of the Notice of Opposition are denied for being repetitive, misconceived and misleading. It is strongly denied that the above grounds are sufficient for disallowing the impugned application. It is emphatically denied that this is a fit case for the exercise of the judicial discretion vested in the Hon’ble Tribunal under Section 18(4) of the Act against the registration of the mark applied for, in order to maintain purity of the Register of Trade marks so that similar marks as that of the impugned mark are not allowed to be registered.

It is submitted that the applied mark was created, composed, designed and stylized by the applicant and adopted in good-faith with bonafide and honest intention of use and meets every eligibility to be registered as a trademark and there is not even a remote chance of infringement due to a high degree of difference and distinctiveness and hence the mark is entitled for registration and shall be subject to protection in any court of law.

It is submitted that the mark is a pure mark and a unique creation by the intelligent minds of the applicant and hence the applicant is true and lawful proprietor of the applied mark and the present opposition has been filed with malafide intent to harm the applicant.

1. That the Contents of Para No- 13 of the Notice of Opposition are misleading, baseless and unjustified and hence denied. It is strongly denied that balance of convenience is against the Applicants and is in favour of the Opponents in so far as the Applicants’ application is prima facie dishonest, malafide and untenable in law.

It is submitted that there have been an extensive discussion on the difference and distinctiveness of the rival mark which proves that there is not even a remote possibility of the association between the rival marks as the degree of the difference in sound, connotation and appearance of the rival marks are so high that a person of average sense will be able to distinguish and identify the differences and hence there is no question of association or confusion between the rival marks and thus balance of convenience is in favor of the applicant and against the opponent.

1. That the contents of para no III i.e prayer are unsubstantiated, unjustified, baseless and without merits and hence this Hon’ble authority ought not consider the prayers of the opponent and thus the opposition may be rejected summarily.

1. That the contents of para no IV are unsubstantiated, unjustified, baseless requests of the opponents which will cause undue delay in the opposition proceedings and hence this Hon’ble authority ought not consider the unjustified requests of the opponent.

1. The applicant requests the Hon’ble Registrar to allow any further amendments or deletion in the present counter-statement if required during the proceedings.

1. The present counter-statement is well within the period of limitation as there has been no delay in filing the present counter statement as the notice of opposition was dispatched on 15.05.2023 and proper for consideration of this Hon’ble authority. 

Prayer

Thus, in the view of mentioned facts and circumstances the Applicant accordingly prays that this Hon’ble Tribunal may be pleased to-

1. 1. Dismiss the present Opposition and impose heavy costs on the Applicant;

1. 1. Order the subject application to proceed to registration; and

1. 1. Pass any other order as the nature or circumstances of the case may require and as this Hon’ble Tribunal deems fit and proper.