Form TM - 5
TRADE AND MERCHANDISE MARKS ACT, 1958 [CD1]
Notice of Opposition to Application for registration of a Trade Mark,
Section 21 (1), Rules 51 (2)
IN THE MATTER
of Application
No……………..(……………….) in Class ………
in the name of ……………………. and ………………….., ……………………….
AND
In the matter of Opposition thereto
by ……………………………………………….
We, Rallis India Limited, a
Company incorporated under the Indian Companies Act,
1913 and having its registered office
at …………………………. in the State
of ……………………., hereby give notice
of our intention to oppose the Trade Mark advertised under the above
number in Class 5 in the Trade Marks Journal No.1143 dated
……… 20 …………….. at Page
No.1414.
The grounds of opposition are as follows:
1.
That we are the well-known manufacturers and
merchants of Medicinal and Pharmaceutical preparations for past many
years.
2.
We are carrying on a well-established business
as manufacturers, marketers and distributors
of interalia medicinal and pharmaceutical preparations from over more
than 3 decades and herbal formulations from last several years.
3.
We are marketing and distributing our whole
range of products through our wide net work of dealers, chemists and stockists
in India and abroad under various Trade Marks.
Our products bearing the various trademarks enjoy high reputation and
goodwill throughout the country.
4.
The applicants have applied for registration of
trade mark ............... in class 5 in respect of medicinal and
Pharmaceutical preparations which is deceptively similar to our trade mark
................ The adoption by the
applicants of the impugned trade mark ............... is dishonest and
fraudulent, actuated by malafide intention.
It is apparent that the applicants have adopted the trade mark
............... solely with the intention of coming as close as possible to our
trade mark ................ The
registration of the impugned mark would, therefore, be a negation of the
mandate enshrined in the Preamble to the Act which reads as follows;
“An Act to provide for the registration and better
protection of trade marks and for the prevention of the use of fraudulent marks
on merchandise”.
The mark applied for registration is neither adapted to
distinguish nor capable of distinguishing the applicants’ goods.
5.
As the trade mark for which registration is
being sought by the applicants is deceptively
similar to our trade mark ............... and the goods are also
identical and/ or of the same description for which our trade mark is applied,
registration of the impugned trade mark would be prohibited under Section 12 (1)
of the Act.
6.
The use of the trade mark ............... would
cause confusion and deception in the minds of the medical practitioners,
chemists and the consuming public. The prefix RAL used in the mark resembles
the prefix of the corporate name of our Company Moreover, the Company is using
and is the proprietor of the Trade Marks commencing with the prefix RAL :
|
SR. NO. |
TRADE MARK NAME |
REGISTRATION NO.
|
|
1 |
2 |
3 |
|
|
|
|
The suffix BEN is phonetically
similar to the suffix of our trade mark ................ The overall impression
of the Trade Mark for which the applicants are seeking registration is such
that it can easily be mistaken and confused with our aforesaid Trade Mark. Alternatively, it is likely to be mistaken as
another Trade Mark of our Company.
6.
The impugned mark does not qualify for
registration under section 9 of the Act as the same is neither distinctive nor
capable of distinguishing the goods of the Applicants. The applicants cannot claim any
proprietorship in respect of the impugned mark as the same has been copied and
adopted by the applicants with a dishonest intention which would cause
confusion amongst the medical practitioners, chemists, stockists and the
consuming public leading to passing off.
7.
That the goods in respect of which the
applicants are seeking Registration are the
goods of the same and/ or similar description to the goods in respect of
which our Trade Mark aforesaid is pending for registration.
8.
That the mark in respect of which the Applicants
are seeking registration consists of the word ............... and is identical
in class 05 in respect of Medicinal and Pharmaceutical preparations which is
deceptively similar to our Trade Mark ................
9.
The channels of trade of the applicants’ goods
and the goods in respect of which our Trade Mark will be used would be the
same.
10.
The applicants are not the proprietors of the
mark applied for registration within the meaning of Section 18(1) of the Act.
11. The
mark now sought to be registered is not
adopted to distinguish the applicants’ goods and is also not capable of
distinguishing the applicants’ goods.
12.
The registration of the applicants’ mark which
forms the subject of the present application, will be contrary to the
provisions of Section 9, 11(a), 11(e), 12(1) and 18(1) of the Act.
13.
The mark applied for registration was admittedly
proposed to be used as on the date of advertisement of the mark and therefore,
no hardship will be caused to the Applicants if the application is withdrawn
and they give an undertaking not to use the mark in future.
14.
The foregoing constitutes sufficient grounds for
the exercise of the Registrars’ discretion in our favour.
15.
For the reasons stated in the preceding
paragraphs, we pray:
(a) That
the Application No.591620 in class 5 be refused.
(b) We
also ask for costs.
(c) Such
other relief as may be deemed necessary by the Registrar.
All communications in connection
to these proceedings may be sent to the following address in India:-
Address ……………..
………………………
……………………..
To:
The Registrar of Trade Marks,
The Office of the Trade Marks
Registry at …………..
0 Comments
Thank you for your response. It will help us to improve in the future.