TM - O

THE TRADE MARK ACT, 1999

BEFORE THE REGISTRAR OF TRADE MARKS

TADE MATKS REGISTRY, NEW DELHI

Agent Code: 17318

Reply to notice of opposition to application for registration to

Trade Mark

(SECTIONS 21 (2), 47, 57, 59 (2); RULES 49, 93, 99 & 101)

In the matter of Application No. 2447778 in class

05 for the Trade Mark BIONUREX in the

name of Mr. Rajiv Mukul Trading as ZEE

LABORATORIES, UCHANI, G.T. ROAD,

KARNAL 132001, HARYANA (INDIA) Traders

published in Trade Mark Journal No. 1755,

Regular, dated 25-07-2016 at page no. 934.

-AND-

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 In the matter of Opposition no. 869309 thereto,

by M/S Mere Organics Pvt. Ltd.., Mumbai. Office

At A-177, Road no. 16-Z Wagle Estate, Thane-

400604. Notice of our intention (hereinafter

referred to as the Opponent).

PRELIMINARY SUBMISSION

1. That the applicant Zee Laboratories is a proprietorship firm,

Mr. Rajiv Mukul being the proprietor of the same and having

its registered office at the aforementioned address.

2. That the applicant since the year 1993 is carrying on an

extensive business of manufacturing and marketing

pharmaceutical preparations and cosmetics of all kinds.

3. That apart from the production of high quality medicinal,

pharmaceutical and cosmetics of all kinds preparations the

applicant company is also committed towards keeping pace

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 with the growing technological advancements in the field of

medicine and cosmetics has a team of renowned and highly

professional consultants on its Panel who render their valuable

support for development of new molecules and technical up-

gradation in tune with ever changing time and technology.

Furthermore, the technical staff of the applicant company is

regularly trained with periodical and online in-house training so

that validated methods and procedures are perfectly

implemented for production of zero-defect and cost effective

pharmaceutical and cosmetics of all kinds products.

4. That the applicant in the year 2012 applied for the trade mark

BIONUREX, The applicant since the year 2012 is carrying on

an extensive business of manufacturing and marketing its

medicinal product under its distinctive trade mark

BIONUREX.

5. That at the time of adoption of the trade mark BIONUREX in

the year 2012, the applicant made all efforts to ascertain

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 whether any such trade mark was being used by its

competitors in respect of same/similar goods and having made

sure that no competitor of the applicant was using the

said/similar trade mark in respect of an identical and/or allied

specification of goods, the applicant commenced using the

said trade mark in respect of one of its medicinal preparation

and in its 2012 years of use has established a great goodwill

and reputation due to the said medicinal preparations quality

and results.

6. That the aforementioned trade mark BIONUREX of the

applicant due to its extensive and continuous use since the

year 2012 is solely associated with the products of the

applicants manufacture and is considered synonymous with

quality products manufactured by the applicant.

7. That the applicant is the first adopter, originator, true owner

and lawful proprietor of the trade mark BIONUREX, which is

an invented word and inherently distinctive and on account of

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 superior quality of the said goods and due to the continuous

use of the said trade mark BIONUREX since 2012 the same

has acquired a secondary significance in favour of the

applicant.

8. That the applicant has till date conducted the sale of its

medicinal preparation bearing the trade mark BIONUREX for

a very high value.

9. That the opponent has no cause of action against the

applicant to file the present opposition and the said opposition

being baseless, frivolous and malafide is liable to be

dismissed on this account alone.

10. That the present opposition has been filed by the opponent

with a sole view to harass the applicant and further with a view

to delay the registration of the applicants honestly adopted

and used trade mark which is completely distinctive than of the

opponents mark.

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 REPLY ON MERITS

11. That the contents of Para no. 1 of the notice of opposition

are admitted only to the extent that the opponent, like the

applicant, is a pharmaceutical manufacturing company. Rest

of the contents are wrong and denied for want of knowledge

and the opponent is put to strict proof of its said averments. It

is vehemently denied that in order to distinguish the

opponents goods from those of others the opponents have

been adopting several distinctive trademarks which have

been registered or are in the process of registration, as the

opponents failed to provide any details of the same. It is

denied that by virtue of high standards of quality, wide

publicity and extensive sales, the opponent marks have

become well known throughout the country and it is further

denied that the opponent has acquired excellent reputation

and goodwill over the said marks. The said statements are

all self serving statements and are liable to be ignored.

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12. That the contents of para 2 of the notice of opposition are

admitted only to an extent that forms the part of the record of

Trade Marks Registry. It is submitted that the applicant has

never seen or heard about the alleged drug bearing the

trademark BIOURAL of the opponent. Even otherwise the

said registration of the opponent is of no concern to the

applicant as the two marks are totally different and different.

13. That the contents of para 3 of the notice of opposition are

wrong and emphatically denied. It is submitted that the

impugned mark of the applicant is coined word and its

coinage has been sufficiently explained in the preceding

paragraphs. In fact when the impugned mark of the applicant

was coined, the applicant was not even aware about the

existence of the alleged trade mark of the opponent. Even

otherwise the two trade marks are different and distinct and

the specification of goods in respect of each of them is

completely different and distinct. It is emphatically denied

that the goods for which they applicant is seeking registration

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are of the same description as those covered by the

opponents registration and the opponent is put to strict proof

of the same. In view of the aforementioned submissions

made by the applicant even if there are any goods of the

opponent under its said trade mark in existence there is no

question of any alleged confusion and / or deception

amongst the trade and public. As aforementioned the

opponent even at the time of filing of its alleged application

had no intention of using the said trade mark at all and

neither has the opponent ever used the said trade mark in

respect of any goods. The non user of the trade mark

BIONURAL of the opponent makes it an invalid trade mark

on which no reliance can be placed by the opponent. Even

otherwise the two trademarks and the two competing

specification of goods are different and distinct and no

alleged confusion and / or deception is being caused in the

trade and public. The applicant is advised to state that the

provisions of Section 11 (a) and (b) of the Act have no

application in the present context and the reliance of the

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opponent on the said provision is completely misplaced. It is

submitted that the opponent cannot claim exclusivity over the

word BIONUREX, as the same is being used by the

number of entities and on conducting a search of the

database of the Trade Mark registry it is revealed that there

are various marks registered having the word BION as a

suffix. It is submitted that even otherwise its a settled law

that each mark has to be examined as a whole and just

because the applicants have filed mark pending registration

with the descriptive suffix BIONUREX it would give no right

whatsoever to the opponent to claim the monopoly on all

marks containing the descriptive expression BIONUREX.

Few marks having registered with BION are reproduced

herein below :

S. MARK CLASS APP STATUS

NO. NO.

01. BIONABOLIN 05 226458 REGISTERED

02. BIONORM 05 341142 REGISTERED

03. BIONURAL 05 413019 REGISTERED

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04. BIONORICA 05 541365 REGISTERED

05. BIONAC 05 778905 REGISTERED

06. BIONECT 05 796058 REGISTERED

07. BIONAC 05 1027958 REGISTERED

08. BIONET-TEA 05 1030339 REGISTERED

09. BIONCA 05 1039432 REGISTERED

10. BIONIMS 05 1065807 REGISTERED

11. BIONIN 05 1073507 REGISTERED

12. BIONIM-P 05 1112186 REGISTERED

13. BION FORTE 05 1221329 REGISTERED

14. BIONUTRICEL-S 05 1356119 REGISTERED

15. BIONEV 05 1328916 REGISTERED

16. BIONSTITUTE 05 1360360 REGISTERED

17. BIONFLUK 05 1379332 REGISTERED

18. BIONID 05 1379557 REGISTERED

19. BIONASE 05 1478030 REGISTERED

20. BIONUTRA 05 1508045 REGISTERED

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14. That the contents of para 4 of the notice of opposition are

wrong and denied and the opponent is put to strict proof of

its said averments. It is vehemently denied that the adoption

of the impugned mark by the applicant is dishonest,

fraudulent or with an intention of trading upon the opponents

alleged goodwill and reputation. As aforementioned the

applicant has bonafidely and honestly coined its impugned

mark and it is the applicant who is the first adopter and lawful

owner of its/ impugned mark in respect of its aforementioned

specification of goods. It is reiterated that the opponent has

not commenced the use of its alleged mark till date and

therefore there is no question of any consumers and traders

to be deceived /confused. The alleged confusion and

deception being canvassed by the opponent is imaginary

and miles away from truth and reality. The applicant is

advised to state that the applicants trademark is not

disentitled to protection in a Court of Law. It is emphatically

denied that the registration and/or use of the impugned mark

by the applicant which forms the subject matter of the

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 present application is capable of causing any confusion,

deception, embarrassment, lawful loss or any inconvenience

to the opponent. It is denied that the use of the impugned

mark will be prejudicial to the public interest or contrary to

the universally accepted principle of ethics and morality. The

applicant is advised to state that the provisions of Section

11(3) of the Act have any application in the present context

and the reliance of the opponent on the said provisions is

completely misplaced.

15. That the contents of Para 5 of the notice of opposition are

wrong and emphatically and proper proof and the opponent

is put to strict proof of its said averments. It is specifically

denied that the applicant mark under the application is

identical or deceptively to the opponents alleged mark. It is

not denied that the goods of the applicant and the opponent

both being pharmaceutical goods are goods of the same

description. The mark of the applicant is inherently distinctive

and is different and distinct from that of the opponents, it is

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 entirely false to say that the applicants impugned mark will

be impossible to distinguish from the opponents alleged

trademark in a doctors prescription or over the counter. It is

vehemently denied that the use of the applicants trademark

shall create confusion in the minds of customers and

dealers; and it is most certainly not going to deceive potential

customers and dealers in the course of trade. The applicant

is advised to reiterate the fact that the trademark of the

applicant is clearly and distinctly different from that of the

opponent, is under no circumstances deceptively similar to

that of the opponent and further was honestly and bonafidely

adopted by the applicant. Therefore, The applicant is advised

to state that the provisions of Section 9(2)(a) of the Act have

no application in the present context. Reply to the preceding

paragraphs may be read as a reply to this paragraph also.

16. That the contents of para 6 of the notice of opposition are

wrong and denied and the opponent is put to strict proof of

its said averments. It is emphatically denied that the adoption

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 of the impugned mark by the applicant is dishonest and as

aforementioned the applicant has bonafidely and honestly

coined its said trade mark and has every right to its

registration and use. The applicant applied for the

registration of their impugned trademark having found no

conflicting marks or any that were identical or deceptively

similar; after a thorough search in the competitive market

and in the records of the Trade Mark Registry. Thus, the

question of the applicants awareness of the existence of the

opponents alleged mark bears no relevance to its

registration as the applicant did not find any conflicting marks

in the Trademark Registry or in the competitive market.

Thus, the applicant is, and has every right to claim

proprietorship of the impugned mark under Section 18 (1) of

the Act. Reply to the preceding paragraphs may be read as

a reply to this paragraph also.

17. That the contents of Para 7 of the notice of opposition are

wrong and denied and the opponent is put to strict proof of

its said averments. It is denied that no harm would be

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caused to the applicant if the mark of the applicant is refused

registration. It is denied that the opponent would suffer

irreparable injury and harm in any manner whatsoever. It is

reiterated that the applicant has been using the impugned

mark since 2012 and that too on an extensive basis. The use

made by the applicant is honest and bonafide as mentioned

in the aforementioned paragraphs and the applicant is fully

entitled to be registered as a honest concurrent user. In fact

the applicant is also entitled to be registered under the

provisions of Section 12 of the Act in as much as the

applicant is the honest concurrent user of the said mark. The

applicant is advised to state that applicant has been

extensively and continuously been using the mark since

2012 and under these special circumstances the applicants

mark is liable to be registered under Section-12 of the Act

Reply to the preceding paragraphs may be read as a reply to

this paragraph also.

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18. That the contents of para 8 of the notice of opposition are

wrong and denied and the opponent is put to strict proof of

its said averments. It is vehemently denied that the mark

applied in the name of the applicant is contrary to the

provisions of Section 9, 11, 12 and 18 of the Act. Reply to

the preceding paragraphs may be read as a reply to this

paragraph also.

19. That the contents of para 9 of the notice of opposition are

wrong and emphatically denied. In fact the balance of

convenience is clearly in favour of the applicant and against

the opponents. It is vehemently denied that the applicants

application is dishonest, malafide and untenable in law and

opponent is put to strict proof thereof.

20. That the contents of para 10 of the notice of opposition are

wrong and emphatically denied. It is submitted that the law

laid down in the Cadila Health Care Ltd., Vs. Cadila Pharma

Ltd. by the Hon'ble Supreme Court is not applicable to the

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 present case. It is submitted that the applicant is fully aware

that in medicinal and pharmaceutical and preparation

products the confusion is more dangerous than that of other

goods and it is also submitted that the marks of the

applicant and that of the opponents are totally distinct and

devoid of any confusing similarity. So the mark of the

applicant is liable to be got registered.

21. That the contents of para 11 Prayer clause of the notice of

opposition are wrong and denied. Each and every prayer

prayed for in the paragraph under reply is liable to be refused

and the instant application of the applicant bearing No.

2447778 in class-5 is liable to be allowed.

22. That in reply to the contents of para 12 of the notice of

opposition it is submitted that no such blanket permission to

add, alter, amend and modify grounds of opposition can be

granted to the opponent and the applicant would oppose the

same as and when any such occasion arises.

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23. That in all the given facts and circumstances as detailed

hereinabove by the applicant the present opposition of the

opponent being false, frivolous, baseless and vexatious is

liable to be dismissed with exemplary costs and the present

application of the applicant for the registration of the trade

mark BIONUREX under No. 2447778 in class-5 is liable to

be proceeded further for registration.

All communications in relation to these proceedings may be

sent to the below-mentioned person who is authorized to

prosecute the present opposition on behalf of the applicant:-

SIDDHARTH BAMBHA

ATTORNEY OF THE APPLICANT

28/44, PUNJABI BAGH WEST

NEW DELHI 110026

011-42463138, 9811327014,

siddharthbambha@yahoo.com

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 VERIFICATION:

Verified at New Delhi on this day of September, 2017 that

the contents of the present reply are true, correct and

believed to be true from the information received from the

applicant and nothing material has been concealed there

from. The paragraph 23 th is the prayer. The last paragraph is

the address of all communications to be made.

SIDDHARTH BAMBHA
ATTORNEY OF THE APPLICANT

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