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BEFORE THE REGISTRAR OF TRADE MARK, NEW DELHI

IN THE MATTER OF APPLICATION FOR TRADE MARK

“{Applicant’s name}” under APPLICATION NO. {xxxxx} in Class- {xx}

{Applicant’s name
Address}
…...PETITIONER
VERSUS

{Respondent’s name
Address}
………RESPONDENT

PETITION UNDER SECTION 18(4) READ WITH SECTION 19 OF

THE TRADE MARK ACT, 1999 ON BEHALF OF THE PETITIONER
FOR REFUSAL OF THE ABOVEMENTIONED TRADE MARK
APPLICATION

1. The Petitioner {name} is {Details of the petitioner, like area of work,

headquarters, former name (if any), predecessor, subsidiaries.}

2. The Petitioner is engaged in the business of {nature of work

undertaken by the petitioner.}

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3. The Petitioner honestly and bonafidely adopted, coined and conceived

the trademark {trademark symbol}decades ago and is the prior owner
and proprietor thereof. (hereinafter referred to as the “said trademark/
trade name)
a. The Petitioner is a well-established company and has been
using the trademark {trademark symbol} for many decades
having garnered huge reputation and goodwill in the market.

b. That the Petitioner has been since the beginning, using the said
trademark/ trade name. By the virtue of its Trademark’s
distinctive font and stylized appearance represented as
{trademark symbol}.

4. The Petitioner has been honestly, bonafidely, continuously,

commercially, openly, exclusively and to the exclusion of others,
uninterruptedly and in the course of trade and as proprietor thereof has
been using its said trademark/trade name in relation to its said goods
and services and business and carrying on its trade and business
thereunder and has built up a goodwill and reputation thereunder and
acquired proprietary rights therein.

5. That the Petitioner has obtained trademark registrations in India which

are legal, valid and subsisting as on date. That the Petitioner’s said
trademark {trademark symbol} and related/cognate trademarks are
duly registered in India under the Trade Mark Act, 1999 (the Act) as
per the following particulars mentioned in the table below : -

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S. No Trade Mark Application Class Status Date of

No. Registration
1. {trademark {xxxxx} {xx} Registered {date}
symbol}
2. {trademark {xxxxx} {xx} Registered {date}
symbol}
3. {trademark {xxxxx} {xx} Registered {date}
symbol}
4. {trademark {xxxxx} {xx} Registered {date}
symbol}

6. That due to the excellent quality of the Petitioner’s goods and services,
demand for its said goods grew gradually. Since the beginning, the
Petitioner has been continuously, commercially, exclusively and in the
course of trade using it’s said Trademarks as proprietor thereof in
relation to said goods and business.

7. That since its adoption of the said TradeMark/Trade Name, the

Petitioner has been honestly & bonafidely, continuously, commercially,
openly, exclusively and to the exclusion of others, uninterruptedly and
in the course of trade and as proprietor there of being using its said
TradeMark/Trade Name as trademarks in relation to its said goods and
business and carrying on its said goods and business there under and
has built up a worldwide and globally valuable trade, goodwill and
reputation there under and acquired proprietary rights therein.

8. That the Petitioner has regularly and continuously been promoting it’s
said distinctive Trade Mark/Trade Name and the goods and business
there under through extensive advertisements, publicities, promotions

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and marketing & marketing research and the Petitioner has been
spending enormous amounts of moneys, efforts, and time thereon. The
Petitioner has been doing so through various means and modes
including through the visual, print, electronic media, in leading
Newspapers, trade literature, magazines, word of mouth, over the
internet etc. and all of which have tremendous reach, availability and
circulation world over including in India. The vast majority of these
advertising expenses have been incurred in the placement of
advertisements in leading magazines and newspapers published in
{name of country}.

9. That the Petitioner maintains the highest standard of quality in relation

to its goods and business under the said Trade Mark/ Trade Name. That
the Petitioner invests heavily in R & D and its products are known for
their highest standards of quality, safety, innovation and reliability and
there is an ever increasing demand therefore.

10. The Petitioner has also got domains name registered in its favour, viz:
{url} [referred to as the said domain name and the term said Trade
Mark/Label shall also refer and include the said domain name of the
Petitioner].

11. That the Petitioner’s said goods and business are known, recognized,
demanded, sold and traded world over with reference to its said
TradeMark/ Trade Name. The members of the trade, industry, the
consumers and general public at large world over and in India are well
aware of the Petitioner, it’s said Trade Mark/ Trade Name and the
Petitioner’s said goods and business there under. The Petitioner’s said

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trade mark/trade name is a well-known trademarks within the meaning

of Section 2 (1) (zg) of the Act.

12. Further, it is essential to point out that the Petitioner, being the
informed owner of the aforesaid mark has been persistently taking
actions against the infringers who have been in any form infringing or
taking any undue advantage of their well- established reputation under
the impugned mark. In furtherance of the same, the Petitioner was able
to attain a John Doe/ Ashok Kumar Order against any infringer, its
partners/proprietors, its associates, agents, directors, officers,
employees. Distributors, franchisee, representatives, assignees from
manufacturing, supplying, selling, and offering for sale counterfeit
products under the well-known trade mark of plaintiff i.e.,
“{trademark & slogan}” or any identical or deceptively similar
trademark/ logo are hereby restrained from using the plaintiff’s well
known “{trademark & slogan}” and other registered marks of
plaintiff company in any form and manner and/or marks deceptively
and confusingly similar to plaintiff’s “{trademark & slogan}” and
other registered marks of the plaintiff, in relation to the goods under
the plaintiff’s trademark and logo “{trademark & slogan}”

13. That hence the Petitioner’s the proprietor of the said Trade Mark/
Trade Name both under the statutory as well as under the common
law in relation to all the said goods.

14. The petitioner’s goods and services bearing the trade mark
{trademark symbol} are prominently displayed on the petitioner’s
website on the internet and are accessible to consumers all over the
world including consumers in India.

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15. That the mark {trademark symbol} is distinctive to the Petitioner’s

goods and services alone. By virtue of the said sale and wide
advertisements, the trademarks acquired enviable goodwill and
reputation in respect of the goods mentioned above.

16. That in view of the aforesaid facts and circumstances and due to the
massive advertisement and publicity and also due to excellent quality
of the Petitioner’s said goods; Petitioner’s said Trademarks enjoy
tremendous goodwill and reputation. Trade and public at large
associate, identify and distinguish the said trade mark and the
copyrights therein, coined jointly and individually, with the Petitioner
and Petitioner’s said goods and businesses.

17. That the Petitioner’s said trademark has all become distinctive,
associated and acquired secondary significance with the Petitioner and
Petitioner’s said goods and business. The purchasing public, the trade
and industry in India as well as abroad identify and distinguish the
Petitioner’s said goods under the said trade mark with the Petitioner
and from the Petitioner’s source and origin alone and regard them as a
high quality product exclusively as that of the Petitioner.

18. That the said trade mark is one of the oldest, most prominent and
valuable trade mark of the Petitioner. The Petitioner is the proprietor
thereof as also of its goodwill and reputation under the statutory and
common law.

19. That the Petitioner’s said goods and business has been growing across
India and is being traded therein for decades.

20. That the Petitioner’s goods and business under the said trademark/label
are known for their highest standards of quality, safety and reliability

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and there is an ever increasing demand therefore. Due to excellent

quality of Petitioner’s said goods Petitioner has acquired vast
reputation and goodwill.

21. That the impugned mark “{respondent’s trademark symbol}” under

applicationNo. xxxxxx in Class-xx filed by {name of person}, trading
as {name of company} addressed at {address} being the subject of the
impugned application is identical with and/or deceptively similar to the
said trade mark of the Petitioner in each and every respect including
phonetically, visually, structurally and in its basic idea. Not only that,
the impugned goods and business being offered by the Respondent, is
of the same nature and character as that of the Petitioner.

22. In addition, the earlier trade mark of the petitioner mentioned above is
known and recognized in the relevant section of the public inter alia by
virtue of the promotion of the earlier trade mark inter alia by way of
advertising and publicity.

23. Furthermore, by virtue of extensive sales and sales promotion activities

carried out by the petitioner, the earlier trade mark mentioned is
exclusively associated with the petitioner and the Petitioner alone and
has acquired an enviable reputation and goodwill. The said earlier
trade mark is a well-known trade mark in India and was a well-known
trade mark on the date of the impugned application.

24. The Petitioner wishes to raise an objection for the mark forming
subject matter of Application No. xxxxxx (hereinafter “impugned
mark”) inter alia in respect of all the goods for which the Applicant is
seeking registration under Class - xx.

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25. The impugned mark for which registration is being sought is

deceptively and confusingly similar to the Petitioner’s said trade mark
inasmuch as the earlier trade mark {trademark symbol} is contained in
its entirety in the impugned mark {respondent’s trademark symbol}. It
is highly likely that the impugned mark may be perceived as an
affiliate/ branch or a sister concern by the members of trade and public.
In any case, such adoption and/ or use of the impugned mark is likely
to cause confusion and deception amongst the members of trade and
public that the goods under the impugned mark originate from the
Petitioner or that the respondent is affiliated or connected with the
Petitioner, which is not the case. Also, such adoption and/ or use of the
impugned mark is likely to dilute the brand equity of the Petitioner’s
earlier trade mark.

26. The Respondent is attempting to register a trade mark which is of such

nature as to deceive the public and cause confusion. The registration of
the impugned mark is therefore liable to be refused registration under
the provisions of Section 9(2)(a) of the Trade Marks Act, 1999.

27. The impugned mark for which registration is sought by the Applicant
is deceptively and confusingly similar to the earlier trade mark of the
Petitioner. Not only is the impugned mark for which registration is
sought by the Applicant is identical to the Petitioner’s earlier mark
{trademark symbol}, the goods in respect of which registration is
sought by the Applicant are identical to the goods in respect of which
the earlier trade mark of the Petitioner is used. There exists a
likelihood of confusion on the part of the public which includes
likelihood of association with the earlier trade mark. The registration
of the impugned mark is accordingly liable to be refused under Section
11(1) of the Trade Marks Act, 1999.

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28. The Petitioner was shocked to learn that the Applicant has adopted a
mark which is identical to the petitioner’s earlier mark {trademark
symbol}, The impugned mark contains the term “{impugned term}”
which has become synonymous to the petitioner’s goods due to its
extensive use since the past four years. The application of the
impugned mark is presently objected and is at a stage of show cause
hearing.

29. It is submitted that the Petitioner is the prior owner and adopter of the
trademark {trademark symbol}. The presence of a trade mark which is
identical to the petitioner’s earlier trademark {trademark symbol} is a
cause of concern for the petitioner. Owing to the presence of the
impugned mark on the Register of Trade Marks, the rights acquired by
the petitioner in their trademark {trademark symbol} is bound to get
diluted which is not acceptable by the Petitioner at any cost.

30. Not only is the impugned mark for which registration is sought by the
Applicant is identical to the petitioner’s earlier mark {trademark
symbol} the goods in respect of which registration is sought by the
Applicant are identical to the goods in respect of which the earlier
trade mark of the Petitioner is used. There exists a likelihood of
confusion on the part of the public which includes likelihood of
association with the earlier trade mark. The registration of the
impugned mark is accordingly liable to be refused under Section 11(1)
of the Trade Marks Act, 1999.

31. The Application of the impugned mark is deceptively and confusingly

similar to the earlier trade mark mentioned above and the use of the
impugned mark would without due cause take unfair advantage of and
be detrimental to the distinctive character and repute of the earlier

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trade mark and is liable to be refused registration under Section 11(2)

of the Trade Marks Act, 1999.

32. The use of the impugned mark for which the Respondent is seeking
registration is liable to be prevented by virtue of the law of passing off
and is liable to be refused registration under Section 11(3) of the Trade
Marks Act, 1999.

33. The Petitioner, in its capacity as the owner of the earlier trade mark
does not wish to consent to the registration of the impugned mark and
the Respondent is therefore not entitled to rely upon Section 11(4) of
the Trade Marks Act, 1999.

34. The adoption of the impugned mark by the Applicant is not honest and
the Applicant cannot therefore claim to be the proprietor of the
impugned mark and registration is therefore liable to be refused under
Section 18(1) of the Trade Marks Act, 1999. The Applicant is not
entitled to claim registration under Section 12 either.

35. The Applicant has filed the present application claiming use of the
impugned mark since {date}, which is denied as alleged. Without
submitting appropriate proof of such use, the Application cannot be
allowed to proceed to registration. This is without prejudice to the
contentions that the application for the impugned mark is liable to be
refused despite such use, if any, since the application has been filed
with dishonest intention to ride upon the goodwill and fame of the
Petitioner, the impugned mark is liable to be refused registration. The
Applicant cannot, therefore, claim registration under Section 12.

36. The adoption and use, if any, of the impugned mark by the Applicant
being neither honest nor bona fide and the Applicant is therefore not

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entitled to claim registration under Section 11(10) of the Trade Marks

Act, 1999.

37. The Applicant is not the proprietor of the impugned mark and the
application is therefore contrary to the provisions of Section 18(1) of
the Trade Marks Act, 1999.

38. The registration of the impugned mark in the name of the Applicant
will be contrary to the provisions of Sections 9, 11 and 18 of the Trade
Marks Act, 1999.

39. In view of the grounds set above, the Petitioner prays that the
impugned Application to be refused registration.

40. The Petitioner also prays that the costs of the proceedings be awarded
to the Petitioner

PRAYER
It is, therefore, in the facts and circumstances of the present case, most
respectfully prayed that this Ld. Registrar may kindly be pleased to pass an
order to: -

a) Refuse the impugned mark application for registration under No.

xxxxxx in Class- xx.

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b) May pass any such other Order and further Order which this Ld.
Registrar may deem fit and proper under the facts and circumstances of
the present case.

c) Petitioner also desire hearing in the said matter.

Power of Attorney executed in favor of the Counsels is enclosed.

SIGNATURES

Name of Advocates for the petitioners

Contact Details

Place:
Dated this day of {month}, {year}

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