Date: 05/07/2021

To,
The Registrar of Trademark,
Trademark Registry,
Delhi

Sub : Reply to Examination Report

Application No. : 4187753
Trademark : JSA Couture Look Young Feel Young
Class : 25
Applicant : Janet Serrao Agarwal

Sir,

In the above matter we have received examination report from official website of the registrar of
Trade Mark, In Paragraph No.1 of the Report, it is indicated that the trademark “AVNI
FASHION” (the “said mark”) is same/ similar to the trade mark(s) which are already on record of
the Registry for the same or similar goods/ services submitted for registration and therefore is open
to objections under Section 11 of the Trademark Act, 1999. That the objections imposed by the learned
examiner are not applicable against the applied trade mark upon the following grounds:-

1. That the Mark applied for registration by the applicant is a unique and distinctive mark. The
trade mark “AVNI FASHION” has been depicted in a highly distinctive manner which is
capable of distinguishing the goods of the applicant from those others. That the applicant’s
trademark is represented in a special and particular manner and is prima-facie distinctive.

2. That the applicant intends to engage in the business of (Clothing) Ethnic Wear, Un-stiched
Dress Material, Saree, Kurtis, Gowns, Chunnis & Dupattas, Western Wear, Leggings, Jeans &
Jeggings, Tops, T-Shirts & Shirts under the trademark “AVNI FASHION”. Further it is
submitted that the said trademark has been honestly and bonafidely adopted which falls well
within the definition of trademark as defined under Section 2 (1) (zb) of the Act.

3. That with respect to cited mark vide Application No. 1763050 it is submitted that the Renewal of
the cited mark is overdue. Thus, the learned Registrar of Trademark is requested to waive off the
objection raised under Section 11 of the Act.
4. That further for the sake of arguments it is submitted that in International Foodstuffs Co
LLC v. Parle Products Private Limited and Anr., held that there is no law that says that a
solitary test of pronunciation will suffice to defeat all else that weighs against or the visual,
structural similarity, the attendant circumstances, lack of meaningful reputation or goodwill, the
want of demonstration of deceit or misrepresentation or differences in color, trade dress, the
goods and their pricing should be ignored only because of phonetic similarity. Thus, the court
observed that since phonetic similarity was the only basis of this action a strong prima-facie case
has not been made out and there are not sufficient grounds to warrant an injunction in favor of
the Plaintiff.

5. That further it is well settled principal of the Trademark Law that the marks when compared, are
to be compared as a whole and cannot simply be dissected for raising objections. In E.
Griffiths Huges Ltd. Vs. Vick Chemicals Co. AIR 1959 CAL 654 to 659, it was held that the
true test is what is the totality of the impression that the mark produces. Therefore the
totality of the impression formed by the mark in the minds of the relevant public is adaptive
of distinguishing the services from the mark itself.

6. In Schering Corporation and Ors. Vs. Alkem Laboratories Ltd., (01.12.2009 - DELHC)-
2010(42) PTC772 (Del), the Delhi High Court held that, trademarks cannot be deciphered or
considered separately i.e. by fragmenting them but must be taken as a whole.

7. In Deccan Bottling & Distilling Industries Pvt. Ltd. through its GMD David vs. Brihan
Maharashtra Sugar Syndicate [MIPR 2008 (3) 0286], the Bombay High Court has laid down
that “marks must be compared as a whole to ascertain as to whether in totality the mark objected
to is likely to cause deception or confusion in the minds of the persons accustomed to the
existing trademark”.

8. In S.M. Dychem V. Cadbury (India) Pvt Ltd. (2000) 5 SCC 5353, it was held by the Hon’ble
Supreme Court that: “Mark is to be considered as a whole and the test should be whether the
totality of impression given both orally and visually is such that it is likely to cause confusion or
deception.” The Hon’ble Supreme Court has further added that “Where common marks are
included in the rival trademarks, more regard is to be paid to the parts not common and the
proper course is to look at the mark as a whole”.

9. The Hon'ble Supreme Court in the case of Kaviraj Pandit Durga Dutt Sharma v. Navaratna
Pharmaceutical Laboratories, AIR 1965 SC 980 has held that the identification of the essential
feature of a trademark is in essence a question of
 fact dependent upon the evidence laid in the first instance before the trial court as regards
the usage of trade.

10. It is submitted based on the afore-mentioned principles of law that the Applicant’s mark appear
to be entirely distinctive and is capable of distinguishing the goods of the applicant from that
of the others. The Applicant’s mark, when taken as a whole, is capable of creating a unique
impression in the minds of the public thereby creating no confusion or deception amongst the
general public.

That, in view of the foregoing facts, reasons and/or circumstances, it is therefore prayed before the
Registrar of trade mark to wave off the objection under Section 11 of the Act and furthermore
aforesaid application may please be accepted to proceed further for registration, & objection raised
in the examination report may please be removed, all in the interest of justice and if in case, the
learned registrar of trademark is not satisfied with this reply, then, kindly fix show cause hearing
and provide opportunity for personal hearing in this matter in the interest of natural justice.

Thanking you