FORM TM-O

THE TRADE MARKS ACT, 1999

Notice of Opposition / Application for Rectification of the Register by cancelling or varying
registration of a trade mark / Counter statement / Request to refuse or invalidate a trade
mark under Section 25(a),(b) of Geographical Indication of Goods (Regulation and
Protection)
under the Trade Marks Act
Temp Number : 10460180
REQUEST NOTICE OF OPPOSITION
FEE 2700
APPLICANT OR REGISTERED PROPRIETOR/OPPONENT/THIRD PARTY MAKING THE
APPLICATNION/REQUEST
Opponent Name LULU INTERNATIONAL SHOPPING MALLS PRIVATE LIMITED.
Trading As
Address 34/1000, N. H. 47, EDAPPALLY, KOCHI-682024, KERALA, INDIA.
Service Address NISSAN BUSINESS SOLUTIONS PVT LIMITED, NISSAN BUSINESS
CENTRE, ERAYILKADAVU PO, KOTTAYAM-686001, KERALA, INDIA
Mobile No 8086667322
Email address office@nissanbizsolutions.com
AGENT OF THE APPLICANT OR REGISTERED PROPRIETOR/OPPONMENT/THIRD PARTY
AS THE CASE MAY BE(if any)
Agent Name VISHNUPRIYA BHUVANACHANDRAN
Address NISSAN BUSINESS SOLUTIONS PVT LTD, NISSAN BUSINESS CENTRE,
ERAYIL KADAVU, KOTTAYAM- 686001, KERALA.
Mobile No 8086667322
Nature of the Advocate
Agent
Registration No
REQUEST OPPOSITION/APPLICATION IN THE MATTER OF
DETAILS OF 4358131
APPLICATION
NUMBER
CLASS 43
REQUEST NOTICE OF OPPOSITION
GROUNDS OF Grounds of opposition are attached separately
OPPOSITION
Date 09-04-2024 01:03 PM
Digitally Signed By
VISHNUPRIYA BHUVANACHANDRAN

for VISHNUPRIYA BHUVANACHANDRAN

 FORM TM-O

THE TRADE MARKS ACT 1999

Fee: Rs.2700 Attorney Code No: 31836

NOTICE OF OPPOSITION TO APPLICATION FOR

REGISTRATION OF A TRADEMARK OR A

COLLECTIVE MARK OR A CERTIFICATION MARK

[Sections 21(1), 64, 66, 73 Rule 47(1), 131(1)

and 138(1)]

IN THE MATTER OF Trademark

“AMARA HOTELS & RESORTS”

bearing Application No. 4358131 in

Class 43 in the name of AMARA

HOTELS & RESORTS PVT. LTD. of

the address 3D 45 Ground Floor, BP,

NIT, Faridabad (Haryana), 121001

AND

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 IN THE MATTER OF Opposition

by M/s. LULU INTERNATIONAL

SHOPPING MALLS PRIVATE

LIMITED of the address 34/1000, N. H.

47, EDAPPALLY, KOCHI-682024,

KERALA, INDIA.

We, M/s. LULU INTERNATIONAL SHOPPING MALLS PRIVATE LIMITED

a Company incorporated under Companies Act, 1956 and having its Registered

Office at the address 34/1000, NH 47, EDAPPALLY, KOCHI-682 024, Kerala,

India, through our Attorney/ Agent ADV. VISHNUPRIYA

BHUVANACHANDRAN herein give notice of our intention to oppose the

registration of Application No. 4358131 in Class 43 for the trade mark “AMARA

HOTELS & RESORTS” (hereinafter the “impugned mark”) in the name of

AMARA HOTELS & RESORTS PVT. LTD advertised in Trade Marks Journal

No. 2134 dated 11th DECEMBER , 2023 made available to the Office of the Trade

Mark Registry.

BACKGROUND OF THE OPPONENT:

1. The expressions “M/s. LULU INTERNATIONAL SHOPPING MALLS

PRIVATE LIMITED (the Opponent)”, shall at all times mean and include the

Opponent and their founders, employees, parent companies, sister concerns,

subsidiaries, affiliates, group companies and entities, licensees, joint ventures,

associates and any and all predecessors in business, title and interest and any

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 future companies or entities forming part of the multi-national conglomerate

LULU GROUP INTERNATIONAL which operates businesses across the

world as a single economic entity commonly having the benefits of the LuLu

brand, trademark and corporate identity.

2. LULU GROUP INTERNATIONAL, of which the Opponent is part of, is highly

diversified conglomerate with successful business entities and is globally

acknowledged and celebrated with excellent and good reputation and goodwill

for being one of the largest retail businesses in the whole world. Lulu Group

International consists of an extensive and expansive network of various

companies, subsidiaries, affiliates, group companies, entities, licensees, joint

ventures, associates etc. for operating businesses across the world as a single

economic entity commonly having the benefits of the Lulu brand and trademark

and corporate identity. As part of its growth, Lulu Group International has

diversified into various sectors such as travel, hospitality, education, imports,

exports, manufacturing, trading, shipping, information technology and financial

services related to foreign exchange, global money transfer, salary administration

and co-branded credit cards.

3. LULU GROUP INTERNATIONAL is headquartered in Abu Dhabi, the capital of

the United Arab Emirates and it is a world- wide and globally renowned purveyor

of an international business portfolio that ranges from hypermarket operations to

shopping mall development, manufacturing and trading of goods, hospitality

assets, and real estate. LuLu Group mainly operates in more than 25 countries

located across the Middle East, Asia, US, and Europe. Worldwide operations

cover business divisions in retail segment for the popular hypermarket brand,

shopping mall destinations, food processing plants, wholesale distribution,

hospitality, and real estate development. Retail stores are present in the UAE,

India, Saudi Arabia, Bahrain, Kuwait, Oman, Egypt, Malaysia, and Indonesia;

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 with distribution companies located in India, US, Europe, Middle East countries,

and the Philippines and more trading offices are expected to rise in Turkey and

Vietnam. Lulu group is one of the major operators of Hyper markets and

shopping malls in the Middle East and North Africa, Far East and India with more

than 70,000 (Seventy Thousand) multi-cultural employees belonging to more than

37(thirty-seven) different nationalities and serving more than 25,00,000 (Twenty

Lac) customers on daily basis. Lulu Group currently operates 260 (Two Hundred

and Sixty Only) Hypermarkets and shopping malls extended over India, UAE,

Oman, Qatar, Kuwait, Bahrain, Egypt, Saudi Arabia, Indonesia and Malaysia thus

making it one of the top players in the organized retail sector. Further, Lulu holds

strong presence in China, Thailand, Vietnam, Philippines, Singapore, Turkey,

Spain, Kenya, Sri Lanka, South Africa, United Kingdom and United States with

activities including food processing and sourcing centers. LuLu Group

encompasses business from all over the world on supplying food products to

hotels, catering, shipping and manufacturing in Middle East and other places.

4. The Group which had made its beginning in the year 1994 has grown into one of

the largest organized retail businesses spread across the world with a significant

share of the retail businesses in the Middle East, Africa, India and South East

Asian countries dealing in the organized retail sector through various

supermarkets, hypermarkets, departmental stores and shopping malls with

annual Group revenue of more than $ 7.4 Billion (US Dollars Seven Billion Four

Hundred Million). Lulu Group International has extensive use of the brand name

and trademark Lulu which also forms the leading and essential feature of the

corporate names of several companies belonging to Lulu Group International.

The reputation of LuLu Group International is based on the success of Padma

Shri Yusuffali MA. Shri Yusuffali, the Managing Director, founder and Chairman

of LuLu group was born in Thrissur District. Under his dynamic leadership, the

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 Group has successfully evolved through the supermarket and hypermarket

transition to high profile shopping malls. Lulu Group has been ranked third in

the prestigious “Forbes Top 100 Companies” making an impact in the Arab

world. Lulu Hypermarket has also been ranked by Deloitte as one of the ten

fastest-growing retailers in the world.

5. The Opponent’s trademarks and brand names are widely used across various

business sectors due to the diversified nature of the Group’s business operations.

Opponent’s organized retail business is so vast and extensive that various Lulu

supermarkets, hypermarkets, department stores and malls, sell and provide

virtually every type of consumer products or services. Additionally, the

Opponent also has a strong presence in the fast growing and highly competitive

online retailing industry in India through their online store i.e.,

www.luluhypermarket.in. The Opponent submits that they have invested

significant sums of money, time and effort into creating a seamless online

shopping experience under the name and style of Lulu Hyper Market.

Furthermore, the said online store is universally accessible by consumers all

across the country and therefore has contributed significantly to increasing the

exposure, knowledge, goodwill and reputation of their trademark “Lulu” across

the length and breadth of the Country.

6. The Opponent is presently investing significant sums in not only setting up their

various businesses and ventures in India but also in marketing and promoting

the existing business in the country. Furthermore, the Opponent is generating

significant revenues from the sales of goods and provision of services under the

mark Lulu in India. The success of LuLu Hypermarkets engendered goodwill,

custom and reputation in the brand and trade name “LuLu” not only in the

U.A.E and Middle East but also in India and more particularly, the State of

Kerala. The awareness, reputation, goodwill and custom of the trademark and

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 brand name “LuLu” in India existed since 1995 in respect of retail and financial

services as a result of which the brand has garnered cross-border reputation. The

Lulu Group has undertaken various philanthropic and charitable activities in

India. The Lulu Group International is the largest employer of Indians outside of

India and since the Group has had a long presence in India, the brand name and

trademark Lulu has acquired an extensive and unparalleled cross border

awareness, reputation and goodwill in India and abroad.

7. The Lulu Group International has had a presence in almost India through their

various Group companies incorporated and existing in India for decades. The

Opponent has its roots in India and is being headed by an Indian promoter. Since

Middle East has a very high percentage of expatriates from India and from the

State of Kerala in particular name, “LuLu” is well known connecting the name to

the Opponent and is associated with general public.

8. The Opponent has various business concerns around the world and has a strong

presence in the global market. Having made a mark in the international market,

Opponent after entering India long back, had commenced its venture in Kerala.

In the year 2013, the Group established Lulu Mall at Kochi which houses

specialist Lulu stores such as Lulu Hypermarket, Lulu Fashion Store, Lulu

Connect and Lulu Celebrate, and is one of the largest malls in the State of Kerala

and the whole of India. Within the mall’s expansive campus at Edappally,

Cochin, Kerala, is the 5-star Marriot Hotel- a magnificent 300 room hotel having a

height of 84 meters with helipad that caters to the unique accommodation needs

of visitors and tourists. After the stupendous success of the Lulu Mall in Kochi,

Lulu Mall, Thiruvananthapuram was inaugurated in December 2021. The

Opponent’s largest mall in India, Lulu Mall, Lucknow was inaugurated in the

month of June 2022. Lulu Mall Hyderabad was inaugurated on 27th September

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 2023. Lulu Mall, Calicut-Kerala and Lulu Mall, Kottayam-Kerala are the

upcoming projects of the Opponent in India.

9. Only after the launch of Opponent’s Lulu Mall in Kochi, the population in Kerala

got the Opportunity to have World class experience in Kerala and thus Lulu Mall

became Kerala’s most preferred shopping, food and entertainment destination.

Lulu Mall houses specialist Lulu stores such as Lulu Hypermarket, Lulu Fashion

Store, Lulu Connect, Lulu Celebrate and Lulu Sparky’s. Since its inception in

2013, Lulu mall has been visited by more than 150 million people to avail the

services and products offered by the Mall. Now the population of Kerala,

Karnataka, Uttar Pradesh and Telangana has the opportunity to experience

world class shopping scenario in their home land.

10. The Lulu Fashion Week is one of the signature events conducted by the

Opponent, which kick-started on April 12, 2017, at Marriott Kochi. The Lulu

Fashion Week brought more than 30 popular fashion brands on a common

platform to showcase Spring Summer 2017 trends and collections for India.

Another peculiarity of the event is that, it is the one of the kind fashion weeks,

which is open to public in a public venue. The Lulu Fashion Forum is the ideal

and only platform in Kerala which offers the fashion and design students an

opportunity to interact and learn with the top management and sought-after

industry professionals.

11. As part of the Lulu Fashion Week, the Opponent’s Lulu Fashion Store launched a

premium line up of designer Kurtis under the brand name “AMARA Classics &

Trends ”. The line is specially created for the new generation of Indian

women, exquisitely combining traditional designs with contemporary fashion.

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 “AMARA Classics & Trends” has been designed keeping in mind women who

want good quality designer wear at affordable prices. It is a name devised and

adopted by Opponent due to its distinctiveness, convenience and uniqueness.

The name “AMARA Classics & Trends” is identified with Opponent’s trade

name “Lulu” by the general public by default because of the Opponent’s

extensive publicity and exclusive usage.

12. From the aforesaid, it is strikingly obvious that the Opponent’s trademark, brand

name and corporate identity “Lulu” and its other trade names /trademarks such

as “Amara Classics and Trends” are extremely valuable assets belonging to the

Opponent and over which the Opponent has exclusive statutory and common

law rights. In order to protect this extremely important commercial asset, the

Opponent has secured various national and international registrations for

various marks comprising the mark “Lulu” as their leading and essential feature.

The Opponent has filed more than 430 Trademark Applications for the mark

“Lulu” and its allied marks in several classes. In order to protect their right on

their products and various other marks/labels, Opponent has also various

trademark applications and registrations for “AMARA Classics & Trends” with

the Trademark Registry which are provided as under:

Sl. No. Application Trade Mark Class Status

No.

1 3616760 22 Registered

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 2 3616761 24 Registered

3 3616762 25 Registered

4 3616763 35 Registered

5 3616759 18 Under

Process

6 3616758 14 Under

Process

13. The artwork involved in the said trademark/label is original artistic works within

the meaning of Indian Copyright Act, 1957 and the Opponent is the exclusive,

absolute and dedicated owner and proprietor thereof which is a well-recognized

and admitted fact. The Opponent has the exclusive rights to deal with the said

trademark and has been so dealing with them in the course of trade in relation to

its said goods and business, inter-alia, within the meaning of Section 14 of the

Copyright Act 1957. The said trademark of the Opponent is enforceable within

the ambit of the Copyright Act 1957 as well as by virtue of India’s membership to

the Berne Convention and the Universal Copyright Convention. The said

trademark has been in continuous use for many years and hence it deserves the

classification as incontestable and immune from any legal challenge from any

person.

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14. The Opponent had already accrued right in Trade Mark “AMARA Classics &

Trends ” by use of it in commerce. The Applicant in the instant case

attempts to encroach upon the Opponent’s Mark “Amara Classics and Trends

”. The Applicant is adopting confusingly similar mark which

resembles Opponent’s Trademark. The “likelihood of confusion” is the

foundation and the very essence of trade mark law of passing off and the trade

mark adopted by the Applicant is phonetically, visually and structurally similar,

entirely identical and confusing with that of the Opponent. A bare look at the

Applicant’s use of the trade mark will create an understanding in the mind of

any person that, it is the trade mark of the Opponent and the goods/services

rendered therein are that of the Opponent.

15. The Applicant is adopting unfair and unethical competition. Opponent has

achieved broad reputation and is enjoying valid protection from all the upstart

imitators including the Applicant who tries to capitalize Opponent’s fame and

distinctiveness by associating themselves with Lulu. The confusing similarity of

the Applicant’s mark with the famous mark “Amara Classics and Trends”

“ ” of the Opponent, when used in conjunction with the identical or

similar products and services by the Applicant is a good cause for this Opponent

to defend its cause since the Applicant’s mark is deceptively mis-descriptive of

the goods and services of the Opponent. Since the Opponent has made excellent

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 achievements and business gain through its well-recognized, well-known mark

“Amara Classics and Trends”, the Applicant knowing fully well about the vast

use and the thriving business of the Opponent attempted/ is attempting to adopt

more or less same mark of the Opponent for the sole aim of exploiting the

situation.

16. As a result of the Opponent’s extensive commercial, social and philanthropic

activities, the Opponent has also received unparalleled news and media attention

and coverage. Opponent being a world famous, wide recognized Firm and their

most popular mark and corporate identity “Lulu” has already acquired a distinct

character and is “Well Known” to the public as declared by the Registrar of

Trade Marks, Mumbai. The Opponent’s mark “LuLu” meets all the criteria of a

well-known mark under the Trade Marks Act, 1999 and at common law and is as

such entitled to all the benefits that flow there from. The Well – known marks are

entitled to special protection under the Trademark laws. The Opponent’s mark

“Lulu” has also garnered trans-border reputation and is eligible to be protected

as a ‘well-known trademark’ under section 2(1) (zg) of the Trademarks Act, 1999.

The Honorable Controller of Trademarks have declared the trademark ‘LULU’ as

well-known under Rule 124 of Trademark Rules, 2017 on 08.05.2019 and

published the Order in the Trade Mark Journal No.1920 dated on 23.09.2019 and

included the mark as serial number 91 in the list of well-known trademarks. In

addition to the well-known trademark Lulu and in the ordinary course of business, the

Opponent has adopted and used the trademark “Amara Classics and Trends

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 ”. The Opponent is the prior user and prior Applicant of the trademark

“Amara Classics and Trends ”.

17. The mark “Amara Classics and Trends” is recognized as one of the reputed

brand names of the Opponent by the relevant section of the public inter alia, by

virtue of the promotion of the trademark, by way of advertising and publicity in

various ways. The Opponent has spent huge sum of money on the mark “Amara

Classics and Trends ”, and thus the mark acquired a distinctive

recognition in the minds of public. Furthermore, by virtue of extensive sales and

sales promotion activities carried out by the Opponent nation-wide, the

Opponent’s trademark is exclusively associated with the Opponent and the

Opponent alone has acquired an enviable reputation and goodwill. It is

respectfully submitted that by virtue of the above use of the trademark “Amara

Classics and Trends ” by the Opponent, the Opponent has

insurmountable common law rights in its said trademark and any variation

thereof. The Opponent’s trademark is well established and hence it is the most

valuable asset owned by the Opponent. Therefore, the Opponent is entitled to

act against anyone who encroaches upon their trademarks. The Opponent’s

trademark is a strong trademark because it has achieved broad reputation and

broad protection from upstart imitators who try to capitalize their fame and

12
 distinctiveness by associating themselves with the Opponent’s said famous trade

mark. The Opponent’s mark has been registered on the Trade Mark Registry

long back and has been in continuous use for many years and there is no adverse

decision involving the Opponent’s rights to the mark. The Opponent is the first

and long user with absolute registered proprietary ownership right in respect of

the mark.

THE GROUNDS OF OPPOSITION ARE AS FOLLOWS

18. The Applicant AMARA HOTELS & RESORTS PVT. LTD of the address 3D 45

Ground Floor, BP, NIT, Faridabad (Haryana), 121001, has applied for the

trademark “AMARA HOTELS & RESORTS” with Application No. 4358131 in

Class 43 on 25.11.2019 (herein after referred to as “the impugned mark”) with

malafide intention. This mark is identical, deceptively and confusingly similar to

the Opponent’s trademark “Amara Classics and Trends ”. Therefore,

the registration of the impugned mark is likely to cause confusion and association

to the Opponent’s mark amongst the public and members of the trade. Thus, the

sole purpose of the Applicant is to trade upon the reputation and goodwill

attached to the Opponent and its reputed trademark “AMARA”.

19. The Opponent is the prior registered proprietor of the trademark “Amara Classics

and Trends” with logo “ ” in India. The Opponent has filed various

applications in various classes for aforesaid mark. The Opponent has applied for

13
 the mark “Amara Classics and Trends” in different classes since 2017 and has

been using the mark ever since its adoption. The Applicant’s impugned mark is in

such a way that the people would be deceived into believe that the impugned

mark has some nexus or association with the Opponent. The Applicant’s adoption

of a mark so nearly resembling the Opponent’s well-known mark clearly proves

their dishonest intention to benefit from the goodwill and reputation of the

Opponent’s well-known mark. Therefore, the registration of the impugned mark

is likely to cause confusion and association to the Opponent’s mark amongst the

public. Thus, the sole purpose of the Applicant is to trade upon the reputation and

goodwill attached to the Opponent and its reputed trademark “Amara Classics

and Trends”.

20. The Opponent has been using the mark “AMARA Classics &Trends” and logo “

”since long in relation to the above said goods and business in the

course of trade. The mark “AMARA Classics & Trends ” was originally

adopted in good faith by the Opponent and has developed insurmountable

reputation and goodwill in the market and would immediately be connected to

the Opponent’s Products. The above- mentioned trademark of the Opponent is a

widely known trademark and is recognized in the relevant section of the public

inter alia, by virtue of the promotion of the trademark, by way of advertising and

publicity in various ways. The Opponent’s marks have been widely advertised by

the Opponent through their website which is accessible to the customers.

Furthermore, by virtue of extensive sales and sales promotion activities carried

out by the Opponent nation-wide, the Opponent’s trademark is exclusively and

intrinsically associated with the Opponent and the Opponent alone has acquired

14
 an enviable reputation and goodwill. The Opponent’s trademark is well

established and hence it is the most valuable asset owned by the Opponent.

Therefore, the Opponent is entitled to act against anyone who encroaches upon

their trademarks. The Opponent’s trademark is a strong trademark because it has

achieved broad reputation and broad protection from upstart imitators who try to

capitalize their fame and distinctiveness by associating themselves with the

Opponent’s said famous trade mark.

21. The mark “AMARA Classics & Trends” has already been registered in

various classes under the Trademark Act. Hence, the Opponent is the first

registered and long user with absolute registered proprietary ownership right in

respect of the mark, which is a universally accepted and well-established fact.

Trademark law allows companies that spend time and money developing their

market shares to reap the benefits of that effort. This Opponent being the

commercial user of the mark expends enormous amounts of money in establishing

and promoting the trademark and hence entails protective right under law.

22. The Opponent’s well-known trademark “Amara Classics and Trends”

combined with the Opponent’s honest and bona fide adoption; first registered

user across various products and services; first and prior advertisement; and first

and prior registration makes it imperative that the Opponent’s efforts and

investment are protected against any attempt to imitate, infringe or pass off the

Opponent’s valuable and unparalleled goodwill in the aforesaid trademark

“Amara Classics and Trends”. The mark is distinctive since the goods and

services under the brand “Amara Classics and Trends” have established very

15
 well in the market through repeated advertisements. Furthermore, the extensive

use of the Opponent’s trademark across various classes of goods and services

combined with its well-known nature makes it inevitable that any use of the

trademark/trade name / part thereof or any other identical or deceptively similar

mark by anyone other than the Opponent will cause confusion and deception

amongst members of the trade and the general public. The Opponent will also

suffer enormous and irreparable damage to their integrity, esteem, reputation and

goodwill by use of any identical or deceptively similar trade name or trademark

by any person other than the Opponent will also act as an illegitimate springboard

and result in unjust enrichment at the cost of the Opponent.

23. The adoption by the Applicant of the impugned mark “AMARA HOTELS &

RESORTS” is identical and similar to the prior registered trademark of the

Opponent, “Amara Classics and Trends ” and quite misleading and

confusing with the mark of the Opponent. Thus, there exists a likelihood of

confusion and deception on the part of the public including presumption that may

be drawn about the nexus or trade connection between the business of the

Opponent and the Applicant. Moreover, the usage of the impugned mark

“AMARA HOTELS & RESORTS” by the Applicant is intended to mislead the

general public and create a negative opinion about the Opponent’s famous mark

“Amara Classics and Trends”. Any form of use of the impugned mark by the

Applicant would amount to fraudulent conduct and is likely to earn unlawful and

easy profits at the cost of tarnishing the goodwill and reputation that vest in the

Opponent’s earlier registered mark. The adoption and usage of the impugned

mark being fraudulent and dishonest, registration thereof would be a negation of

the mandate enshrined in the Preamble of the Act which reads as follows:

16
 “An Act to amend and consolidate the law relating to the trademarks, to

provide for registration and better protection of the trademarks for goods

and services and for the prevention of the use of fraudulent marks”.

24. The impugned mark is confusingly/deceptively similar to the Opponent’s

trademark “Amara Classics and Trends”. The impugned mark is also,

phonetically and visually similar to the Opponent’s trademark. It is submitted

that the Applicant has clearly adopted the impugned mark solely with the

intention of deriving commercial benefit from the Opponent’s goodwill and

popularity of its trademark “AMARA CLASSICS AND TRENDS”.

25. The Opponent is a prior registered applicant of the trademark “Amara Classics

and Trends”, which is evident from the records of the Trademarks Registry. The

Applicant is seeking registration for the impugned mark “AMARA HOTELS &

RESORTS” which is deceptively and phonetically similar to the Opponent’s

trademark on all parameters of comparison. The phonetic and deceptive similarity

between the impugned mark and the Opponent’s mark is such that a person may

easily get deceived and confused between the products under the two marks.

Thus, there exist grave chances of confusion and/or deception in the minds of the

consumers and the members of the trade due to co-existence of rival marks.

Hence, the Applicant’s mark is devoid of any distinctive character, that is to say,

not capable of distinguishing the goods/service of one person from those of

another person, especially those of the Opponent’s under its mark “Amara

Classics and Trends” and therefore, the impugned mark “AMARA

HOTELS AND RESORTS” should not be allowed to proceed to registration

under the provisions of Section 9(1) (a) of the of the Trademarks Act. The

17
 impugned mark is neither capable of distinguishing nor adapted to distinguish

the Applicant’s goods/services from the goods/services of any other person

including the Opponent herein. Further, the Applicant’s impugned mark is

applied subsequent to the Opponent’s; hence the Applicant cannot show that the

impugned trademark has attained secondary meaning or acquired distinctiveness

over use. Thus, the impugned mark does not satisfy any of the conditions of

Section 9(1) (a) of the Trademarks Act, 1999.

26. It is submitted that the trademark “Amara” is used to identify the Opponent’s

mark. The Applicant is attempting to register a trademark which is having no

difference with the Opponent’s mark. The impugned mark “AMARA HOTELS

AND RESORTS”, is identical to Opponent’s Trademark “Amara Classics and

Trends” .The impugned mark resembles the Opponent’s mark and is

also identical to the Opponent’s mark, which deceives 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 Trademarks

Act,1999.

27. The impugned mark for which registration is sought by the Applicant is

identical and deceptively, phonetically, visually similar to the earlier

trademark of the Opponent. There exists a probable chance of confusion on

the part of the public which includes likelihood of association with the earlier

registered trademark. When public is confused into thinking that there is a

commercial connection between the suppliers of goods or services supplied

under the Opponent’s earlier registered trademark and the Applicant’s

impugned mark, then there is an anticipation of prohibition. The registration

18
 of the impugned mark is accordingly liable to be refused under Section 11(1)

of the Trademarks Act,1999.

28. The Opponent’s “Amara Classics and Trends” which offers an exquisite

collection of designer clothing, is being misappropriated by the Applicant by the

adoption of an impugned mark which is identical to Opponent’s prior registered

mark. If the Applicant is allowed to register or use the impugned mark in relation

to its alleged goods, services or business, the same will inevitably lead to dilution

and erosion of the distinctiveness, uniqueness and exclusivity associated with the

earlier registered Opponent’s marks particularly by reducing their capacity to

identify and distinguish the goods and services of the Opponent as originating

from a particular source. In other words, the unauthorized and indiscriminate use,

if any, by the Applicant of the impugned identical mark is bound to result in the

whittling away of the selling power, distinctive quality and value attached to the

established, earlier registered mark of the Opponent. It is noteworthy that the

earlier applied trademark is entitled to the widest possible protection under law.

The adoption and usage, of the impugned mark “AMARA HOTELS &

RESORTS” by the Applicant is without due cause and would take unfair

advantage of, and is detrimental to, the distinctive character and repute of the

Opponent’s trademark. It is therefore submitted that the impugned mark ought to

be refused registration under Section 11(2) of the Act.

29. The adoption and usage of the impugned mark “AMARA HOTELS AND

RESORTS” by the Applicant, which is identical to the Opponent’s earlier

registered trade mark is an act of misrepresentation which is likely to induce an

injurious association between the goods/services of the Applicant and those of the

Opponent, in the minds of the consumers and would harm the interest of the

Opponent. The consumers and general public are bound to associate the goods

19
 under the impugned application with the Opponent and are ought to be misled

into believing that there is some trade connection/approval/license from the

Opponent to the Applicant. Since the competing trademarks are identical, the

consumers and public at large are bound to be misled into availing the Applicant’s

alleged goods/services, if any, under the impugned mark believing them to be

originating from the Opponent, which is not actually the case, thus causing

misrepresentation and acts of passing off. It is evident that the sole intention of the

Applicant is to pass off its goods/services as those of the Opponent and to ride

upon the reputation that subsists in its reputed trademark “Amara Classics and

Trends”. The same will cause irreparable harm and damage to the goodwill and

reputation that exists in the trademark of the Opponent, and to its business under

the said trademark. The adoption and usage of the impugned mark by the

Applicant, is therefore unlawful and disentitled to protection in a court of law.

Therefore, the Application is liable to be rejected under Section 11(3)(a) of the Act.

30. The Opponent, in its capacity as the proprietor of the registered trademark

does not wish to consent to the registration of the impugned trademark and

the Applicant is therefore not at all legally entitled to rely upon Section 11(4)

of the Trademarks Act,1999.

31. The adoption and usage of an identical impugned mark “AMARA HOTELS &

RESORTS” is unlawful and cannot be considered bona fide or legitimate. There is

no plausible justification or due cause whatsoever, for adoption and use of the

impugned mark which is identical to the Opponent’s earlier adopted mark

“Amara Classics and Trends”. The subsequent adoption and usage of the

impugned trademark by the Applicant is mala fide, without justification, unfair

and solely motivated to mislead consumers about a nexus, trade connection or

association between goods and business of the Applicant with those of the

Opponent. Such adoption and usage of the impugned mark is engineered to trade

20
 upon the goodwill and reputation that vest in the Opponent’s trademark. The

Applicant has dishonestly adopted the identical impugned mark, as that of the

Opponent, to seek undue advantage, resulting in unlawful business and

commercial gains to the Applicant. The adoption and usage of the impugned

mark by the Applicant not only constitutes acts of misrepresentation, but also

misappropriation of the goodwill and reputation that vest with the Opponent’s

mark. It is a brazen attempt by the Applicant to derive benefits from the said

goodwill and induce the consumers to identify their services and business with

the brand “Amara Classics and Trends” of the Opponent. Thus, the much

subsequent adoption and usage of the identical impugned mark by the Applicant

is bad in law. In view of the above, the Learned Registrar is requested to kindly

refuse the impugned application, while exercising his discretion within the

provisions of Section 11(10) of the Act.

32. Thus, it is evident that the Applicant has dishonestly, illegally, fraudulently,

unethically and unjustifiably adopted and attempted to register and use the

impugned mark to mislead general public without any bona fide intention.

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 therefore the application for registration under Section 18(1) of the

Trademarks Act, 1999 is liable to be refused. The Applicant is not entitled to

claim registration under Section 12 either.

33. The Applicant has filed the application on 25.11.2019 whereas the Opponent’s

mark was applied on 21.08.2017. Thus, the Applicant’s use and registration of the

impugned mark is likely to cause hardship and inconvenience to the Opponent’s

use of the registered mark. Further, Opponent state that no prejudice or hardship

will be caused to the Applicant if registration of the impugned trademark is

21
 refused or if Applicant withdraws the application. If the Applicant’s impugned

trademark is not refused by Learned Registrar, grave and irreparable loss will

be caused to Opponent’s goodwill and business, which cannot be

compensated in any terms. The Applicant cannot tarnish or blur the famous

and well reputed and recognized mark of the Opponent. The Applicant’s

adoption of the impugned Trade Mark will harm the hard-earned goodwill,

image and reputation of Opponent’s famous mark. It is a settled position that

the extent to which a particular trademark has been adopted to distinguish by

being used by a particular person would normally depend up on the extent

relating to all the goods manufactured or promoted by them and not

necessarily goods in one particular class.

34. It is submitted that the Applicant is trying to register the deceptively similar

mark of the Opponent’s mark, which is likely to deceive and mislead the

customers and public at large. The Applicant is intending to take undue and

unfair advantage in choosing and picking up Opponent’s well accepted,

established acknowledged and popularized mark “Amara Classics and

Trends” amongst public at large. Therefore, the Applicant’s use of the

impugned mark is passing off the Opponent’s trademarks. Hence the

Applicant’s impugned mark shall not be allowed to be registered. In this

scenario, as the prior registered proprietor of the trademark “Amara Classics

and Trends”, the Opponent is compelled to file this opposition against the

Applicant in order to maintain the immaculacy of Register under the

provisions of the Trade Marks Act, 1999. Hence, the Registrar may exercise his

discretionary powers in favour of the Opponent herein and render the

application for the impugned mark to be refused.

22
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ceoqo *Taxrnare c\ 766552

6 THE TRADE MARKS ACT, l9g9

FORM OF AUTHORISATION OF AGENT
E (SECTION I45I RTJLE 2I )

LULU INTERNA'IIONAL SHOpptNG MALLS PRMTE LIMI.I,ED, an

\e.
Ildian company incorporarcd under the Companies Act. 1956. whosc registered
office address is 34/1000, NH 47. EDAppALLy. KOCHI -682 02,1 herebv
li_
ari'thorise Ms. VISHNUPRTYA BHUVANACHANDRAN. Advocare having
aftress a1 Nissan Business Solutions Private Lirnitcd. First Floor. Vima press
B$lding. Erayil Kadavrl Kotlayam -686001, Kerala ro acr as our Attomey lor
registration ofour trademarks, file oppositions, including reclification proceedings

and maintenance ofregistrations. renewals oftrademarks, in force or to do any act

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reQuired to be done under the Trade Marl<s Act. 1999 on our behalf in resDect oi'

alltmde mark lnatters.

! fi l.rtJ iftlr trd.

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Auliorisld Sign.rory
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G6o8o +rf, KERAr-A. c\ 7 66553

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W€ request that all notices, requisitions and communicalions relating thereto may
te sent to such attorney at the above address
,

he hereby revoke all previous authorizations. if any, in respect of the above

f,natters and ratiry any act aheady done by our attorney in respect of the above
on oul behall'.
lmatt€rs
I. Uir irlir ftr. Ltt

, Authoritrd Si!..tory

lDated this 9'b day of November 202I.

TO
I'fHE REGISTRAR OF IRADE MARKS,
THE OFFICE OF TIIE TRADE MARKS REGISTRY,
IAHMEDABAD/CHENNAI/KOLKATAA'fIJMBAINEW DELHI

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