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Flipkart Sample Opposition
Flipkart Sample Opposition
: 2506098
Date: 26/05/2020
Amount: Rs.2700/-
Ref No: A-4390540 Form
No: 1046713
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
REQUEST NOTICE OF OPPOSITION
FEE 2700
APPLICANT OR REGISTERED PROPRIETOR/OPPONENT/THIRD PARTY MAKING THE
APPLICATNION/REQUEST
Opponent Name FLIPKART INTERNET PRIVATE LIMITED
Trading As
Address Buildings Alyssa, Begonia & Clover, Embassy
Tech Village, Outer Ring Road,
Devarabeesanahalli Village, Bengaluru –
560103, Karnataka, India.
Service Address FLAT NO. GA, AR VILLA, 31, 3RD MAIN
ROAD, GANDHI NAGAR, ADYAR, CHENNAI -
600 020.
Mobile No 9840455047
Email address chennai@anandandanand.com
AGENT OF THE APPLICANT OR REGISTERED PROPRIETOR/OPPONMENT/THIRD PARTY
AS THE CASE MAY BE(if any)
Agent Name ANAND AND ANAND
Address FLAT NO. GA, AR VILLA, 31, III MAIN ROAD,
GANDHI NAGAR, ADAYAR, CHENNAI 600
020
Mobile No 9840455047
Nature of the Agent Registered Trade Marks Agent
Registration No 20695
REQUEST OPPOSITION/APPLICATION IN THE MATTER OF
DETAILS OF APPLICATION NUMBER 4390540
CLASS 9
REQUEST NOTICE OF OPPOSITION
GROUNDS OF OPPOSITION Grounds of opposition are attached separately
Date 26-05-2020 12:36 PM
Digitally Signed By
Dear Sir,
We act for M/s Flipkart Internet Private Limited, Buildings Alyssa, Begonia & Clover,
Embassy Tech Village, Outer Ring Road, Devarabeesanahalli Village, Bengaluru – 560103,
Karnataka, India, Karnataka, India, who is the opponent in the above matter.
On behalf of our client, we are filing herewith Notice of Opposition in Form TM-O along
with requisite fee of Rs.2700/-. A copy of Power of Attorney is enclosed herewith.
We request the Learned Registrar to the take the opposition on record and proceed further in
the matter.
Yours sincerely,
K.Premchandar
Advocate
Agent Code: 20695
Encl : Notice of Opposition in Form TM-O
Fee of Rs.2700/- POA
Opponent Code: 849727
Fee: Rs.2700/- Agent Code: 20695
FORM TM - O
(Section 21(1) of The Trade Marks Act, 1999; Rule 42(1) of The
Trade Marks Rules, 2017)
And
1. The Opponent, which includes its predecessor in title and its group
companies is an electronic commerce company headquartered
in Bangalore, Karnataka. The Opponent was founded in October
2007 by Mr. Sachin Bansal and Mr. Binny Bansal. The Opponent
has launched its own product range under the name "DigiFlip"
with products including tablets, USBs, and laptop bags. The
Opponent’s holding Company is Flipkart Limited, Singapore and
other Group/Affiliate companies include Flipkart Payment Private
Ltd., Flipkart India Pvt. Ltd., Flipkart Digital Media Pvt. Ltd, Ebay
India Pvt Ltd, Flipkart Online Services Pvt. Ltd., Phonepe Private
Ltd., Instakart Services Pvt. Ltd., Adiquity Technologies Pvt. Ltd.,
Myntra Jabong India Pvt. Ltd., Jade Services Pvt. Ltd. and Myntra
Designs Pvt. Ltd.
3. In the first few years of its existence, the Opponent raised funds
through venture capital funding. As the Opponent Company grew
in stature, more funding arrived. The Opponent repaid the
investors’ faith with terrific performances year after year. In the
financial year 2008-09, the Opponent had made sales to the tune
of 40 million Indian Rupees. This soon increased to 200 million
Indian Rupees the following year. The Opponent’s last round of
Fundraising had increased its value to US$15 billion, however, as
of February 2016, the Opponent’s estimated value stands at
US$11 billion. The Opponent was the first e-commerce company
to introduce cash on delivery and payment by card on delivery in
addition to others. The Opponent also tackled issues relating to
timely delivery of orders by ensuring that orders were delivered in
a time by launching its own supply chain management system.
OPPONENT’S BUSINESS
‘FLIPKART’ website
10. The trade mark ‘FLIPKART’ came into being in the year 2007 with
the establishment of the Opponent. The Opponent is thus the
honest and true proprietor of the trademark ‘FLIPKART’ by virtue
of priority in adoption, continuous and extensive use, widespread
advertising and the tremendous reputation accruing thereto in the
course of trade. The word ‘FLIPKART’ is a coined and fanciful
term, which has no denotative meaning and accordingly is
universally recognized as one of the most successful trademark
and trade name in the world of e-commerce. The ‘FLIPKART’
trademark/service mark, apart from being inherently distinctive,
has acquired substantial goodwill and is as an extremely valuable
commercial asset of the Opponent. It is well recognized that in the
virtual world, on account of the reach of the medium of Internet,
trademark/service mark rights are created much faster and more
extensively.
2144505 35 Registered
6. Valid till
16/05/2021
2144506 42 Registered
2144514 41 Registered
8. Valid till
16/05/2021
2144519 16 Registered
9. Valid till
16/05/2021
2144520 41 Registered
2144523 16 Registered
2144526 35 Registered
12.
Valid till
16/05/2021
2144532 42 Registered
2350437 25 Registered
2350445 02 Registered
2350454 12 Registered
2350421 02 Registered
Valid till
19/06/2022
45.
-do- 2350431 14 Registered
2350440 35 Registered
Valid till
52. 19/06/2022
2350469 02 Registered
Valid till
19/06/2022
77.
2350493 02 Registered
2350507 20 Registered
2901534 09 Registered
2970306 09 Registered
Valid till
179.
22/5/2025
2970312 09 Registered
Valid till
185.
22/5/2025
2974030 09 Registered
Valid till
195. 28/5/2025
Valid till
198. 18/06/2025
Valid till
199. 18/06/2025
Valid till
200. 18/06/2025
2989129 16 Registered
2999672 16 Registered
2999676 16 Registered
3019123 16 Registered
Valid till
216. 28/07/2025
3031994 16 Registered
3036246 16 Registered
2693458 38 Registered
2693459 39 Registered
14. Further, the Opponent is also the owner of copyright in the stylized
manner of representation of its labels/logos/artistic works as set
out below.
17. The Opponent’s e-commerce website has been the subject of wide
spread unsolicited media publicity and there have been various
articles appearing in Indian national and regional newspapers
featuring unsolicited stories on the Opponent’s website
www.flipkart.com. The Opponent has also been the subject of
numerous prestigious awards, in various categories which include
advertising, marketing, promotion, etc.
ENFORCEMENT ACTIONS
19. The Opponent has been active and vigilant in enforcing and
protecting its rights in its mark ‘FLIPKART’. Actions taken by the
Opponent include filing trademark applications, issuing cease and
desist notices, legal actions including filing suits, raising domain
name disputes and filing trade mark oppositions, etc. The list of
actions taken against third parties and copies of orders are filed
herewith.
20. I further submit that the Hon’ble Madras High Court in its
judgement and decree dated 13th September 2019 passed in suit
C.S.No.848 of 2017 (Flipkart Internet Private Limited –Vs.-
Somasundaram Ramkumar) has held and declared that the
Opponent’s trademark “FLIPKART” is a well-known trade mark
within the meaning of the provisions of Section 2(1)(zg) of The
Trade Marks Act, 1999.
22. For the above reasons, it is submitted that the Opponent’s mark
‘FLIPKART’ has acquired tremendous distinction over the years in
relation to services, business and goods and the consuming public
and members of the trade solely identify or associate the mark
‘FLIPKART’ only with the Opponent and not with anyone else. It is
submitted that Opponent’s mark ‘FLIPKART’ has become
distinctive and solely identified with the Opponent and is a well-
known mark.
23. The Opponent is the true and lawful registered proprietor of the
mark ‘FLIPKART’, ‘FLIPCART’ and ‘FLIPKART.COM’ in classes 02,
03, 05, 06, 07, 10, 12, 14, 15, 16 , 18, 20, 21, 26, 35, 38, 41, 42
and 45 as per the tabulation given supra and the said marks are
valid and subsisting.
24. The Opponent’s services rendered, and goods sold under the mark
‘FLIPKART’ are advertised widely and extensively in media like
newspaper and magazines and other media to reach every corner
of the country. The Opponent also owns and operates the website
www.flipkart.com since the year 2007. The said website is also
accessible from throughout world and allover India, with
numerous potential and existing customers visiting the same and
the website receiving huge amounts of hits.
28. The Opponent’s products bearing the trade mark ‘FLIPKART’ are
sold through the length and breadth of the country, by virtue of
availability of Opponent’s website www.flipkart.com. By virtue of
its prior and honest adoption, long, extensive and continuous use,
superior quality and high standard of services offered/rendered
and goods sold under the said mark, including the incessant
promotional and publicity measures undertaken by the Opponent,
the trademark ‘FLIPKART’ has become exclusively associated with
the Opponent. The Opponent submits that the said trade mark
‘FLIPKART’ is the highest selling brand of the Opponent. Thus,
to the consumers and members of the trade, the trademark
‘FLIPKART’ is exclusively associated with the Opponent.
IMPUGNED MARK
30. The present opposition is being filed against the Application No.
4390540 in Class 09 for registration of the trademark
‘FLIPSHOPE ; GOLDEN CORPORATION’ in the name of
Ashodariya Nilesh Valjibhai, at 167-Ishwar Nagar Soc, Near
Ranuja Dham Soc, Puna To Bombay Market Road, Surat - 395010,
advertised in the Trademarks Journal No. 1939 dated 03rd
February 2020.
33. The mark applied for by the Applicant is neither distinctive nor
capable of distinguishing their goods and/or services from those
of the Opponent and hence the trade mark does not qualify for
registration under the provisions of Section 9(1) (a) of the Act. It
is to be noted that the opponent herein was the first in the trade
to adopt and use several ‘flip’ formative trademarks in respect of
various goods and services.
37. The Opponent submits that it is evident that the applicant has
copied the Opponent’s trademark ‘FLIPKART’ and adopted the
impugned mark ‘FLIPSHOPE’ which is deceptively similar to the
Opponent’ well- known trademark ‘FLIPKART’ for identical,
similar, allied and cognate goods, thereby making it difficult to
distinguish the services rendered and goods sold by the applicant
from those offered by the Opponent in the course of trade, and
thus the registration of the impugned mark is prohibited under
Sections 9(1)(a) and 9(2)(a) of the Trademarks Act, 1999.
38. The Opponent submits that by virtue of prior adoption, and long,
extensive, open and consistent use of the Opponent’s well known
trademark ‘FLIPKART’ in relation to various services and goods,
the Opponent’s mark has gained formidable reputation and
goodwill in trade in India. Hence, registration or use of the similar
mark ‘FLIPSHOPE’ applied for by the applicant will lead to
confusion and deception amongst the members of the trade and
purchasing public and would facilitate the applicant’s attempt to
pass off the services rendered and goods sold by them and / or
enable others to pass off the services rendered and goods sold by
them as and for that of the Opponent. Innocent purchasers for
value without notice would be under a mistaken belief as to the
quality, reliability and other positive attributes of the services
rendered and goods sold by the applicant by a mistaken
association with the Opponent.
39. The Opponent apprehends that services rendered and goods sold
under the impugned mark ‘FLIPSHOPE’ of the applicant are
bound to be mistaken as and for the Opponent’s services and
goods. This possibility increases manifold due to the fact that the
impugned mark is confusing and deceptively similar to the
Opponent’s trademark ‘FLIPKART’ other than the fact that the
opponent also offers identical goods for sale on their platform. This
would be prejudicial to the Opponent’s business interests as well,
as there exists a likelihood of association of the impugned mark
with the services rendered and goods sold the Opponent’s well-
known trademark ‘FLIPKART’. In this context, it is relevant to
note that the impugned trademark has been applied for gods which
are conflicting with goods sold by the Opponent under the prior
adopted and uninterruptedly used trademark ‘FLIPKART’.
41. The Opponent submits that the very adoption of the impugned
mark ‘FLIPSHOPE’ by the applicant is contrary to the provisions
of Section 11(2) of the Act. The Opponent’s trademark ‘FLIPKART’
is a well- known trademark in India and use of the impugned mark
by the applicant is likely to result in the applicant taking unfair
advantage of the reputation and goodwill subsisting in Opponent’s
well-known trademarks. The Opponent also submits that use of
the impugned mark by the applicant is likely to induce consumers
and members of the trade to infer that the Opponent is endorsing
the impugned mark. This would lead to dilution of the Opponent’s
trade marks in the eyes of the unsuspecting public, which has
been assiduously built up by the Opponent over the years.
42. The Opponent submits that the adoption of the impugned mark
‘FLIPSHOPE’ by the applicant is dishonest and any use of the
same in the trade is illegal. The applicant had no justification
whatsoever for adopting the impugned mark in relation to the
goods covered in the present impugned application, except with a
view to trade upon the goodwill and reputation attached to the
Opponent’s trademark ‘FLIPKART’. The applicant is trying to
confuse unwary customers with an imperfect recollection of the
Opponent’s trademarks. The Opponent submits that the use of
the mark applied for by the applicant in relation to services
rendered and goods sold will amount to passing off and the use of
the impugned mark thereof will cause embarrassment, loss,
inconvenience and hardship to the Opponent. The use and/or
registration of the impugned mark will be prejudicial to public
interest. Under these circumstances, the impugned mark is not
entitled to protection in a court of law and its registration in favour
of the applicant is contrary to the provisions of Section 11(3)(a) of
the Act. The Opponent further submits that the use of the mark
applied for would amount to a false trade description for which the
applicant could be penalized under Section 103 of the Act.
44. It is submitted that the applicant has made false and fraudulent
claims of use for the impugned mark ‘FLIPSHOPE’ which are
outright false and denied and applicant is put to strict proof
thereof and hence the impugned mark is not distinctive. In any
event, the application has been filed on a “proposed to be used”
basis and therefore the impugned mark could not have attained
any distinctiveness. The applicant has applied for registration of
the impugned mark which has not acquired any distinctiveness by
use and thus the applicant cannot claim any protection as an
honest and concurrent user or any special circumstances under
Section 12 of the Act, since the adoption is fraudulent and malafide
and user, if any, is tainted with rank dishonestly.
47. The Opponent has prior registrations for the trade mark
‘FLIPKART’ in India as set out in the preceding paragraphs of the
instant Notice of Opposition, and the impugned mark
‘FLIPSHOPE’ is deceptively and confusingly similar to the
Opponent’s well-known trademark for identical goods. Therefore,
the impugned mark of the applicant is liable to be hit by Section
29 of the Act for infringement of a registered trade mark.
50. In view of the grounds and reasons set out in the premises above,
and in order to maintain the purity of the Register and in the
interest of the general public, the Opponent respectfully submits
that it is a fit and proper case for the exercise of the Registrar’s
discretion in favour of the Opponent by denying registration of the
impugned mark in the instant application.
51. The Opponent requests and craves leave to modify, amend, alter
and/or add to any of the foregoing grounds and reasons.
To,
The Registrar of Trade Marks
Trade Marks Registry, Ahmedabad
Private Limited, do hereby verify that the contents of paragraph nos. 1 to 29
of the Notice of Opposition are based on the records of the Opponent Firm
maintained in the ordinary course of business which I believe to be true to
the best of my knowledge, information and belief, the contents of paragraph
nos. 30 to 51 of the Notice of Opposition are based on legal advice and
Opponent’s submissions which I believe to be true, and the contents of
paragraph no. 52 of the Notice of Opposition are the Opponent’s prayers to
this Hon’ble Tribunal and nothing material or relevant has been concealed
here from.
Authorized Signatory