February 04, 2023

To
The Examination Section
The Trademarks Registry
Delhi

REPLY TO EXAMINATION REPORT

Re: Reply to the examination report with respect to the Application No.
________in class 5.

Dear Sir,

We act for the Applicant, in the above matter with respect to the trademark application no.
______ for the mark in class 5 (hereinafter referred to as “Subject Trademark”).

We write with response to the examination report dated 07/09/2022, a copy of which is
annexed herewith as Annexure A.

Our reply to the objections raised in the examination report is as under:

A. Reply to objection under section 11(1):

1. At the outset, it is submitted that the Applicant has adopted the Subject Trademark in
2019 and has been using the same in India at least since May 06, 2020.
2. As per the examination report, the Learned Registrar has objected to the Subject
Trademark under Section 11 of the Act on the basis of 3 (three) similar trademark
already available on the Register for same/similar goods. In response to the objection
raised under section 11(1), it is submitted that the cited mark bearing application no.,
in the name of, has been filed on a ‘proposed to be used’ basis on 06/10/2021.

3. It is submitted that the Applicant is not only the prior adopter for the Subject Mark,
but also the prior user at least since January 24, 2021 in India, which is prior than the
application date (viz. October 06, 2021) of the mark cited in the Examination Report
(“Cited Mark”). Therefore, the Subject Trademark is an ‘earlier trademark’ vis-à-vis
the Cited Mark.
4. The Applicant’s application for the Subject Trademark has been filed to claim priority
relying on the Trademark Application No. filed on 29 March, 2022 in Nepal, which has
been accepted and published in the Industrial Property Bulletin. Documents
demonstrating the priority claim of the Subject Mark in the jurisdiction of Nepal are
annexed herewith and marked as Annexure B.

5. It is a well-established principle of the Trademark Law that a prior user of any mark is
entitled to the rights on the trademark rather than the prior applicant, and in case of a
conflict between the prior user and the prior registrant, the rights of the prior user for
the trademark. Reliance is placed on the following decisions:

(i) S. Syed Mohideen v. P. Sulochana Bai [(2016) 2 SCC 683] – A Division

Bench of the Hon’ble Supreme Court held that the rights of the prior user are
superior than that of the registration and the same has been incorporated
under Section 34 of the Act. It was stated that “ … the reasonings from the
provisions arising from the plain reading of the Act [which] gives clear
indication that the rights of prior user are superior than that of registration and
are unaffected by the registration rights under the Act. ”
(ii) L.D. Malhotra Industries v. Ropi Industries [PTC (Suppl) (2) 564 (Del)] –
The Hon’ble High Court of Delhi stated that “25. Priority in adoption and use of
a trade mark is superior to priority in registration”.
(iii) Minda Spectrum Advisory Ltd. v. Minda Oils India Pvt. Ltd. [CS(COMM)
51/2022 – Delhi High Court] – The Hon’ble Delhi High Court observed that “It
is indisputable that Plaintiffs and Defendants hold valid and subsisting
registrations in their respective trademarks, registered in different Classes. The
issue with regard to the rights of one registered proprietor of a trademark
against another registered proprietor of an identical with or nearly resembling
each other, is no longer res integra. Interpreting Section 28(3) of the Act, the
Supreme Court in S. Syed Mohideen v. P. Sulochana Bai,
MANU/SC/0576/2015 : (2016) 2 SCC 683”.
(iv) ITC Ltd. v. Nestle India Ltd. [O.S.A. No. 170/2020 – Madras High Court] –
The Hon’ble Madras High Court, relying upon the Supreme Court Judgement in
S. Syed Mohideen v. P. Sulochana Bai, held that “Reliance was placed on the
decision of the Hon'ble Supreme Court in S. Syed Mohideen vs. P. Sulochana
 Bai [(2016) 2 SCC 683]. With regard to the trinity test to be applied in a
passing off action and that prior user is considered to be superior than any
other rights and the fact that both prior user and subsequent user are
registered proprietors are irrelevant for the purpose of examining who
generated the goodwill first in the market and whether the latter user is
causing misrepresentation in the course of trade and damaging the goodwill
and reputation of the prior right holder/former user. This decision was also
relied on to support the proposition that registration of a mark under the Act is
no defence to a passing off action.”
(v) Sun Pharmaceutical Industries Ltd. v. CIPLA Ltd. [2007 (109) Bom LR
445] – The Hon’ble Bombay High Court held that “It must be stated that it is
possible to conceive that a plaintiff is entitled to an injunction on the basis of
prior user, notwithstanding the earlier registration of the same mark by the
defendant.”
The copies of the judgements replied upon above are annexed herewith and are
marked as Annexure C

6. In light of the submissions made hereinabove, it is respectfully submitted that the

objection under section 11 ought to be waived and the present application for the
Subject Trademark be permitted to proceed further and advertised in the Trade Marks
Journal.

7. In light of the above, it is respectfully submitted that the trademark application

bearing trademark application no. for the mark in class 29 be permitted to proceed
further and advertised in the Trade Marks Journal. In the alternate, a hearing may be
granted.

8. It is requested that no adverse decision be taken without affording an opportunity for

hearing the Applicant.

Yours Sincerely,