Attorney’s Code No:

FORM TM-O
The Trade Marks Act, 1999
[Form of Counter Statement]

IN THE MATTER OF Application No. 3397797

for the mark ‘FIRST AID BEAUTY FAB’ in
Class 3 in the name of FIRST AID BEAUTY
LIMITED at 70 Bridge Street, Suite 203,
Newton, Massachusetts 02458

AND

IN THE MATTER OF Opposition No. 987247,

thereto by M/s Izuk Impex at A-274, Okhla
Industrial Area, Phase-I, New Delhi-110020
(hereinafter referred to as the ‘Opponent’)

_________________________________________

We, FIRST AID BEAUTY LIMITED (hereinafter referred to as the ‘Applicant’), hereby
give notice that the following are the grounds on which we rely for our application:

ABOUT THE APPLICANT:

1. The Applicant is world’s leading cosmetic company that manufactures skincare products
for all ages and puts the beauty in first aid with everyday essentials and targeted skincare
solutions in luxurious textures. The Applicant’s said products are dermatologist-tested,
non-irritating, free of harsh chemicals, cruelty free and safe for sensitive skin.

2. The Applicant’s Mark under 3397797 was filed on October 26, 2016 in class 3 on
proposed to be used basis. Further, during examination of the Applicant’s Mark, no
objection was raised vis-e-vis the Opponent’s Mark.
3. The Applicant has a word mark registered for “FIRST AID BEAUTY” in class 3 under
no 3397799. The date of the said registration dates back to October 26, 2016 and was
filed on proposed to be used basis.

4. More information about the Applicant can be accessed from the website
https://www.firstaidbeauty.com/

5. The Applicant has also incurred substantial expenditure in advertising and marketing its
business worldwide including United States, Spain, China, Italy and other countries. As
a result of the widespread promotion and advertising, the brand has become successful.

PRELIMINARY SUBMISSIONS:

6. At the outset, the Applicant submits that the contents of the Notice of Opposition are
frivolous, vexatious, vague and devoid of merits. The present Opposition has been filed
with the sole motive to thwart the registration process of the present application for the
mark FIRST AID BEAUTY FAB, notwithstanding the fact that the Applicant already
has registered trade mark rights in India, and is thus liable to be dismissed in limine with
exemplary costs.

7. The averments contained in the Notice of Opposition are nothing, but bald and
unsubstantiated statements and the Opponent is called upon to put strict proof of these
averments by way of documentary evidence.

8. It is submitted that the Applicant’s mark FIRST AID BEAUTY FAB is clearly different
and distinguishable from the Opponent’s mark MOON & STAR. On an overall
comparison of both the marks it is prima facie different and distinguishable visually,
structurally and phonetically from the Opponent's mark "MOON & STAR". The
trademark when considered as a whole, does not violate any provisions of Section 11,
the same has been pointed by the examiner by accepting the mark. In this regard,
observations made by the Supreme Court well establishes that while comparing the rival
trademarks, the trademark should be considered as a whole, as the trademark is a whole
thing. Thus, the mark is eligible for registration. The applicant’s mark is sufficiently
distinctive and capable of distinguishing the applicant’s goods and services from those of
others in the course of trade. The Applicant specifies the goods and services in its
 application, which clearly distinguishing the applicant’s goods and services from the
Opponent’s. The Applicant has completely different consumers, trade channels, and
other associated trade members and institutions, therefore the impugned mark is unlikely
to cause confusion among the public such that goods offered under the impugned mark
are unlikely to be associated with the Opponent. Thus, it is submitted that the opposition
is baseless, false, frivolous and an abuse of the process of law.

9. The Client’s Mark is coined and unique mark, which when considered as a whole is
inherently distinctive and capable of distinguishing itself from the goods applied for. The
Client has a word mark registered for “FIRST AID BEAUTY” in class 3 under no
3397799. The date of the said registration dates back to October 26, 2016 and was filed
on proposed to be used basis.

10. The international adoption and use of the trademark FIRST AID BEAUTY FAB goes
back to the year 2015 and has been in use in respect of the goods and services since
2015. Furthermore, the mark FIRST AID BEAUTY FAB has been used in several
jurisdictions of the world including United States of America, France, China, South
Korea, Spain, Italy, Greece, etc.

11. Prior to the launch of the Applicant’s brand in 2009, founder Lilli Gordon created
“moodboard” which was a computation of images which she associated with the brand
she was creating. The intent of the logo was to communication to consumers First Aid
Beauty products will rescue/save their skin from common problems and is a standout
(star) among other beauty products. The life preserver logo is a key element of First Aid
Beauty’s brand identity since its inception in 2009. P&G acquired First Aid Beauty in
2018 and to the First Aid Beauty has not previously been available in India, however the
brand engages in global distribution. It is pertinent to note that the brand was launched in
the United States in 2009.

12. As per the Trade Marks Registry records, there are numerous 'STAR' formative marks
subsisting on the Register in Classes 03 and it is pertinent to note that the word "STAR"
is laudatory and a commonly used in relation to the mark and thus common to the trade
across classes. There is co-existence of several ‘STAR’ formative marks on the Register.
Thus, STAR cannot be monopolized by the Opponent and their alleged claim of
 exclusive rights over the word STAR is not tenable. It is pertinent to state that the
Opponent has no statutory rights in the word MOON & STAR and no monopoly can be
claimed on the word STAR.

REPLY TO NOTICE OF OPPOSITION:

13. At the very outset, the Applicant strongly refutes and denies all the contentions,
submissions, statements and averments made by the Opponent in the Notice of
Opposition which are not specifically admitted by the Applicant herein which are
contrary or inconsistent with what has been stated hereunder.

14. The contents of Paragraph 1 to 4 are denied for want of knowledge and the Opponents
are put to strict proof of the averments made therein. It is specifically denied that the
Opponent has acquired statutory rights for the mark and adopted the mark in the year
1917 and have been continuosly using it. In any event, this submission is irrelevant in
light of the preliminary submissions hereinabove.

15. The contents of Paragraph 5 of the Notice of Opposition are denied and the Opponents
are put to strict proof of the averments made therein. It is specifically denied that the
Opponent has already become distinctive and associated with their goods since a long
time due to its continuous and long use. It is denied that the opponent’s goods bearing
the mark are highly demanded in the market due to its standard quality which is baseless
argument by the opponent. It is denied that the public at large are associated with the
goods of the mark of the opponent. In any event, this submission is irrelevant in light of
the preliminary submissions hereinabove.

16. The contents of Paragraph 6 of the Notice of Opposition are baseless and denied. It is
denied that the opponent has widely advertised their mark through various medias such
as advertisement in leading newspapers, trading magazines, distribution of trade
literature, trade novelties etc. The Applicant is not aware that the Opponents has spent
substantial amount of money on the publicity of the mark and does not admit that the
Opponent’s mark enjoys solid and enduring reputation in the markets.
17. As per the contents of Paragraph 7 of the Notice of Opposition, the Applicant denied that
the Applicant’s mark is not distinctive or capable of distinguishing and it does not satisfy
the requirement of the act for registrability.

18. The contents of paragraph 8 of the Notice of Opposition is baseless and denied. The
Applicant does not admit that the use of the Applicant’s mark would likely to cause
confusion or deceive. The Applicant denies that the Applicant's Mark should be refused
registration under the provisions of Section 11 of the Act as alleged or otherwise.

19. The contents of Paragraph 9 of the Notice of Opposition are denied for want of
knowledge. The Applicant denied that the trade mark of the Applicant is in all essential
respects identical with or deceptively similar to the Opponent’s trade mark. It is denied
that the goods are also of the same description and there may be deception of the public
and injury to the opponents trade and business.

20. As per the content of Paragraph 10 of the Notice of Opposition, it is denied that the
Applicants are not the proprietors of the mark.

21. The contents of Paragraph 11 of the Notice of Opposition are false, wrong and hence
denied. It is specifically denied that the mark tendered for registration by the applicant is
the Opponent’s mark and had been used by the Opponents in his business for years. The
Applicant denied that the application is in fraud of the opponent’s right to his mark. In
this regard, the Applicant craves leave to refer to and rely upon the preliminary
submissions hereinabove.

22. That the contents of Paragraph 12 of the Notice of Opposition are baseless and denied. It
is specifically denied that the applicants are not the proprietors of the impugned mark
and have dishonestly mis-appropriated the same from the Opponent’s trade mark so as to
cause confusion and deception and to facilitate the passing off their goods as those of the
Opponents. It is denied that the Applicant’s mark has been adopted, with the Opponent’s
trade mark for illegal gain. The Applicant does not admit that here is no justification for
the Applicant’s adoption of the mark. It is denied that the Applicant is merely trying to
mis-appropriate the vast reputation, goodwill and popularity that subsists in the
Opponent’s trade mark. The Applicant denies that the present application has been filed
in bad faith or that the Applicant cannot claim to be the proprietor of the Applicant's
 Mark as per the provisions of Section 18 of the Act as alleged or otherwise. The
Opponent’s arguments in this regard are not tenable in view of the preliminary
submissions hereinabove.

23. That the contents of Paragraph 13 of the Notice of Opposition are false and denied. It is
specifically denied that the exclusivity of the Opponent’s well known and repute mark
will be severely eroded if the applicants are allowed to be registered and/or used

24. That the contents of Paragraph 14 of the Notice of Opposition are false, wrong and
denied in totality. The Opponent is put to strict proof of the averments made in these
paragraph. It is denied that there is bad faith on the part of the applicant in claiming to be
the proprietors of their mark. The Applicant denies that the Applicant's Mark is liable to
be refused registration under Section 12 of the Act as alleged or otherwise. For the sake
of brevity, the contents of the preliminary submissions hereinabove are reiterated and
reaffirmed.

25. That the contents of Paragraphs 15 of the Notice of Opposition are false, legally
misplaced and hence denied in totality. The Opponent is ill-advised to say that the mark
is blatantly copied and blindly inspired by the repute and goodwill of the opponent’s
trademark/trade name. It is denied that the very adoption of the mark by the applicant is
dishonest.

26. That the contents of Paragraph 16 of the Notice of Opposition are denied. The Applicant
denies that the advertised trademark be refused registration under Section 102 and 103 of
the Act. It is denied that the Applicant’s mark constitutes a false description, which
would mislead the consumers and public in a material way as regards source and origin
of the goods. Applicant does not admit that the opponents have not consented to the
adoption or use of the Applicant’s mark.

27. As regards the contents of Paragraph 17 of the Notice of Opposition are devoid of any
merit and liable to be disregarded outright. The Applicant denied and does not admit that
the registration of the Applicant’s mark is likely to dilute the exclusivity of the
Opponent’s mark and give leverage to the applicants to unlawfully accept the reputation
and goodwill, which has been created through tremendous hard work by the opponents.
28. That the contents of Paragraph 18 of the Notice of Opposition are denied. The Applicant
denied that the Applicant had no bonafide intention of using the mark in which the
Applicant seek registration.

29. That the contents of Paragraph 19 of the Notice of Opposition are denied. The Applicant
does not admit that the Applicant has been engaged in trading deceptively and is
pursuing the policy of deliberately deceiving purchasers of his goods as the goods of the
Opponents. The applicant was not aware about the use and reputation of the Opponents
trade mark MOON & STAR and The applicant does not admit that they had adopted the
trade mark dishonestly and fraudulently. The Applicant denies that the registration of the
Applicant's Mark would be contrary to the provisions of Section 12 of the Act.

30. With reference to paragraph 20 of the Notice of Opposition, the Applicant denies that the
registration of the Applicant's Mark would be contrary to the provisions of Section 9, 11,
12, 18 of the Act or that the Hon'ble Tribunal ought to refuse registration of the
Applicant's Mark as alleged or otherwise.

31. With reference to paragraph 21 of the Notice of Opposition, the Applicant says and
submits that the Opponent should not be granted any leave to make change or amend or
alter the Notice of Opposition. The Applicant says and submits that the Opponent is not
entitled to the reliefs prayed therein. The Applicant says and submits that in the facts and
circumstances of the case it is entitled to the registration of the Applicant's Mark under
the above application.

32. For the reasons and circumstances explained hereinabove, it is prayed that:

i. Opposition No. 987247 be dismissed in limine;

ii. Application No. 3397797 in Class 3 be allowed to proceed to registration;
iii. Costs of the proceedings be awarded in our favour of the Applicant;
iv. Any other and further orders in the interest of justice be granted.

All communications in relation to these proceedings may be sent to the following address:

K & S Partners,
 515-B, Platinum Tower, 5th Floor,

Sohna Road, Sector-47, Gurgaon – 122002,

National Capital Region, India

Dated this ________day of March 2023.

Of K&S PARTNERS
E-mail: ipotm@knspartners.com
To,

The Registrar of Trade Marks

Office of the Trade Marks Registry

At: DELHI

VERIFICATION
I, ____________, hereby verify that the contents of paragraphs 1 to 5 are based on the
information received from the Applicant and believed to be true, paragraph 6 to 31 are legal
submissions and paragraph 32 is a prayer to this Hon’ble Tribunal.

Of K&S PARTNERS
E-mail: ipotm@knspartners.com

Date: _______ day of March 2023

Place: Gurgaon