FORM TM-O

THE TRADE MARKS ACT, 1999.

[Section 21(2), 47, 57, 59(2), Rules 49, 93, 99, 101)]
Attorney Code: 19354
Opposition No: 1278258

In The Matter of Application No. - 5935702

In Class 05 In the Name of KRISHNA KUMAR
UPADHYAY TRADING AS CANVAS SCIENTIFIC
having its office at D/102 Vasant Spring Woods, Maple
Building, Shirgaon Bhosale Nagar, Badlapur (East) -
421503. (Hereinafter referred to as the Applicant.)

V/s
In The Matter of Opposition By PIRAMAL PHARMA
LIMITED having its office at Piramal Ananta, Agastya
Corporate Park, Opposite Fire Brigade, Kamani Junction,
LBS Marg, Kurla West, Mumbai - 400070 (Herein referred
to as the Opponent )

COUNTER STATEMENT

With respect to the Opposition filed by PIRAMAL PHARMA LIMITED, on 21/02/2024, notice of which have
not yet received by KRISHNA KUMAR UPADHYAY TRADING AS CANVAS SCIENTIFIC, The Applicant
would like to state that this counter statement is submitted within the 2 (two) month timeframe as per the
provisions rule 44, read with section 22 of the Trade Marks Act, 1999 (“Act”). The applicant hereby submits the
following:

1) The applicant is the proprietor and the owner of the trademark ‘EZECAN’ which established in the
year 2023. The applicant had made efforts and created the brand name EZECAN. The applicant thus
applied the brand name on 19/10/2023, established at all material times, has been in the field of
Pharmaceuticals and Medicinal preparations.
2) That the applicant is indeed one of the oldest, pioneer and leading manufacturer and trader in the fields
of Pharmaceuticals and Medicinal preparations since its inception. The applicant, for the purpose of
identification of its goods, from those of the others in the course of trade and merchandise had adopted
the trademark EZECAN in the year 2023, or thereabout, and had been using the said trademark
continuously in the course of its business since the year 2023. The applicant’s mark range was
incorporated with the sole emotion of providing premium products with reasonable price, their vision
is to serve and provide more, to keep in innovation, to help their clients and customers provide the
best, and to be leaders in their respective field.
3) That the expression/name “EZECAN” is the house mark of the applicant and it is the salient part as
the applicant has made efforts to create this unique name and the name is thus become a known mark
 since then. It is a fact known in the concerned business circle that the applicant is one of the oldest,
pioneer and leading manufacturer and retailer in the field of Pharmaceuticals and Medicinal
preparations products. EZECAN now dominates the large share in the whole of Mumbai, Maharashtra.
4) The applicant’s products are used in millions of homes, and their products are renowned in the state of
Maharashtra for the best quality and price in market, their mission is to bring EZECAN and expand
across the state. The applicant’s established proprietary claims to their said mark and the same is
associated with them by the public in the market. The applicant has been using the mark continuously,
uninterruptedly in respect of the aforesaid goods since the year 2023. Due to long-standing, quality of
products and heavy advertisement, the mark has achieved high reputation and goodwill in the market
which is unparalleled in business and thus the trademark falls within the category of well-known
trademarks.
5) The applicant offers the best quality Pharmaceuticals and Medicinal preparations in Class 05, and the
applicant has bonafidely adopted by the word EZECAN and is continuously and extensively using it
since 2023 in whole of Maharashtra.

The Counter replies to the grounds of opposition para-wise are as follows:

1. With respect to paragraph 1: The applicant states that the opponent in the said paragraph has
mentioned about the opponent’s portfolio, which are informative statements, and the applicant
doesn’t merit reply for the same. Also the opponent should be put to strict documentary proof for the
same.
2. With respect to paragraph 2: The opponent in the said paragraph has mentioned about the four major
divisions the opponent is into, which is irrelevant to the applicant’s business and are again
informative statements, for which the applicant is unaware of, and the opponent should thus be put to
strict proof for the same.
3. With respect to paragraphs 3 and 4: The applicant for the said paragraph states that the opponent has
mentioned about the awards, rewards achieved, and success stories of the opponent, which has again
nothing to do with the applicant’s business and that the opponent should thus provide evidence for all
that is mentioned.
4. With respect to paragraph 5: The applicant states that the averments in the said paragraph are
informative statements, and the applicant doesn’t merit any reply for the same.
5. With respect to paragraph 6: The opponent in the said paragraph has mentioned about the opponents
registered trademark details, that are registered in Class 99, that includes CHEMICAL
PREPARATIONS FOR THE DIAGNOSIS OF PREGNANCY, CHEMICAL PREPARATIONS
FOR THE INVIVO DIAGNOSIS OF PREGNANCY, REAGENTS FOR USE IN DIAGNOSTIC
PREGNANCY TEST, PREGNANCY TESTING PREPARATIONS INCLUDED IN CLASS 5 and
DIAGNOSTIC APPARATUS FOR PREGNANCY TESTING in Class 10, which is related to
Diagnostic apparatus for pregnancy testing, that are nowhere related to the applicant’s goods
6. With respect to paragraph 7: Averments made in the said paragraph, are mere facts, stated by the
opponent, that doesn’t require any response from the applicant’s end.
7. With respect to paragraph 8: The applicant strictly denies the absurd, false, untrue, and irrelevant
claims made by the opponent. The applicant further denies that the opponent is an honest, bonafide
and prior user of the trademark and that the mark is in continuous commercial use thereof. Further the
applicant also denies that the opponent’s products are highly demanded in the markets on account of
the standard of quality maintained and goodwill. The applicant states that, the opponent’s mark is ‘I-
CAN’, which is a combination of two common terms that is I and CAN, whereas the applicant’s
 brand name is a unique word ‘EZECAN’ that is created with the applicant’s own intellectual and
creativity, which shows that it is the applicant, who is the honest and the bonafide user of the brand
name EZECAN. Further, as mentioned in the earlier paragraph, the opponent’s goods and services
differ from the applicant’s goods and services, and there is no direct or indirect comparison between
the rival marks.
8. With respect to paragraph 9: The applicant for the said paragraph states that the applicant has done
accurate search of the brand name EZECAN, and after knowing that there is no such other brand
name in the market, the applicant applied for the brand name EZECAN on 13/05/2023, and since than
it is known to the public at large and the customers, in the field of Pharmaceuticals and Medicinal
preparations. The applicant further states that the applicant has already spent a lot on the promotion,
and advertisement, of the trade name EZECAN, knowing that there is no other similar brand name in
the market, which has increased the sales of the applicant’s brand name, and is therefore associated
with the applicant only, and none else.
9. With respect to paragraph 10: As mentioned by the opponent in the said paragraph, the applicant went
through the opponent’s website and came to the conclusion that the website also has nothing to do
with the present Notice of Opposition, as firstly, the brand names, are totally different from each
other, phonetically, visually, and structurally, also the goods and services differ. There is no point of
comparison between both the rival marks, and hence there is no confusion and deception caused, and
will also not mislead the public to believe that the brand names or goods are connected with each
other. The false and absurd claims are thus denied by the applicant in toto.
10. With respect to paragraph 11: Averments made in the said paragraph are mere facts, and informative
statements, for which the applicant doesn’t merit any reply.
11. With respect to paragraph 12: The applicant for the said paragraph states that the products mentioned
by the opponent are very different visually, structurally and are not even closely similar to each other.
The opponent’s mentioned brand names in the said para are I-pill, I-know, I-activ, I-feel, basically all
the products mentioned are starting with the Letter ‘I’. The applicant’s brand name is EZECAN,
starting with the Letter ‘E’, the difference in both the names can be easily understood, while
comparing both the rival marks. Therefore the applicant strictly denies “It is prima facie obvious that
the Applicant has blatantly copied Opponent’s trademark thereby trying to confuse the unwary
consumers with imperfect recollection to believe that the goods sold under the impugned trademark
and the goods sold under the Opponent’s trademark are originating from a single source”. As it is
clearly visible and understood that any man with an average intelligence can also determine the
difference in both the brand names, and thus the claims made by the opponent are false and absurd.
12. With respect to paragraph 13: The applicant firstly denies all the false, absurd, baseless and irrelevant
claims made by the opponent in the said paragraph, and states that the brand name EZECAN is
applicant’s own brand, for which the applicant wishes to expand in the field of Pharmaceutical and
medicinal preparations and that this itself is a big reason for the applicant to get the brand name
registered. Further, the applicant is not at all keen to copy or imitate any other brand name or earn any
kind of goodwill that is attached to the opponent’s registered trademarks. The applicant believes in
sincerity of its established business and is therefore engrossed in expanding its business only. There is
not a single instance, where the opponent can prove that the applicant’s mark causes confusion, and
the false claims are thus denied. Hence the claims made by the opponent under Section 9(2) (a) of the
act, are denied completely.
13. With respect to paragraph 14: Averments and contentions made in the said paragraph are denied by
the applicant in toto, the claims being unworthy, bogus and sham. The applicant states that as
 mentioned by the opponent in the said paragraph, that the opponent’s brand name is a combination of
the words ‘I’ and ‘CAN’, where else the applicant’s brand name is a combination of the words ‘EZE’
and ‘CAN’, There are various case laws, in which the same issue was raised and the court held that
the trademark should be considered as a whole. One of such case law is given below:

In Cadila Health Care Ltd. Vs. Cadila Pharma Ltd., reported in 2001 (2) GLH 53 (SC): 2001 (2) GLR
1419 (SC), there was a dispute between the two brand names i.e. FALCITAB and FALCIGO

The general well settled principles for comparison of trademarks are:

 The trademark must be considered as a whole. It is not right to take a part of the trademark and
compare it with part of the other trademark.
 No meticulous or letter by letter comparison is required. Side by side comparison is not the correct
test.
 Comparison should be made from the point of view of a person of average intelligence and of
imperfect recollection.
 The overall structural, visual & phonetic similarity and similarity of the idea in the two marks
and the fact as to whether it is reasonable likelihood to cause confusion should be taken into account.

It can be clearly understood with the above given case law, the opponent cannot claim monopoly on a single
word ‘CAN’, it being a common phrase too. Further, the claims made under Section 9(2) (a) and under
Section 11 (1) (a) of the act are denied in toto.

14. With respect to paragraph 15: The applicant for the said paragraph strictly denies “It is quite evident
that the Applicant has adopted the impugned mark to ride on the reputation of the Opponent and
simply to pass off its goods as that of the Opponent. With the Opponent’s mark being recognized
widely, the Applicant intends to pass off its goods using the reputation and name earned by the
Opponent’s mark. Hence the impugned mark is also liable to be refused as per Section 11(3) of the
Trade Marks Act’. There is no passing off of goods exercised by the applicant, The opponent is just
being unreasonable, and with no knowledge is placing false, absurd, untrue, ridiculous and silly
claims against the innocent applicant for the brand name EZECAN, and therefore, the claims made
under Section 11(3) of the Trade Marks Act are also denied by the applicant in toto.
15. With respect to paragraph 16: The applicant for the said paragraph denies that both the rival marks
are structurally, and visually very similar especially in view of the common word ‘CAN’, as the reply
for the same is given in paragraph 13 of the Counter statement. The applicant further states that the
opponent is repetitive in making claims against the applicant, and the claims under Section 11(2) of
the act are therefore denied in toto. Thus, in the interest of the applicant, the customers and the public
at large, the Notice of Opposition should thus not be considered and shall be dismissed with liming
costs.
16. With respect to paragraph 17: The applicant applied for the mark EZECAN on 13/05/2023 and is thus
using the brand name since then. The applicant’s mark is a unique and a distinctive mark and that the
applicant can go his way out to protect the rights of the brand name. The applicant has put efforts to
build the said brand name and thus cannot afford to lose the same. The claims made under provisions
of Section 12 of the act are therefore denied.
17. With respect to paragraph 18: Averments and contentions made in the said paragraph are denied by
the applicant in toto, and the applicant states that the applicant has applied for the brand name
 EZECAN in good faith and that the brand name is not void-ab-initio. The applicant is thus the honest
and the true proprietor within the meaning of Section 18(1) of the act.
18. With respect to paragraph 19: The applicant for the said paragraph states that the applicant’s mark
EZECAN would not be in contrary to the provisions of Sections 2, 11, 12, 18, and other provisions
of the Trade mark act, and that the statement mentioned in the said paragraph is denied by the
applicant.
19. With respect to paragraph 20: The applicant for the said paragraph states that the responses and
replies given for the Notice of Opposition para-wise are submitted respectfully. The applicant
therefore submits that it is a fit and proper case, for the Ld. Registrar to exercise the discretion in
favour of the applicant, by refusing and dismissing the sham and bogus Notice of Opposition for the
applicant’s brand name EZECAN.

20. The Applicant craves leave to add, amend, alter, change, modify the Counter Notice, if situation
warrants for.

On account of the above facts and circumstances, it is prayed that in the interest of the trade and
public, justice and equity, the Opposition be dismissed and disregarded with costs to the
Applicant and the mark of the Applicant be registered by the Ld. Registrar. Accordingly we pray
that:-

a. The notice of opposition by the Opponent be refused and denied.

b. The Applicant’s mark bearing application no. 5935702 in class 05 should be granted and
registered.

c. The Opponent be ordered to pay costs of these proceedings.

d. Any other order against the Opponent that may be deemed fit in the interest of justice and
equality.

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

All communication in relation to these proceeding may please send to:

NRN SUITS AND LAWS LLP
17, Saroj Sadan,S.K Patil
Lane, Daftari Road,
Malad (E), Mumbai-400097

FOR: KRISHNA KUMAR UPADHYAY trading as Canvas Scientific

 ____________________________
NRN SUITS AND LAWS LLP
Advocate Nidhi Nandu

Dated this 02nd March, 2024

To,
The Registrar of Trade Mark,
The office of the Trade Mark Registry
Mumbai

VERIFICATION

I, the undersigned Adv Nidhi Nandu, An Adult,Indian., with principal place of business at, 17 Saroj
Sadan, S K Patil Lane, Daftari Road, MaladEast, Mumbai400097, (Attorneys for the Applicant)
Maharashtra, India, do hereby solemnly declare that the contents of paragraphs 1 to 25 of the
Counter-statement are based on information made given to me by the Applicant and I believe the
same to be true, and what is stated in all paragraphs is in the nature of prayers.

Place: Mumbai
FOR: KRISHNA KUMAR UPADHYAY trading as Canvas
Scientific

__________________
__________
NRN SUITS AND LAWS LLP
Advocate Nidhi Nandu

To,
The Registrar of Trade Marks,
Trade Marks Registry,
At Mumbai.