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 : 9106181
REQUEST COUNTER STATEMENT
FEE 2700
APPLICANT OR REGISTERED PROPRIETOR/OPPONENT/THIRD PARTY MAKING THE
APPLICATNION/REQUEST
Applicant Name MILAP DASHRATHSINH JADEJA
Trading As
Address A-404, 4TH FLOOR, SOLITAIRE CORPORATE PARK, NR.
DIVYABHASKER PRESS, MAKARBA, S.G. HIGHWAY-380054,
AHMEDABAD
Service Address A-404, 4TH FLOOR, SOLITAIRE CORPORATE PARK, NR.
DIVYABHASKER PRESS, MAKARBA, S.G. HIGHWAY-380054,
AHMEDABAD
Mobile No
Email address
AGENT OF THE APPLICANT OR REGISTERED PROPRIETOR/OPPONMENT/THIRD PARTY
AS THE CASE MAY BE(if any)
Agent Name MILAP DASHRATHSINH JADEJA
Address A-404, 4TH FLOOR, SOLITAIRE CORPORATE PARK, NR.
DIVYABHASKER PRESS, MAKARBA, S.G. HIGHWAY-380054,
AHMEDABAD
Mobile No 9221482841
Nature of the
Agent
Registration No 4443554
REQUEST OPPOSITION/APPLICATION IN THE MATTER OF
DETAILS OF 1203797
COUNTER
STATEMENT
FOR
OPPOSITION
NUMBER
CLASS 43
REQUEST COUNTER STATEMENT
REPLY TO Detailed counter statement is attached separately
OPPOSITION/RE
CTIFICATION
Date 16-08-2023 04:39 PM
Digitally Signed By
VAISHALI VIRESH SHAH

for LEMARK
 Agent’s Code: 16311

FORM TM-6
THE TRADE MARKS ACT, 1999
Form of Counter Statement
(Section 21(2), 47, 57, 59(2); Rules 49, 93, 99 and 100)
__________________________________________________________________________

In the matter of Opposition no.

1203797 to application no. 5280315
in class 43 for the registration of a

trademark “ ” in the name

of MILAP DASHRATHSINH
JADEJA having Address at A-404,
4TH FLOOR, SOLITAIRE
CORPORATE PARK, NR.
DIVYABHASKER PRESS,
MAKARBA, S.G. HIGHWAY-
380054, AHMEDABAD

VS

I MILAP DASHRATHSINH JADEJA (herein after referred to as Applicant)

having Address at A-404, 4TH FLOOR, SOLITAIRE CORPORATE PARK,
NR. DIVYABHASKER PRESS, MAKARBA, S.G. HIGHWAY-380054,
AHMEDABAD the Applicant for registration of the above trademark, hereby
give notice that the following are grounds on which we rely for our
application:-

A. At the outset, we submit that I, (the expression whereof shall hereinafter

include its predecessor in business, interest and title and licensees) has
been carrying on a business of providing services related to
RESTAURANT-FOOD BUSINESS (hereinafter referred to as Said
“Services). Due to the excellent quality and efficacy of the said services,
Applicant is enjoying enviable reputation and goodwill. Before Applicant’s

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 proceed to deal paragraph wise against the Notice of Opposition,
Applicant’s would like to state and submit as under:

B. As stated above, Applicant has been engaged in the well-established

business of Food, Restaurants. Applicant is one of the largest and fastest
growing companies having interest especially in said service industries.

C. In the process of development and in order to be competitive in the

business, Applicant has conceived, invented and coined various
Trademark out of which one of such new trademark is RICH

NUTRITIONWALA which is represented in artistic format as “

and in order to obtain statutory protection Applicant applied for

registration of the subject mark (herein after referred to as said

Trademark) bearing application no. 5280315 in class 43 of the Trade
Marks Act, 1999. It is submitted that Applicant has invented unique mark
which is sought for protection with a bonafide intention to use the same
in respect of said Services Hence, Applicant is the true and original owner

and proprietor of the said Trademark and is entitled for

registration under the Trade Marks Act, 1999.

D. Thus, due to the honest and bonafide adoption, Applicant is the true,
original and lawful owner and/or proprietors of the said Trademark

Without prejudice to the generality of the foregoing statements, with

reference to the Notice of Opposition, Applicant state as under:

1. With reference to paragraph nos. 1 -4 of notice of opposition: -

Applicant denies and do not admit what is stated therein and put the
opponent to the strict proof thereof. Further all the self-claimed
statement are vehemently denied and Opponent is put to strict proof
thereof , which are however not relevant to subject Opposition as both

the marks Applicant said Trademark is visually phonetically

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 different from impugned marks (hereinafter referred to as

the said impugned marks. It shall be noted that said Trademark

has no similarity with the Opponent said impugned mark

. It is denied that impugned mark is used since 2015

for which Opponent is put to strict proof there of. It is confirm and
ascertain that as both the marks are phonetically visually different
thus this Opposition is baseless and shall be dismissed in liminie.
Further all the self claimed statement are denied in toto which require
no comments as they are not relevant to subject opposition. Thus all
the self-claimed statement is denied in toto and Opponent is put to
strict proof thereof.

2. With reference to paragraph nos. 5 -23 of notice of opposition : -

Applicant denies and do not admit what is stated therein and put the
opponent to the strict proof thereof. On the contrary all the self claimed
statement shall not be consider as both the marks said Trademark

is visually phonetically different from impugned marks

. Applicant has prominently added NUTRITIONWALA

word to said trademark, which make subject applicant phonetically
visually different to any of the marks including impugned mark.
Further said Trademark is represented in artistic format which makes
said mark unique and distinctive. Further it is denied that impugned
mark is used since 2015, all other self-claimed statement is denied that
impugned mark is well known mark or attained goodwill and
reputation. Thus none of the self claimed statements shall be consider
as both the marks are phonetically , visually and structurally different
to each other which is explained above. Thus all the allegation and self

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 claimed statements are strictly denied and opponent are put to strict
proof thereof. Thus it is ascertain that subject opposition is with
malafide intention just to stop Applicant straight forward mark. Hence
subject opposition shall be dismissed under cost awarded to applicant.

3. With reference to paragraph nos. 24 of notice of opposition: -

Applicant confirms that after due research Applicant has applied for
subject mark. Applicant do not understand as on what basis Opponent
is saying that there is every likelihood of confusion and/or deception
on the part of the general public due to registration and/or use of the
said Trademark.
In that case Applicant again repeat that both the marks are
phonetically, visually different from each other which can be confirm
from below tabular :-

Applicant mark Impugned mark

As both the marks are in toto different and easily distinguishable, the
entire allegation by Opponent of creating confusion among the public
is false and baseless. It is to be noted that both the marks are not
comparable as they are phonetically and visually different from each
other. It shall be noted that Opponent are claiming exclusivity on word
“RICH” whereas Applicant mark is “RICH NUTRITIONWALA

represented as . It is also denied that Opponent

impugned mark is well reputed or achieved goodwill. Nonetheless, we
call the opponent to prove the alleged similarity between the said
Trademark and the said impugned mark and further, ask the opponent
to prove the statements and claims made in the paragraph under
reference by means of clear and cogent documentary evidences. All the
allegation by the Opponent is denied in toto and furthermore put the
Opponent to strict proof thereof. Thus, it is explicitly clear that
Applicant said Trademark deserves registration and due to registration
and/or use of our said Trademark, no harm or injury will be caused to

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 the opponent, however, if the subject Trademark applied for
registration under the subject Application is denied registration, it will
be prejudicial to Applicant rights on the said Trademark which they
have conceived, coined and adopted honestly after due and profound
research. Furthermore, Applicant deny and do not admit that the said
Trademark is disentitled for protection in the court of law as there is
no scope of any infringement and/or passing off action, due to wide
dissimilarity between the opponent’s and Applicant’s respective
Trademarks. Thus Applicant deny that Applicant said Trademark
application is against 9 and 18 of the Trademark Act as adoption of
the said Trademark is honest and uniquely coined mark Moreover, due
to reasons as stated above, the registration of our said Trademark will
neither affect the public interest nor the purity of Register of Trade
Marks in any manner. Rest of the contents are denied and Opponent
are further put to strict proof thereof.

4. With reference to paragraph nos. 25 of notice of opposition:

Applicant vehemently denies with the contents of the paragraph and

further repeat that said Trademark “ ” is phonetically visually

different from impugned mark Further Opponent

claiming exclusivity on the word “RICH is highly impulsive as there are
many words under class 43 of nice classification consisting with word
“RICH”. Further, it is apparent that there is no phonetic, visual and/or
structural similarity between the said impugned mark and Applicant
said Trademark is unique creation of combination of two words “RICH

+ NURITIONWALA represented in artistic format . Applicant

do not understand as on what basis Opponent is saying that there is
every likelihood of confusion and/or deception on the part of the
general public due to registration and/or use of the said Trademark.
Applicant state and submit that, there are 26 alphabets in the English
vocabulary which are used to coin or invent any word in English.
Hence, all the words will have one or the other alphabets in common.
Thus, we state and submit that having a few letters in common cannot
be considered as a ground for deceptive similarity and opposition as

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stated by the opponent. Further, Applicant repeat and reiterate that

Applicant said Trademark is coined and invented word, not

conflicting with any other trademark, applied or registered, including
Opponents’ impugned mark. Thus, Applicant said Trademark is
distinctive enough and capable of distinguishing the services of the
Applicant from those of others including the services of the Opponent,
hence, the registration of the subject Trademark is not hit by the
provisions of Section 9 of the Act. Further, Applicant refer to their
statements and contentions made hereinabove and refer to the
apparent dissimilarity between the Opponent’s said impugned mark

and Applicant said Trademark and hence,

state and submit that the registration of the subject Trademark is not
hit by the provisions of Section 11(1), 11(3)(A) of the Act. In addition,

Applicant said Trademark if taken as a whole would leave no

space for any confusion and/ or deception and hence, the opponents’
claims are absolutely baseless and unjustified. Further, Applicant
submit that it is a well settled law that for the purpose of comparison,
marks ought to be considered as a whole and not in a dissected manner
(Hoffimann LaRoche & Co. Ltd v. Geoffrey Manners & Co. Pvt. Ltd. AIR

1970SC 2062). Accordingly, the present subject Trademark

has no similarity with the Opponent’s impugned mark

when there is no similarity between the said two marks, the question
of comparison of the said Trademark and the impugned mark,
likelihood of confusion and/or deception and/or passing off of services
does not arise and alleged reputation and goodwill of the said impugned
mark has no relevance, therefore, the present application is entitled for
registration. Accordingly, Applicant strongly denies that registration of
said Trademark is against the provision of Sections 9 , 11 and 102 of
the Trade Marks Act, 1999 and shall not penalized under section 103

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of the Act. Nonetheless, we call the opponent to prove the alleged
similarity between the said Trademark and the said impugned mark
and further, ask the opponent to prove the statements and claims made
in the paragraph under reference by means of clear and cogent
documentary evidences. Further claiming user does not mean that
impugned mark is well known mark as it is not mention in the list of
well known marks hence all their contentions are false and with
malafide intention to stop Applicant straight forward mark. However
Applicant repeats and reiterates that the Opponent’s impugned mark

and Applicant said Trademark are poles

apart. Thus, Applicant strictly deny and do not admit that the
registration and/or use of the said Trademark would take unfair
advantage of or is detrimental to the alleged distinctive character or
repute of the opponent’s said impugned mark. All the allegation by the
Opponent is denied in toto and furthermore put the Opponent to strict
proof thereof. Thus, it is explicitly clear that Applicant said Trademark
deserves registration and due to registration and/or use of Applicant
said Trademark, no harm or injury will be caused to the opponent,
however, if the subject Trademark applied for registration under the
subject Application is denied registration, it will be prejudicial to
Applicant rights on the said Trademark which they have conceived,
coined and adopted honestly after due and profound research.
Furthermore, Applicant deny and do not admit that the said Trademark
is disentitled for protection in the court of law as there is no scope of
any infringement and/or passing off action, due to wide dissimilarity
between the opponent’s and Applicant’s respective Trademarks. Thus
Applicant deny that Applicant said Trademark application is against
section 9, 11 AND 12 of the Trademark Act as adoption of the said
Trademark is honest and uniquely coined mark Moreover, due to
reasons as stated above, the registration of our said Trademark will
neither affect the public interest nor the purity of Register of Trade
Marks in any manner.
Further, the Opponent stated and submitted that the Applicant have
not claimed any use in the subject application as the Applicant have
applied for registration of the subject trademark as “proposed to be
used” with a bonafide intention to use the same in respect of the
services as applied for and the Trade Marks Act, 1999, itself has made

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 a provision that any mark can be applied for registration even if it is
proposed to be used, hence, the opponent’s contention to refuse
registration of the said Trademark just because the said Trademark is
proposed to be used is not at all valid or a valid ground for opposition.
Further, whether the subject trademark is applied on the use basis or
intent to use basis does not affect the rights of the opponent in any
manner considering the vast dissimilarity between the opponent’s
impugned mark and Applicant’s said Trademarks. On the basis of
above explanation, it is requested to Hon’ble tribunal to exercise its
discretion under section 18 (4) of the Act under our favour. Applicant

denies that registration of Applicant’s mark will be against

the principle of maintaining purity of the Register and thus said
Trademark is entitle for protection under section 12 of the Act. On the
contrary, Applicant’s state and submit that baseless and frivolous
notice of opposition like this ought to be dismissed in limini to preserve
and maintain the purity of the Register of Trade Marks and for
baseless, frivolous and misconceived claims of the Opponent,
Applicant’s put the Opponent to strict proof thereof.

5. With reference to the paragraph nos. 26 -28 of Notice of

Opposition, Applicant submits that prayers of Opponent is without
any merits and ought to be refused. The present opposition is filed
only with the malafide intention to delay the registration of present
application and obstruct justice and if the present application is
denied registration it shall cause us grave loss and irreparable harm
to the Applicant. Hence, it is humbly requested that since the balance
of convenience is in favour of the Applicant, the Ld. Registrar kindly
proceed with registering the present application by refusing the
present opposition. Applicant deny and do not admit what is stated
therein and put the Opponent to the strict proof thereof. Applicants
deny what is alleged and state to avoid unnecessary repetition,
Applicant’s state and repeat and reiterate what is stated herein
elsewhere and applicable. The Applicant hereby also refer to their
submissions made hereinabove in order to avoid
repetition/duplication of submissions and further, state and submit

that advertisement of the said Trademark in the official

journal without any condition/objection is itself a proof that

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Applicant’s said Trademark not conflicting with any of the
trademarks available on Register of Trade Marks including
Opponents’ impugned mark. In addition, the Applicant state and
submit that the said Trademark was adopted and applied with for
registration after conducting due research in the market and in the
Register of Trade Marks as well and after ensuring that no mark,
applied/registered/ in use, is similar or deceptively similar to their
said Trademark. Thus the Applicant applied for registration of the said
Trademark. The Applicant repeat and reiterate that they have
originated, conceived, coined and adopted the said Trademark

with a bonafide intention to use the same as a trademark

in respect of said services which is highly distinctive and capable of
distinguishing from Opponent impugned mark which is descriptive
word. Further as explained above Opponent is claiming exclusivity on
the dictionary and descriptive word for the impugned services and also
user claimed for impugned mark is not appropriate, thus Opponent
claiming impugned mark being well known is denied in totality which
is also not mention in the list of well-known marks. Thus Applicant
is the true, lawful and original owner and honest and bonafide adopter
of the said Trademark, accordingly, Applicant is the proprietor of the
said Trademark within the meaning and scope of Section 18(1) of the
Act and said Trademark is eligible for registration as per the
provisions of Section 18 and 11(10) of the Act. It shall be also noted
that both the marks are in toto different along with the servies as
explained above, thus this opposition is baseless and opponent is just
trying to stop Applicant Straight forward registration. Thus in view do
the above explanation given about stating differences of the both the
marks, it is submitted that Applicant mark is not contrary to the
provision 9, 11, 12, 18 ,28,29 and 103 of the Act but Applicant’s put
the opponent to the strict proof of whatever is stated in the paragraphs
under reference. It is reiterated that the instant opposition is an abuse
of the due process of law and the Opponent has no cogent reason for
initiating the instant proceeding except to unjustly delay registration
of the subject application. The applied mark is clearly qualified for the
further registration under Sections 9 (1) (a), 9 (2) (a), 11, 18 (1),18 (4)
28 ,29, 102 AND 103 of the Act. It is requested to Hon’ble tribunal to
exercise its discretion under section 18 (4) of the Act under our favour.

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 Applicant denies that registration of Applicant’s mark will
be against the principle of maintaining purity of the Register and thus
said Trademark is entitle for protection under The Trademark Act

E. In view of the above, Applicant pray that the instant opposition be

dismissed being malafide, unjust and unwarranted in facts and law,

filed with the sinister motive of thwarting our right to register our said

Trademark by statute and thereby abusing the process of law and other

provisions of the Trade Marks Act.

F. Applicant craves leave to modify, amend and/or add to or alter any of

the foregoing reasons and grounds.

G. In view of the above, respectfully submit that the Ld. Registrar be

pleased to exercise his discretion in our favour. It is, therefore, prayed

that:

a) Notice of Opposition No. 1203797 is refused.

b) Application for registration of the trademark under no.

5280315 in class 43 is allowed to proceed forthwith;

c) Costs of these proceedings be awarded to us; and

d) Any other order that the Registrar may deem fit to pass.

All communications in relation to these proceedings may be sent to the

following address in India.

LEMARK
2A/1 KESLEY RAMS NAGAR BORIVALI WEST MUMBAI 400092

Mumbai, dated this 15th August 2023

FOR,
MILAP DASHRATHSINH JADEJA (By their Attorney)

LEMARK
Enrollment No.: MAH/6440/2010

To:
The Registrar of Trade Marks,
Trade Marks Registry, AHMEDABAD

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 VERIFICATION

I Vaishali M. Savla, Attorney for the Applicant, MILAP DASHRATHSINH

JADEJA (herein after referred to as Applicant) having Address at A-404,

4TH FLOOR, SOLITAIRE CORPORATE PARK, NR. DIVYABHASKER PRESS,

MAKARBA, S.G. HIGHWAY-380054, AHMEDABAD do solemnly affirm and

state that whatever is stated in Para no’s A-D and 1 to 5 of the counter

statement are true to my own knowledge as well as based on the information

available with me and I believe the same to be true and paragraph nos. E-G

is merely prayers before this Hon’ble Tribunal. Solemnly affirmed at Mumbai

Solemnly affirmed at Mumbai )

Mumbai, dated this 15TH August 2023
Vaishali M. Savla
(MAH/6440/2010)

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