BEFORE THE REGISTRAR OF TRADE MARKS
IN THE MATTER OF APPLICATION
NO. 6202978 FOR REGISTRATION
OF TRADEMARK
IN CLASS 30 IN THE NAME OF DEL RICO
CREMERY LLP AT FLAT NO. NARANGI BAUG
SOC , GULISTAN BLDG 11 BOAT CLUB ROAD ,
PUNE -411001(herein referred to as applicant )
AND
IN THE MATTER OF OPPOSITION
FILED BY RICO APPLICANTS PVT.
LTD.
Subject: Filing of examination response to the Examination
Report dated 02/12/2025
(Under Section 21 of the Trade Mark Act ,1999)
The Applicant above named respectfully submits as under:
Preliminary Submissions :
1. The applicant , DEL RICO , has filed Application No. 6202978 in
class 30 for registration of its trademark in
respect of goods falling within the said class . The present counter
statement is being filed in response to the Notice of Opposition
submitted by RICO APPLICANTS PVT. LTD.
2. The applicant , save and except such matters as are expressly
admitted in the foregoing paragraphs hereof , specially denies each
and every allegation , representation contained in the Notice of
opposition and puts the opponent to strict proof thereof.
3. That the applicant had applied for registration of above trademark
with Bonafide intention to create and establish distinguish
trademark in the area of its working , so that the cunsumers and
other people dealing with the brand “DEL RICO” could recognize
the items easily . Therefore , they invent a trade mark
That the opponent has raised an objection vide examination
report dated 02/12/2025 , mentioned as below :
1. The impunged in respect of Ice Cream and
Sorbets includes in class 30 has been adopted by the applicant in
bad faith with an ulterior motive to illegally trade upon the
reputation and good will subsisting in the opponents trademark
RICO , Applicant has dishonestly with malafide intention adopted
visually , structurally and phonetically identical / deceptively
similar trademark to trade upon the good will and reputation
enjoyed by the opponents trademark. Considering the reputation
and awareness enjoyed by the oponents trademark it is evident
that the applicant was well – aware of such reputation and has
acted in a mala – fide manner while adopting the impunged mark
. The adoption of the impunged mark being dishonest and
fraudulent , registration thereof would be a negation of the
mandate enshrined in the preamble to the act which reads as
follows :
“ An Act to amend and consolidate the law relating to
the trademarks , to provide for registration and better
protection of trademarks for goods and services and for
the prevention of the use of the fraudulent trademarks.”
2. We submits that the impunged mark as sought to be registered is
neither distinctive nor is adopted to duistinguish the goods
/services of the applicant from those of others more particularly
opponents and is visually , structurally and phonetically
identical / deceptively similar to our prior adopted and prior used
trademark , and lacks distinctiveness which is a per – requisite
condition for registration of any mark. Therefore the registration
of impunged mark is prohibited under section 9(1) (a) of the
said act.
3. We submits that the applicant has applied for registration of the
trademark (Hereinafter referred as
“impunged mark”) under Application No. 6202978 in class 30
under the said act. The act on the part of the applicant to apply
for imounged mark identical / deceptively similar to our prior
adopted ; prior used trademark is in bad faith , motivated with
fraudulent and dishonest intention to trade upon the good – will
of our well known trademark under the provision of section 2(1)
(zg) read with section 11(6)of the said act. The use of impunged
mark by the applicant is likely to cause confusion and deception
in the minds of customers and is likely to deceive potential
customers and the dealers in the course of trade upon the
enviable goodwill and reputation acquired by us in the said mark.
4. We submit that by a mere look of two marks , it can be seen that
the applicant has slavishly and dishonestly adopted impunged
trademark . It is therefore obvious that the intention of the
applicant is to deceive and cause confusion in the minds of the
purchasing public to believe that applicant’s goods services are
from our business house and thereby cash in one hard-earned
reputation of our trademark and goodwill of our business .
Therefore the registration of the impunged mark would be
contrary to the provision of section9(2) (a) of the said act.
5. We submits that through continuous use and extensive
promotions , our said mark is embedded in the minds of
consumes . The use of identical /deceptively similar trademarks
is likely to cause confusion and deception in the course of trade .
It will result into applicant trading upon the reputation and
goodwill of our said mark. Therefore the registration of the
impunged mark would be contrary to the provision of section
11(1) (a) of the said act.
6. We submit that the applicant’s adoption of an identical /
deceptively similar trademarks will thereby cheat the unawary
customers . The use of impunged mark by the applicant will
cause embarrassment , unlawful loss and hardship to us
Therefore , the registration of the impunged mark would be
contrary to the provision of section 11(1) (b) of the said act.
7. The applicant has adopted the impunged trademark
with the sole intention of entering into a
unfair trade practice by attempting to pass of their goods or
having their goods passed off as those of opponent . By adopting
an identical/deceptively similar mark, the fraudulent intention of
the applicant is apparent , which is sufficient to debar their
application from proceeding to registration under the act. It is
clear that an attempt has been made with malicious intention to
mislead the customers and thereby earn illicit profits therefrom
and , therefore , the registration of the impunged trademark
would facilitate easy passing off under the reputed said mark
hence , is prohibited within the provision of section 11(3)(a) of
the act.
REPLY TO THE ABOVE SAID OBJECTION:
1. The applicant has applied trademark vide application number
“6202978 in class 30 for registration of its trademark
A. Response to objections under section 9 :-
(i) The allegations of non-distinctiveness and
descriptiveness are wrong and denied.
(ii) The mark is a distinctive
composite mark and is capable of distinguishing the
applicant’s good.
(iii) The mark does not describe the character , quality , or
nature of the goods in class 30.
(iv) Hence the objection under section 9 is unsustainable.
B. Response to objection under section 11 of the Act :
(i) The contention that the impunged mark is identical or
Deceptively similar to the opponent’s registered mark is
Expressely denied and disputed.
(ii) Marks falling for comparison must be considered in their
as wholes , and not subjected to dissection into individuals
components.
(iii) The prefix “DEL” differentiates the applicants mark from
the opponents mark in terms of visual appearances,
phonetic pronounciatio , and overall commercial
impression. No reasonable likelihood exists of confusion
or deception arising amongst the consumers.
(iv)The opponent is not entitled to claim proprietary
monopoly
rights over the expression “RICO”.
C. Alleged Prior Use and Reputation
(i) The opponent is put to strict proof of the alleged
prior
adoption , contionous use , sales, turnover,
advertisements expenditure and goodwill.
(ii) Mere averments without documentary evidence are
insufficient to sustain opposition proceedings.
D. Allegations of Bad Faith :
(i) The charge of dishonest adoption is vehemently
denied.
(ii) The application adopted the mark Bonafide ,
independently , and with utmost good faith.
IMPORTANT CASE LAWS :
Jindal Industries (P) Ltd. v. Jindal Sanitaryware (P)
Ltd. (2024): In a dispute involving the name "Jindal," the court
reiterated that while a proprietor cannot monopolize a common
surname as a word mark, the registration of a composite mark is
valid when considered as a unified entity. This protects an
applicant's right to use their identity in trade when the overall mark
is distinctive.
Muneer Ahmad v. Registrar of Trade Marks (2023): The Delhi
High Court overturned a refusal of the mark "BHARAT with the
device of a brush". The Examiner had dissected the mark, arguing
the "brush" was descriptive under Section 9(1)(b). The Court held
that viewing the mark as a whole—combining the word "Bharat" in a
distinctive style with the device—rendered it distinctive and
registrable.
Jindal Industries (P) Ltd. v. Jindal Sanitaryware (P) Ltd.
(2024): In a dispute involving the name "Jindal," the court
reiterated that while a proprietor cannot monopolize a common
surname as a word mark, the registration of a composite mark is
valid when considered as a unified entity. This protects an
applicant's right to use their identity in trade when the overall mark
is distinctive.
2. In light of the afore-stated cases, facts and submissions, it is
submitted that the Applicant’s trademark
is not liable to be objected under
Section 9 & 11 of the Trademarks Act, 1999.
3. BURDEN OF PROOF : The burden of proof entirely lies upon
the opponent to proof deceptive similarity and likelihood of
confusion.
In view of the foregoing , it is respectfully prayed that
this Hon’ble Registrar may be pleased to :
(a).Dismissed the notice of opposition filed by the opponent.
(b) Allow application no. 6202978 in class 30 to proceed to
advertisement and further registration;
© Grant such further relief as deemed fit and proper.
For the Applicant
DEL RICO