BEFORE THE REGISTRAR OF TRADE MARKS,
OFFICE OF THE TRADE MARKS REGISTRY,
FORM-TM "O"
(Form of Counter Statement)
In the Matter of:
Application Number 5153477 for trademark “TCL TROOP COMFORTS
LIMITED” in Class 25 in the name of Troops Comforts Ltd., TCL Head
Quarter, GT Road Kanpur (UP) – 208013, India.
AND
Opposition thereto by M/s. TCL Technology Group Corporation Ltd,
building 17 Huifeng 3rd Road, Zhongkai High Techonology Development
District, Huizhou, Guangdong, China dispatched to the Applicant vide
email dated 03.08.2024 and received by the Applicant on ____.
COUNTER STATEMENT ON BEHALF OF THE APPLICANT
Most respectfully Showeth:
1. Present Application has been preferred by the applicant seeking
registration of mark “TCL Troop Comfort Limited” (word mark)
(hereinafter referred to as the "trademark") under class 25. However, the
same has been opposed by M/s TCL Technology Group Corporation
Limited. (hereinafter referred to as the "Opponent") claiming that the said
mark is similar to its registered mark containing “TCL” under different
class. The Opposition herein deserves not to be considered on the grounds
and reasons mentioned in this Counter-Statement to the said Opposition,
signed by _______________________on behalf of the Applicant. A copy
of the Power of Attorney in favour of the signatory is filed along with these
proceedings and is marked as Annexure-A.
PRELIMINARY SUBMISSIONS:
DISTINCT CLASSES OF OPERATION:
1. The opponent and the applicant operate in distinctly different classes. The
applicant has filed the trademark in question under Class 25, which
encompasses clothing, footwear, and headwear. In contrast, the opponent,
TCL Technology Group Corporation, holds registrations under Classes 7,
9, 10, 11, 35, 37, and 42. Which encompasses electronics and machineries.
This table now clearly represents the marks, their respective classes, and
their status in the Indian registry:
Opponent Mark Application number Status Class
853943 Pending 9
1320027 Registered 7,9,11
1537232 Registered 42
1537233 Registered 37
TCL 1537234 Registered 35
TCL 1966658 Registered 10
TRADE MARK FROM DIFFERENT CLASSES:
2. It is a well-established principle in trademark law that identical or similar
trademarks can coexist in different classes without causing consumer
confusion, provided the nature of the goods and the market segments are
sufficiently distinct. In the landmark case of Parker-Knoll Ltd v Knoll
International Ltd [1962] RPC 265, the court ruled that despite both parties
being involved in the furniture industry, their respective markets and
branding were sufficiently different to prevent consumer confusion.
Applying this precedent, Troops Comfort Limited's trademark application
under Class 25 (clothing, footwear, and headwear) and TCL Technology
Group Corporation’s registrations under Classes 7, 9, 10, 11, 35, 37, and 42
represent distinct and non-overlapping goods and services. The fashion
industry served by Troops Comfort Limited and the technology and
industrial sectors served by TCL Technology Group Corporation cater to
different consumer bases, thus mitigating any likelihood of confusion.
Consequently, the coexistence of these trademarks is justified, further
supported by the legal precedent set in Parker-Knoll Ltd v Knoll
International Ltd.
TEST OF SIMILARITY/DECEPTION:
3. As per the test of similarity /deception laid down by the various courts,
when the two marks are taken in its entirety the Opponent's marks are
dissimilar and hence, there can be no scope of any confusion arising
between the cited marks and the subject mark. A bare look at the two rival
marks demonstrates that the marks are entirely different and the marks itself
operates in completely different trademark class.
Opponent’s Mark Applicant’s Mark
TCL Technology Group TCL Troops comfort Limited.
Corporation.
4. In Corn Products Refining Co. v. Shangrilla Food Products Ltd. (AIR
1960 SC 142), it is held by the Hon'ble Supreme Court of India that for the
purpose of the comparison, the marks should be compared as a whole and
not in parts.
5. To determine whether the marks are similar or identical to cause confusion
or deception it is well settled law that while comparing the marks we have
to take the mark as a whole, dissection of mark is not permissible. The
Supreme Court in Parle Products (P) Ltd. vs J.P. Co., Mysore, AIR 1972
SC 1359 has laid down the test to determine the question when a trade
mark is deceptively similar to another. Their Lordships observed at page
1362: "It is therefore clear that in order to come to the conclusion whether
one mark is deceptively similar to another, the broad and essential features
of the two are to be considered. They should not be placed side by side to
find out if there are any differences in the design and if so, whether they
are of such a character as to prevent one design from being mistaken for
the other. It would be enough if the impugned marks bear such an overall
similarity to the registered trade mark as would be likely to mislead a
person".
6. As cited in P. Narayanan, Law of Trademarks and Passing Off, Sixth
Edition, page number — 396 deals with American jurisprudence and also
determine likelihood of confusion by focusing on the question whether the
purchasing public would mistakenly assume that the applicant's goods
originate from the same source as, or are associated with, the goods in the
cited registrations. They make that determination on a case by-case basis,
In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973), those factors are:
i The degree of resemblance between the conflicting designations.
ii The similarity of the marketing methods and channels of distribution.
iii The characteristics of the prospective purchasers and the degree of
care they exercise.
iv The degree of distinctiveness of the senior user's mark.
v Where the goods or service are not competitive the likelihood that
prospective buyers would expect the senior user to expand into the
field of the junior user.
vi Where goods or services are sold in different territories the extent to
which to the senior user's designation is known in the junior user's
designation is known in the junior user's territory.
vii The intent of the junior user.
viii Evidence of actual confusion.
MERE PHONETIC SIMILARITY NOT SUFFICIENT TO
CONSTITUTE INFRINGEMENT
7. The Opponent’s argument of there being phonetic similarity between the
two marks is baseless and this argument by the Opponent cannot be a
reason for not registering the Applicant’s mark pursuant to the Judgement
by the Delhi High Court in FDC Limited Vs. Faraway Foods Pvt. Ltd.,
on February 10, 2021 in which the court said that “The two marks are so
dissimilar, both in their whole composition as well as visually, that no case
of infringement can be said to exist. Except for the phonetic similarity
between “MUMMUM” and “MUMUM”, no prima facie case of
infringement can be said to exist. Thus, the case emphasizes that, overall
impression put forth by the marks along with the possibility of actual
confusion, is to be considered. Merely, relying upon phonetic similarity
without any overlap of goods is not sufficient to claim infringement.
APPLICANT’S TRADEMARK IS COMPOSITE TRADEMARK
8. Section 17(2)(b) [1] of the Trade Marks Act, 1999 states that “when a
trademark contains any matter which is common to the trade or is
otherwise of a non-distinctive character, the registration thereof shall not
confer any exclusive right in the matter forming only a part of the whole
of the trade mark so registered”. This section prescribes that a trademark
must be viewed as an indivisible whole. Further, the trademark is the
whole thing, the whole picture on each. The true test is whether the totality
of the proposed trade mark is such that it is likely to cause mistake or
deception or confusion on the minds of persons accustomed to the existing
mark.
9. The Applicant’s Trademark is uniquely combined together i.e.,
Abbreviation and the description “TCL” and “TROOP COMFORTS LTD.”
which unique in its nature which ultimately makes it distinctive with
capable of distinguishing the goods or services of one person from those of
another person.
The Anti-Dissection Rule
10. The above statutory provision embodies the anti-dissection rule. In cases of
trademark infringement which involve composite marks, the anti-
dissection rule requires the Courts to consider the composite marks as an
indivisible whole rather than truncating or dissecting them into component
parts to determine deceptive similarity between the marks. This rule is
based on the notion that a typical prospective customer will be impressed
by the composite mark as a whole rather than its individual components.
Such a dissection of a trademark has been discouraged by the Supreme
Court while laying down the guidelines for comparison of trademarks, as
enumerated below, in Cadilla Healthcare Ltd. v. Cadilla
Pharmaceuticals Ltd. [2001 (2) PTC 541 SC]:
a. 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.
b. No meticulous or letter by letter comparison is required. Side by side
comparison is not the correct test
c. Comparison should be made from the point of view of a person of
average intelligence and of imperfect recollection.
d. 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.”
11. That in the matter B.K. Engineering Co. vs Ubhi Enterprises AIR 1985
Delhi 210 the Hon’ble Delhi High Court held that the manufacturers' name
B.K. Engineering Co. and the house mark "B.K." in the circular device are
a part of the "descriptive material" of the plaintiffs. The description is part
of their goodwill and a right of property.
12. The court in Griffiths vs. Vick Chemical AIR 1959 Cal 654 held that
“The true test is what is the totality of the impression that the mark
produces. The registrar has no power to dissect the mark and then conclude
that some components are distinctive and some are not distinctive and, on
that ground, direct registration of a part of the mark and refuse registration
of the other parts. He must consider the combination mark as a whole”.
13. Further, it is germane to mention that where there is at least one integer
which by itself is distinctive and which is sufficiently on the mark so as to
attract the attention of the customers and fix itself in their minds, the mark
as a whole may be considered distinctive.
14. In U foam vs Assistant Registrar AIR 1977 Mad 414, the mark consisting
of letter “U” with a crown device on the top and another consisting of the
expression “U-Foam” with a crown device on top of the first letter allowed
in Part-A in respect of mattresses, pillows, cushions and sponges.
DIFFERENT WAYS OF PRONOUNCIATION CONSIDERED
15. That the pronunciation of the product is also very important aspects while
dealing with the Class-25 of the Trademarks act, i.e., Clothing, footwear,
headwear. It is generally depending upon the first impression, for
obviously a person who is familiar with both words will neither be
deceived nor confused. With respect to that meticulous comparison must
be drawn out from the two wordmarks letter by letter.
UNIQUE COMBINATION OF DESCRIPTIVE WORDS AND
ABBRIVIEATION IS PROTECTED AS TRADEMARK
[Link] name "TCL Troops Comfort Limited" itself unequivocally
indicates that the company operates in the clothing industry, specifically
catering to the needs of troops. This clear and descriptive brand identity
underscores the company's focus on providing specialized apparel,
footwear, and headwear under class 25. In stark contrast, the opponent, TCL
Technology Group Corporation, is widely recognized for its involvement in
the electronics and technology sectors, as reflected in its name and
extensive trademark registrations under Classes 7, 9, 10, 11, 35, 37, and 42.
The opponent's brand identity is firmly rooted in technological and
industrial products and services, further distinguishing it from the
applicant's focus on clothing. This inherent difference in both the nature of
business and brand portrayal minimizes any potential for consumer
confusion, thereby supporting the coexistence of the trademarks in their
respective classes.
17. That the Applicant in its Trademark i.e., TCL Troop comforts Limited
has a unique combination of word mark and trademark, which
prominently featuring the term "Troops" alongside the abbreviation "TCL"
and the full designation "Troops Comfort Limited." This distinctive
branding unmistakably signifies the company’s operations within the
clothing industry, with a specialized focus on providing apparel tailored to
the needs of military personnel. Furthermore, the Applicant adheres to a
Business-to-Business (B2B) model, targeting institutional clients rather
than direct consumer sales. This approach inherently limits the trademark's
influence on the general consumer market, thereby reducing any potential
for confusion with the Opponent’s trademark. The court in Sky Enterprise
Private Ltd. vs. Abaad Masala and Co. observed that each individual
word forming part of registered trademarks ‘White Chinese Pepper
Masala’ and ‘Black Chinese Pepper Masala’ may be a descriptive word for
masala powder but it was held that no rival trader can use the particular
combination and order in which the Plaintiff uses these words in its
registered trademark to distinguish its goods as the particular combination
or order is not generally used in the trade for describing the character or
quality of goods. The competitors may be allowed to describe its product
as ‘pepper masala’; ‘Chinese masala’, or ‘black masala’ and they may even
write on the label that the product is a black masala made of pepper and is
for Chinese cookery but they cannot be allowed to use the same
combination as of the plaintiff.
18. The court noted that Individual words in the present case may be
descriptive, but their peculiar combination may create a unique appearance
or identity.
GOODWILL AND MARKET REPUTATION:
19. The earnest and indefatigable efforts of the Applicant coupled with
resources and money were recognized worldwide in the form of extensive
sale and widespread publicity of Applicant’s business, resulting into its
significant national and trans-border market reputation and goodwill.
20. Therefore, by virtue of extensive goodwill and reputation, Applicant’s
brand and its trademark(s) are entitled to protection across various classes
of goods and services, as having acquired distinctiveness over a period of
time due to its open, continuous and extensive operations, name of
Applicant or its trademark(s) or any of its formatives has become an
expression associated exclusively with the Applicant alone and has become
a well-known mark associated exclusively with the Applicant.
HONEST USE OF THE TRADEMARK BY THE APPLICANT:
21. It is most respectfully submitted that the Applicant is an honest and
uninterrupted user of the trademark since the date of its creation and that
the Opponent despite being aware of such usage of the mark by the
Applicant preferred not to oppose the same.
22. The law pertaining to honest concurrent use was laid down in Kores
(India) Ltd v M/s Khoday Eshwarsa and Son, wherein the Hon’ble
Supreme Court clearly held that the following facts are required to be
taken notice of while determining the registrability of a trademark under
the said provision:
a) The honesty of the concurrent use,
b) The quantum of concurrent use of trademark shown by the
petitioners having regard to the duration, area, and volume of trade
and to the goods concerned,
c) The chances of confusion resulting from the similarity of the
applicant's and opponent's trademarks, as a measure of the public
interest or public inconvenience
d) Whether any instances of confusion have been proved, and
e) The relative inconvenience that may be caused to the parties
concerned.
23. The Opponent has neither demonstrated any instances of confusion
resulting from the deception of the Applicant's trademarks, as a measure of
the public interest or public inconvenience nor has it produced any
documents to prove its bonafide towards usage of the trademark. Rather,
the Applicant has sufficiently demonstrated its honest and concurrent usage
of the trademark and as held by the Hon’ble Delhi High Court in Goenka
Institute of Education and Research v. Anjani Kumar Goenka and Anr
(2009, Del), where honest and concurrent use was established, the parties
must be allowed to continue using their trademarks.
24. Therefore, it is established that neither are their chances of confusion
resulting from the similarity of the Applicant's and Opponent's trademarks,
as a measure of the public interest or public inconvenience nor any
instances of confusion have been proved so far by the Opponent.
STATUTORY PROVISIONS
Section 12 of the Trademarks Act, 1999
25. As per section 12 of the Act, cases wherein use of a mark has been honest
and concurrent as in the case of the Applicant, the Registrar may permit
registration by more than one proprietor of the marks, which are identical
or similar and whether any mark is already registered or not in respect of
similar goods or services.
Section 17 of the Trademarks Act, 1999
26. As per section 17 of the Act, when a trade mark consists of several matters,
its registration shall confer on the proprietor exclusive right to the use of
the trade mark taken as a whole and not separately. Therefore, in the
present case, the Applicant’s and Opponents’ mark shall be considered as a
whole for comparison and not in bits and pieces. Relevant extracts of the
said provision are as under:
Section 17: Effect of registration of parts of a mark.
(1) When a trade mark consists of several matters, its registration shall
confer on the proprietor exclusive right to the use of the trade mark taken
as a whole.
(2) Notwithstanding anything contained in sub-section (1), when a
trade mark—
(a) contains any part—
(i) which is not the subject of a separate application by the proprietor for
registration as a trade mark; or
(ii) which is not separately registered by the proprietor as a trade mark; or
(b) contains any matter which is common to the trade or is otherwise of a
non-distinctive character, the registration thereof shall not confer any
exclusive right in the matter forming only a part of the whole of the trade
mark so registered.
PARA-WISE REPLY
27. All the contentions made in the said Notice of Opposition shall now be
dealt with para-wise.
28. The contents of paras 1 to 13 are beyond the knowledge of the Applicant
and thus, the Applicant is unable to reply the same. Nonetheless, the
Opponent be put to strict proof thereof.
29. The contents of para 14 are frivolous, wrong and thus, denied. The
contents of preliminary submissions be read as part and parcel of this
paragraph. The averment as regards the Opponent's marks being well
known are denied as till date, they are not reflecting in the list of well-
known marks in India.
30. The contents of para no. 15 are incorrect and are hence denied. The
contents of preliminary submissions be read as part and parcel of this
paragraph.
31. The contents of para no. 16-17 are incorrect and are hence denied. The
contents of preliminary submissions be read as part and parcel of this
paragraph.
32. The contents of para no. 18 are incorrect and are hence denied. The
contents of preliminary submissions be read as part and parcel of this
paragraph.
33. The contents of para no. 19-31 are denied being false and for the reasons
mentioned in the preliminary submissions, the contents whereof are not
reiterated herein for the sake of brevity.
34. The prayer clause is baseless, illegal, without any substance and therefore,
liable to be dismissed/rejected.
35. It is therefore, prayed that this Hon'ble Registrar may be pleased to reject
the Opposition filed by the Opponent with cost for filing a baseless
Opposition and allow the Applicant's present Application.
APPLICANT
Through
Mr. ____________
(Authorised Signatory)
Place:
Date:
VERIFICATION:
Verified at ___________on this ___day of July_____2024 that the contents
of Paragraphs 1 to ____are true to my knowledge and based upon official
records. Paragraphs ___to ___ are based upon the information received by
me and believed to be true. The paragraph ____is the prayer.
DEPONENT