FORM TM-O
THE TRADE MARKS
ACT,1999
Notice of Opposition/ Application for Rectification of the Register
by cancelling or varying registration of a trademark
/Counterstatement /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
COUNTERSTATEMENT
In the matter of Opposition No. 1417937 to the Application No.
6246728 in Class 4 for the registration of a Trade Mark “Polo Lubricant”
with device , a copy of which has been received by us and
the same is filed within time
I, SHAIKH ZEBA JAWEEDSHAIKH proprietor of M/s Polo Industries,
having its place of business at House no. 8-22-907, Nehru Nagar,
Babar colony, Kat Kat gate, Opp. Masha Allah Function Hall,
Aurangabad, Maharashtra- 431001 being the Applicant hereby gives
notice that the following are the grounds on which I rely for my application.
WHOSE ADDRESS FOR SERVICE in India is Office No. 115, First Floor,
GD-ITL Tower, Plot No. B-8, Netaji Subhash Place, Delhi -110034
I. At the outset, I wish to state the true facts of
the case as under:
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1. The Applicant is a sole proprietor engaged in the business of
Industrial Oils And Greases; (Other Than Edible Oils And Fats
And Essential Oils) Lubricants; Dust Absorbing As Per Class 4
(hereinafter referred to as “the said goods”).
2. The applicant under the above brand has carved a niche among its
customers. The captioned mark has a wide presence along with its
inherent distinctiveness. It has acquired distinctiveness owing to its
uninterrupted and continuous usage in domestic market regarding the
said products; hence there is no likelihood of confusion. The
consumers of the applicant’s goods are aware of the source and origin
and are able to easily and conveniently distinguish the products from
those of different providers/manufacturers. Thus, the said trademark
in its present form has immense importance attached to it in the
particular industry.
3. With the most Growing brand and fast capturing and recognizing
brand in the Indian industry and the most competing product line, the
applicant products are used by various stake holders and are fast
spreading across the Indian market.
Preliminary objection to Opposition
That the Opposition is not maintainable as the applicant’s mark is not
similar/ identical to that of Opponent mark. It is a well-known
principle, that a trademark should always be considered and
scrutinized as a whole. The applicant’s application is bonafide and
honest and hasn’t copied the opponent trademark. The mark in the
report bears no similarity to the applicant’s mark. The mark should be
comparable and scrutinized as whole. As laid down by several
judgments, trademarks /logos have to be taken and read into totality
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and analyzed as a whole.
II. Referring to the specific averments of the opponent in
the opposition statement, we traverse as under:
At the outset, the applicant denies the motivated and misguided
projection of facts as stated and claimed by the opponent. The extensive
propaganda by the opponents to somehow oust the applicant by denying
the applicant’s just rights to use the Trademark and claiming it to be
similar to that of the Opponents without a slight similarity between the
marks shows the opponent’s malafide intention, because of which this
opposition petition should not be proceeded with and entertained by the
Learned Registrar. The applicant denies and disputes each and every
allegation raised in the notice of opposition, save and except what are
specifically admitted by the applicant and the opponent is put to the
strict proof of the statements and the allegations made in the notice of
opposition.
1. The applicant is a leading dealer of Industrial Oils And Greases;
(Other Than Edible Oils And Fats And Essential Oils)
Lubricants; Dust Absorbing As Per Class 4 The applicant is a sole
proprietor based on House no. 8-22-907, Nehru Nagar, Babar
colony, Kat Kat gate, Opp. Masha Allah Function Hall,
Aurangabad, Maharashtra- 431001.
2. The Applicant, has acquired enormous prestige and goodwill through
massive expansion of its business, and its trade names, trademarks,
businesses and entity name as a consequence, associated with a deep
sense of trust, quality and commitment as has always been delivered
by the Applicant.
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3. That in the year 2024, the Applicant honestly and bonafidely adopted
the Trade mark “Polo Lubricant” with device . That
the said trademark of the Applicant is conspicuous and distinctive
trademark which gives it a distinct appeal, attractiveness and
popularity amongst the consumers and general public. The applicant
has applied for the registration of mark “Polo Lubricant”
vide application no. 6246728 dated 05/01/2024 in
class 4 in respect of “Industrial Oils And Greases; (Other Than
Edible Oils And Fats And Essential Oils) Lubricants; Dust
Absorbing”. Further the mark is the creation of the applicant and not
similar with any existing mark and therefore Registrar of Trade Mark
after being satisfied with the originality of mark has advertised the
mark in trademark journal.
4. That in the year 2024, the Applicant honestly and bonafidely adopted
the Trade mark “Polo Lubricant” . That the said
trademark has been coined and adopted, for the first time in India for
the said goods, by the Applicant in January, 2024. That the said
trademark of the Applicant is conspicuous and distinctive trademark
which gives it a distinct appeal, attractiveness and popularity amongst
the consumers and general public.
5. That the Applicant has an honest intention regarding adoption of the
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trademark “Polo Lubricant” and cannot by any
means be said to be an attempt to acquire the statutory rights of the
Opponent or to ride on the reputation of the Opponent. The Applicant
is seeking registration in a different and distinct class of goods,
whereas the Opponent’s mark pertains to another class, and therefore
the nature of goods, trade channels and consumers are entirely
different, eliminating any likelihood of confusion. It is further
submitted that the mark is not the word “POLO” per se. The addition
of the word “LUBRICANT” and the Applicant’s distinctive device,
colour scheme and overall get-up gives the mark a separate
commercial identity and the marks, when compared as a whole, are
visually, structurally and phonetically distinguishable.
6. That the contents of this paragraph are denied. The foreign
registrations, even if any, do not by themselves confer exclusive or
superior statutory rights in India. Trademark rights are territorial and
are determined by registration and use within India. In the absence of
use, reputation or likelihood of confusion in respect of the Applicant’s
goods, such overseas registrations have no bearing on the
registrability of the Applicant’s mark “POLO LUBRICANT”
7. That The contents of this paragraph are denied. The Opponent’s claim
of exclusive rights over the artistic features, colour placement and
copyright is misconceived. The Applicant’s mark is an independent
and original device having a different overall get-up, trade dress and
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commercial impression, and has not been copied or derived from the
Opponent’s mark. hence, no question of copyright infringement or
passing off arises.
8. That the contents of this paragraph are denied. The worldwide
presence, number of outlets, licensees and online availability of the
Opponent’s goods are matters of their independent business and do not
establish any exclusive right over the word “POLO” in respect of
different goods. The Applicant is dealing in different goods under the
mark “POLO LUBRICANT” in a separate trade
channel and class, catering to a different consumer segment.
Accordingly, the possibility of confusion or association between the
Applicant’s goods and those of the Opponent does not arise.
9. That the contents of this paragraph are denied. The social media
following and online popularity of the Opponent are irrelevant to the
present proceedings and do not confer any monopoly over the word
“POLO” across all classes of goods. The Applicant’s mark “POLO
LUBRICANT” is used for different goods, trade
channels and consumer segment; therefore, no likelihood of confusion
or association with the Opponent arises.
10. That the contents of this paragraph are denied. The mere
registration or use of domain names and internet presence of the
Opponent does not confer any exclusive right over the word “POLO”
for all kinds of goods and services. The Applicant is using the mark
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“POLO LUBRICANT” for different goods in a
separate class and trade channel, and the consumers of the Applicant’s
goods are distinct. Hence, the Opponent’s websites, domain names and
online activities have no relevance to the present application and no
likelihood of confusion or association arises.
11. That the contents of this paragraph are Denied. The collaborations,
sponsorships, media publicity, digital platforms, metaverse activities
and charitable initiatives of the Opponent relate to its apparel and
lifestyle business and have no bearing on the present application. The
Applicant is using the mark “POLO LUBRICANT” in
respect of different goods in a separate class and trade channel,
catering to a distinct consumer base; hence, no likelihood of confusion,
deception or association arises.
12. That the contents of this paragraph are Denied. The celebrity
endorsements, media coverage and popularity of the Opponent’s
apparel and fashion products are unrelated to the present Proceedings.
The Applicant’s mark “POLO LUBRICANT” is used
for entirely different goods in a separate class, trade channel and
consumer base; therefore, such endorsements do not establish any
likelihood of confusion, deception or association with the Applicant’s
goods.
13. That the contents of this paragraph are Denied. The extent of
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advertisements and promotional expenses incurred by the Opponent
for its fashion and clothing business does not confer exclusive rights
over the word “POLO” in respect of all goods. The Applicant’s mark
“POLO LUBRICANT” is used for different goods in a
distinct class and trade channel, and the purchasers are specialised
buyers. Hence, the Opponent’s advertisements and publicity have no
bearing on the present application and no likelihood of confusion or
deception arises.
14. That the contents of this paragraph are denied. The quality
standards, awards and recognitions of the Opponent in relation to its
fashion and apparel business are unrelated to the present application
and do not grant monopoly over the word “POLO” for dissimilar goods.
The Applicant is dealing in lubricants under the mark “POLO
LUBRICANT” , which are different in nature, purpose,
trade channel and consumer class; therefore, no likelihood of
confusion, deception or association arises.
15. That the contents of this paragraph are Denied. The recognition and
sales of the Opponent’s clothing and lifestyle products in the field of
fashion are unrelated to the Applicant’s goods. The Applicant is using
the mark “POLO LUBRICANT” for entirely different
goods in a separate class and trade channel; hence, the Opponent’s
reputation in apparel cannot create any likelihood of confusion,
deception or association with the Applicant’s products.
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16. At the outset it is reiterated that the Applicant has applied for
registration of Trademark “Polo Lubricant” which is
different from opponent’s mark. The Applicant has made a public
search at the website of Trade Marks Registry and has come to know
that there are more trademarks other than the Opponent’s trademark
containing word POLO registered for the said goods, hence the
Opponent cannot claim any exclusive right over a common English
word. A person of average intelligence can easily notice the differences
between the two marks.
It is further submitted that distinctiveness is considered by taking
all the factors in consideration. We crave your kind attention and
rely on the decision of where in it was held that:-
"Distinctiveness must be considered by taking the mark as a
whole, all its various integers being considered in
combination. The true test is, what is the totality of the
impression that the mark produces."
Further as rules out by Parker, J. in Re Pianotist Co.s
Application (1906) 23RPC 774, page 777 also upheld in the
case of Griffiths vs Vick Chemical AIR1959CAL654, while
comparing two words “You must take the two words, you must
judge them by the look and by sound, you must consider the goods
to which they are to be applied, the nature and kind of customer
who would be likely to buy the goods. Consider all the surrounding
circumstances, as to what is likely to happen if each of those
trademarks is used in the normal way as a trademark for the goods,
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the respective owners of the mark. If there is likely to be confusion,
the application must be refused.”
17. That the contents of this paragraph are denied. The Opponent cannot
claim an absolute monopoly over the word “POLO”. The provisions of
Section 29(4) of the Trade Marks Act are not attracted in the present
case as the Applicant’s mark “POLO LUBRICANT” is
used for Different goods in a different class, having a distinct trade
channel and consumer base. The Applicant’s mark is a composite
device and is visually, structurally and phonetically distinguishable;
hence, no infringement, dilution or passing off is made out.
18. That the contents of this paragraph are denied. The mark “POLO
LUBRICANT” under Application No. 6246728 in
Class 04 is distinctive and capable of distinguishing the Applicant’s
goods. The application has been filed bona fide and in accordance with
the provisions of the Trade Marks Act. The mark is a composite device
and, considering the addition of the word “LUBRICANT”, different
class of goods and distinct trade channels, the requirements of
registrability are duly satisfied.
19. That the contents of this paragraph are denied. The Applicant has
adopted the mark “POLO LUBRICANT” honestly and
bona fide in the ordinary course of trade and is the true and lawful
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proprietor thereof. The allegation of malafide adoption or ulterior
motive is incorrect and baseless. The Applicant has valid and bona fide
reasons for adoption of the mark and is fully entitled to seek
registration under Section 18(1) of the Act.
20. That the contents of this paragraph are denied. The Applicant’s
mark “POLO LUBRICANT” is not identical or
deceptively similar to the Opponent’s mark. The marks differ in their
overall structure, appearance and commercial impression and must be
compared as a whole and not by isolating the word “POLO”. The
addition of the word “LUBRICANT” along with the Applicant’s
distinctive device, coupled with the fact that the goods fall in a
different class and trade channel, clearly distinguishes the Applicant’s
mark. The allegation of bad faith or dishonest adoption is baseless.
Considering the nature of goods and specialised purchasers, no
likelihood of confusion, deception or any nexus with the Opponent
arises.
21. That the contents of this paragraph are not admitted. The goodwill,
reputation or claim of the mark being well-known in respect of the
Opponent’s apparel and lifestyle business does not extend to unrelated
goods. The Applicant’s mark “POLO LUBRICANT” is
used for INDUSTRIAL OILS AND GREASES; (OTHER THAN
EDIBLE OILSAND FATS AND ESSENTIAL OILS) LUBRICANTS;
DUSTABSORBING as per class 4, which are different in nature,
purpose, trade channel and consumer segment; therefore, such
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reputation, even if assumed, has no relevance to the present
application and no likelihood of confusion or association arises.
22. That the contents of this paragraph are denied. Mere prior adoption
or registration of the Opponent’s mark does not bar registration of a
mark for dissimilar goods. The Applicant has applied for registration of
“POLO LUBRICANT” for different goods in Class 04
and the adoption is honest and bona fide. The allegation of dishonest or
bad faith intention is baseless, and the provisions relating to “earlier
mark” are not attracted in the absence of any likelihood of confusion or
association between the respective goods and trade channels.
23. That the contents of this paragraph are denied. There is no likelihood
of confusion or deception as the Applicant’s mark “POLO
LUBRICANT” is used for INDUSTRIAL OILS AND
GREASES; (OTHER THAN EDIBLE OILSAND FATS AND
ESSENTIAL OILS) LUBRICANTS; DUSTABSORBING as per class
4, which are entirely different in nature, purpose, trade channel and
consumer base from the Opponent’s apparel and lifestyle goods. The
marks must be compared as a whole and not by isolating the word
“POLO”. The Applicant’s composite device and the addition of the
word “LUBRICANT” clearly distinguish the [Link]-known
status of the Opponent’s mark, even if assumed, cannot prohibit
registration for unrelated goods in the absence of any connection in the
course of trade or likelihood of association. The purchasers of
industrial/automotive lubricants are specialised buyers exercising a
higher degree of care; hence, no confusion, dilution or association
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arises and the provisions of Section 9(2)(a) are not attracted
24. That the contents of this paragraph are denied. The Applicant’s mark
“POLO LUBRICANT” is neither identical nor
deceptively similar to the Opponent’s mark and is an independent
adoption. The goods of the Applicant are INDUSTRIAL OILS AND
GREASES; (OTHER THAN EDIBLE OILSAND FATS AND
ESSENTIAL OILS) LUBRICANTS; DUSTABSORBING as per class
4, which are entirely different from the Opponent’s goods, and are sold
through separate trade channels to a different class of purchasers.
Accordingly, no likelihood of confusion or association arises and the
provisions of Section 11(1) of the Act are not attracted.
25. hat the contents of this paragraph are denied. The provisions of
Section 11(2) are not attracted in the present case. The Applicant has
adopted the mark “POLO LUBRICANT” with due
cause and for bona fide use in relation to INDUSTRIAL OILS AND
GREASES; (OTHER THAN EDIBLE OILSAND FATS AND
ESSENTIAL OILS) LUBRICANTS; DUSTABSORBING as per class
4, which are entirely unrelated to the Opponent’s goods. The marks,
when compared as a whole, are distinguishable and are used through
different trade channels and for a different class of purchasers. There is
neither any unfair advantage being taken nor any detriment caused to
the distinctive character or repute of the Opponent’s mark. In the
absence of any likelihood of association in the course of trade, the
allegation of dilution, infringement or passing off is misconceived and
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the application is not liable to be refused under Section 11(2) of the
Act.
26. That the contents of this paragraph are denied. The Applicant’s mark
“POLO LUBRICANT” is used for distinct goods in
Class 04 through separate trade channels and for a different class of
purchasers, and therefore cannot result in infringement or passing off.
There is no misrepresentation, likelihood of confusion or connection
with the Opponent’s business. Accordingly, the provisions of Sections
11(2) and 11(3)(a) of the Act are not attracted and the application is
not liable to be refused on this ground.
27. That the contents of this paragraph are denied. The Applicant is not
claiming any benefit under Section 11(4) of the Act. The Applicant has
independently and bona fide adopted the mark “POLO LUBRICANT”
for different goods in Class 04, and no consent or
authorization from the Opponent is required as the marks and the
respective goods, trade channels and consumer base are distinct and
unrelated.
28. That the contents of this paragraph are denied. The well-known status
of the Opponent’s mark, even if assumed, does not confer an absolute
monopoly over the word “POLO” for all goods and services. The
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Applicant’s mark “POLO LUBRICANT” is a composite
device used for l INDUSTRIAL OILS AND GREASES; (OTHER THAN
EDIBLE OILSAND FATS AND ESSENTIAL OILS) LUBRICANTS;
DUSTABSORBING as per class 4, which are entirely different in
nature, purpose, trade channels and consumer segment from the
Opponent’s goods. There is no use without due cause, nor any likelihood
of confusion, association, unfair advantage or dilution. Accordingly, the
claim of extended protection and the prayer for refusal of the
application on this ground is misconceived and untenable.
29. That the contents of this paragraph are not admitted. The
distinctiveness and worldwide use of the Opponent’s trademark/labels
pertains to its own line of goods and does not establish exclusive rights
over the word “POLO” for all categories of products. The Applicant’s
mark “POLO LUBRICANT” is used for entirely
different goods in Class 04, through separate trade channels and to a
different class of purchasers; therefore, no association with the
Opponent arises.
30. That the contents of this paragraph are denied. Section 11(10) does
not create an absolute bar against registration of marks for dissimilar
goods. The Applicant has adopted the mark “POLO LUBRICANT”
bona fide and with due cause Under Class 04, which
are unrelated to the Opponent’s goods and are sold through different
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trade channels to a distinct class of purchasers. There is no bad faith,
unfair advantage, dilution or likelihood of confusion. Accordingly, the
provisions of Section 11(10) are not attracted and the application is
not liable to be refused.
31. That the contents of this paragraph are denied. The Applicant has
honestly and bona fide adopted the mark “POLO LUBRICANT”
and is the lawful proprietor thereof. The allegation of
bad faith is baseless. In any event, considering the dissimilarity of
goods, distinct trade channels and different class of purchasers, the
question of reliance on concurrent use does not arise and the
proceedings cannot be decided on such unfounded allegations.
32. That the contents of this paragraph are denied. The Applicant has
neither copied nor imitated the Opponent’s mark. The adoption of
“POLO LUBRICANT” is independent and bona fide
under Class 04. The marks, when considered as a whole, along with the
Applicant’s distinctive label/device and different nature of goods, trade
channels and consumer class, are clearly distinguishable. Hence, no
question of passing off, association or confusion arises and the
opposition is liable to be dismissed.
33. That the contents of this paragraph are denied. The existence of
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registrations of the Opponent in India or abroad does not grant
monopoly over the word “POLO” for all goods. The Applicant has
independently and bona fide adopted the mark “POLO LUBRICANT”
for Under Class 04 and not with any intention to
derive benefit from the Opponent’s reputation. Considering the
difference in goods, trade channels and consumers, no inference of
dishonest adoption or association can be drawn.
34. That the contents of this paragraph are denied. The Applicant’s mark
“POLO LUBRICANT” is not identical or deceptively
similar to the Opponent’s mark and is used for entirely different goods
in Class 04 through separate trade channels and to a different class of
purchasers. Accordingly, no infringement under Sections 28 or 29 of
the Act is made out, and the application is not liable to be refused on
this ground.
35. That the contents of this paragraph are denied. The application has
been filed on a “proposed to be used” basis in accordance with the
provisions of the Act and does not imply bad faith. The Applicant has
adopted the mark “POLO LUBRICANT” bona fide and
independently for Under Class 04. The existence of the Opponent’s prior
registrations does not bar registration for dissimilar goods, and
considering the different nature of goods, trade channels and
consumers, no likelihood of confusion or prejudice to public interest
arises.
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36. That the averments regarding Section 18(4) are misconceived and
denied. The discretion under Section 18(4) is to be exercised
judiciously and only where valid legal grounds exist. In the present
case, the Applicant’s mark “POLO LUBRICANT” is a
bona fide and distinctive composite mark Under Class 04, unrelated to
the Opponent’s goods. There is no likelihood of confusion, deception or
prejudice to the public or trade; hence, no reason exists to refuse the
application under Section 18(4) of the Act.
37. The marks in the report bear no similarity to the applicant’s mark “Polo
Lubricant” and hence the opponent’s claim is denied.
It is submitted that the registration of the mark would not be contrary to
the provisions of Section 9 (2)(a), 11 (1), 11 (2), 11 (3)(a), 11 (4), 11(6), 11
(10), 12, 18 (1), 28 and 29 of the Act.
38. That all the allegations made by the opponent have been vehemently
denied and sufficiently proved by the applicant along with evidences and
proofs.
39. The applicants pray that:
a) The application for registration bearing No. 6246728 in Class
4 for the trademark “Polo Lubricant” be
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allowed;
b) The opposition by the opponent be dismissed forthwith;
c) The discretion vested in the tribunal be exercised in favour of
applicant and against opponents and the opposition proceeding
be refused and;
d) Cost of the proceedings be awarded to the Applicants.
40. All communication in relation to these proceedings may be sent to the
following address:
Komal Ahuja
Office No. 115, First Floor, GD-ITL Tower,
Plot No. B-8, Netaji Subhash Place, Delhi -110034
For M/s Polo Industries
SHAIKH ZEBA JAWEEDSHAIKH
(Proprietor)
Dated this 09th day of February, 2026
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To,
The Registrar of Trade Marks,
The Office of the Trade Marks Registry, Maharashtra
VERIFICATION
I, Shaikh Zeba Jaweedshaikh, undersigned for the registration of the
above Trademark hereby give notice that the above mentioned are the
grounds on which I rely for my Application. I do hereby solemnly affirm and
verify that the contents of the aforesaid are true and correct to the best of
my knowledge and records available with me. The legal submissions are
based on legal advice received by me and are believed to be correct.
Nothing stated herein above is incorrect or false.
Dated this 09th day of February, 2026
For M/s Polo Industries
SHAIKH ZEBA JAWEEDSHAIKH
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(Proprietor)
Address: House no. 8-22-907, Nehru Nagar, Babar colony, Kat Kat
gate, Opp. Masha Allah Function Hall, Aurangabad, Maharashtra-
431001
To,
The Registrar of Trade Marks,
The Office of the Trade Marks Registry, Maharashtra
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