XXXX
To:
XXX
XXX
COUNTER STATEMENT/ REPLY TO NOTICE OF OPPOSITION TO
APPLICATION FOR REGISTRATION OF A TRADE MARK
IN THE MATTER OF Opposition Case No. 1 to Application No. XXXX for the
registration of Trade mark “House Of Claire” filed by XXX and advertised
on XXXX.
AND IN THE MATTER OF OPPOSITION THERETO filed by XXXX of
CBI DISTRIBUTING CORP, whose address of service in XXX, Park Place,
XXXX.
I, XXXX, (herein after referred to as “the applicant”) of address XXXX, the applicant for registration of the Trade
Mark “XXXX” hereby give notice of Counter Statement to the Opposition that the
following are the grounds on which the Applicant relies for in support of the above
application.
1. The applicant submits that, she is engaged in the business of [ENTER NATURE OF
BUSINESS].
2. The applicant submits that on XXX, the applicant filed for registration of
Trade mark “XXX” (hereinafter referred to as the said Mark) vide application
number XXX.
3. The applicant also attached therewith certain documents as required and in the form and
manner as provided under the Trade Marks Act (“the said Act”). The said Application
was duly accepted by the Registrar of Trade Marks and duly advertised. The said
Application is subject matter of the present opposition.
4. The applicant submits that to distinguish their goods from the others’ goods, her business
has adopted the said Trademark “House Of XXX”.
5. The Applicant vehemently denies each and every statement, contention, averment and
allegations made by the opposition. First, the opposition alleges that the application was
made in bad faith. Further, the opposition alleges that the mark is confusing with the
opposition’s marks to wit,
XXXX
6. On the contrary, the applicant submits that a thorough market research and market survey
was conducted to ascertain whether any similar mark is which is existing and active
which is to the applicant’s applied mark. When none found actually in business, then a
thorough public search was conducted. Upon complete satisfaction that “XXXX is not likely to attract any provision of S. 37 of Trade Marks Act, the mark was
applied. The mark was examined and duly accepted before publication for advertisement,
which was a significant factor to prove the distinctiveness.
7. The opposition further alleges that the applicant is not the person entitled to registration
of the trademark because the applicant’s mark is confusing with a pending mark
application and an already existing mark. On the contrary, the applicant submits that she
is the owner and proprietor of the said mark who have honestly adopted the said trade
mark for the said goods. There is no intention to ride the coat-tails of the opponent’s
mark. The learned Registrar of Trade Marks was satisfied with the genuine business
interest of the applicant and therefore accepted the mark for publication for
advertisement. Therefore the opposition is frivolous and should be rejected.
8. The opposition also alleges that the applicant was not entitled to use the trademark in
Canada in association with its goods and services because the opposition had previously
used and applied to register a confusingly similar marks in association with services that
are similar to that of the applicant. On the contrary, the applicant avers that pursuant to
Section 6(2) of the Trade Mark Act, “[t]he test for confusion is one of first impression and
imperfect recollection and based on the vague or imperfect recollection of the ordinary
consumer or purchaser of the goods or services,” having regard to all the surrounding
circumstances, including the factors listed in Section 6(5) of the Act such as the inherent
distinctiveness of the trademarks or trade names and the extent to which they have
become known and the degree of resemblance between the trademarks or trade names,
including in appearance or sound or in the ideas suggested by them. See Bally
XXXX AG/Bally’s Shoe Factory Ltd v Big Blue Jeans Ltd/Ltée (1992), 41 CPR
(3d) 205 (FCT); XXXX Inc v Maximum Nutrition Ltd (1987), 14 CPR
(3d) 133 (FCT), rev’d on other grounds (1992), 43 CPR (3d) 349 (FCA)]. The applicant
avers that in particular, “the degree of resemblance is the factor […] likely to have the
greatest effect on the [confusion] analysis.” See Masterpiece Inc v XXX Lifestyles Inc
(2011), 2011 SCC 27 (CCC), 92 CPR (4th) 361 (SCC)].
9. At the outset, the Applicant states that the Opposition sought to be filed by the Opponent
is frivolous, vexatious, not tenable and the registration of Trademark “XXX”
has been sought to be opposed just for the sake of opposing the same. The opposition’s
mark(s) are completely different from the applicant’s. Their use is also completely
different. The Applicant’s Application for the registration of the said Trademark is bound
to be accepted and registered as such. There is no visual or phonetic similarity between
the word marks. Hence, the question of the similarities between the marks, as suggested
by the opposition, does not arise. Therefore, the marks are quite distinct to create any
confusion or deception.
10. In deciding the question of similarity between the applicant’s and the opposition’s marks,
the approach must be from the point of view of a man of average intelligence and
imperfect recollection. The marks must be compared as a whole. The true test is whether
the totality of the applicant’s trade mark is such that it is likely to cause deception or
confusion or mistake in the minds of persons accustomed to the opponent’s trade mark.
While ascertaining the question of deceptive similarity, the opposition is not authorized to
conduct a microscopic examination and both the visual and the phonetic tests must be
applied. Accordingly, in the present case, the applicant avers that all things considered,
(visually and phonetically) the applicant cannot see any real tangible danger of confusion
in the mind of the public which will lead to confusion in the goods. Notably, the
applicant’s Trade Mark “House Of Claire” is vastly different with the opposition’s
marks. The mere occurrence of letter “Claire” in the allegedly confusing trademarks will
not create any confusion in the mind of average customers who are circumspect by
general nature. The applicant strongly believes that there are no questions for any person
or public being misled and being led to believe that the applicant’s Trade Mark is similar
to the opposition’s. Accordingly, the first impression created in the instant case is that
both the marks are different from each other.
11. From the above mentioned points it is clear that the opposition’s marks and the
applicant’s mark are different from each other. Therefore the opposition is vexatious and
frivolous.
12. In the aforesaid circumstances, the Applicant states and submits that the opposition is not
entitled for any of the reliefs claimed in the Statement of Opposition.
13. The Applicant craves leave to file additional counter statement and/or modify, alter,
amend to and/or add to present counter statement.
The Applicant, therefore, prays that:
i. The Statement of Opposition filed by the opposition against registration of the mark
“House Of Claire”, applied under Application No. XXX be set aside.
ii. The Application No. XXXX filed for registration of trademark of the mark
“House Of Claire” in the name of CLAIRE LEGENDRE be ordered to be
registered on expiry of the statutory period;
iii. Costs of these proceedings be provided for;
iv. Any other further reliefs as the nature and circumstances of the case may require be
granted.
Dated: _________
______________________
XXXX
Cc
XXX
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