Sub: REPLY TO EXAMINATION REPORT (MIS-R) Dated On: 25/05/2017 11:57:01 Ref: Application Number-3543126
Sub: REPLY TO EXAMINATION REPORT (MIS-R) Dated On: 25/05/2017 11:57:01 Ref: Application Number-3543126
Sub: REPLY TO EXAMINATION REPORT (MIS-R) Dated On: 25/05/2017 11:57:01 Ref: Application Number-3543126
Sir,
With reference to the above application, the point wise reply is as under: -
Dear Sir/Madam,
Application No : 3543126
Trade Mark : ICE (Device)
Class : 9
Applicant : INTELENET GLOBAL SERVICES PRIVATE LIMITED
__________________________________________________________________________________________
We acknowledge the receipt of the Examination Report dated June 06, 2017 and downloaded by us on June 28,
The Learned Registrar of the Indian Trademark Office has raised objections to the subject mark proceeding
towards registration and our response to the said objection is detailed below.
The Learned Registrar has raised an objection under Section 11 stating that the subject mark is identical with or
similar to earlier marks in respect of identical or similar description of goods or services and because of such
identity or similarity there exists a likelihood of confusion on the part of the public.
2 1204435 ICE 9
3 1340176 ICE 9
4 3065596 Ice 9
5 3260582 ICE 9
It is however submitted that the subject mark is not similar to the cited conflicting marks for the reasons stated
under:
Expired Mark:
We would like to bring to the kind attention of the Learned Registrar that as per the online status on the Trade
Marks Registry website, the renewal date of the cited mark bearing application no. 1097324 has expired and no
renewal has been filed till date. Accordingly, we submit that the cited mark ought not be considered as conflicting
and the objection be waived.
Relevant extract of Registry’s website Registry’s website evidencing the same have been attached herewith as
Exhibit A.
It is humbly submitted that the subject mark is visually very different from the cited mark bearing application no.
3260582. There is complete and total dissimilarity in visual representation, making the marks entirely distinct
from each other and thereby leaving no scope for deception or confusion. Since the subject mark as well as the
cited mark are device marks, their visual difference is key to their dissimilarity.
It has been stated by The Court in K. R. Chinna Krishna Chettiar vs Sri Ambal & Co., Madras & Anr [1970 AIR
146] “the resemblance between the two marks must be considered with reference to the ear as well as the eye.”
It has further been held by the Court in Zaruj Enterprises vs Ici India Ltd. [2003 (26) PTC 583] Reg.; Vinayak
Tea Co. vs Kothari Products Ltd [2002 (2) AWC 1448] “that a simple similarity in the name in the trade mark
alone is not sufficient to make out a case either of infringement or of passing off for in both the cases confusion or
deception is the essential element. For ascertaining confusion, one has to examine (a) the nature of the two marks
including the letters used, the style of using the letters, the device in which they have been used, the colour
combination of the trade mark (b) the class of customers (c) the extent of reputation (d) the trade channels (e) the
existence of any connection in the course of trade and (f)all other surrounding circumstances.”
It is submitted that the subject mark is visually very different from the cited mark as seen below in the comparison
table:
SUBJECT MARK CITED MARK
Therefore, the subject mark, when perceived in entirety, is totally different from the cited mark. It is therefore
submitted that the subject mark is visually and in overall dissimilar from the cited mark and there is absolutely
Furthermore, while deciding the similarity between two marks, in Mount Mettur Pharmaceuticals ... vs A
Wander [AIR 1977 Mad 105] the Madras High Court stated that, “that the primary tests are that the words should
In M.M.P. Ltd. v. O.P. Corporation [AIR 1975 Mad74] the Madras High Court stated, while commenting on the
dissimilarity between two marks, “when the words are written down and compared, they do not have any similarity,
In Anglo-Dutch, Colour & Varnish Works Pvt. Ltd. v. India Trading House [AIR 1977 Delhi 41] the Delhi High
Court after referring to decisions of the Supreme Court has laid down the following tests for comparing two
marks: “The question whether the two marks are so similar as likely to cause confusion or deceive is one of the first
impression. It is for the Court to decide this question. (ii) The question has to be approached by applying the doctrine
of fading memory, i.e. form the point of view of a man of average intelligence having imperfect recollection. (iii)
Whether the overall visual and phonetic similarity of the two marks is likely to deceive such man or cause confusion
that he may mistake the goods of the defendant for those of the plaintiff.”
It is hence humbly submitted that the marks when written down and compared or even when perceived at a
glance pose no threat to each other due to their dissimilarity. They are vastly different from each other and can
cause no confusion to a potential customer. We therefore, humbly submit that the cited mark is not visually
It is duly put forth that the Applicant is using the subject mark with respect to different set of services that do
not coincide with the services of the cited conflicting mark as can be seen below:
Namely Magnetic and Digital Disks and Tapes, Documentation, Sold as Unit,
1340176
Software for Tracking Materials and Controlling Inventory
Cited Mark- Class 9
3065596 Smart phones; Displays for smart phone; Mobile phones; Wearable smart
Wireless headsets for smart phone; Digital set top boxes; Leather cases for
mobile phone; Leather cases for smart phone; Flip covers for mobile phone;
Flip covers for smart phone; Application software; Software for mobile
phone; Software for television; Tablet computers; Monitors for computer;
Upon comparison, it can be established that the specifications of goods provided under the subject mark are
very distinct from the goods provided under the cited marks. The subject mark is coined and derived from the
first alphabets of the three words “ICE” “Intelenet Chat Experience”, and is honestly and bonafidely adopted
by the applicant and is distinctive mark. The subject mark provides software applications and software for
processing images, wireless network communications whereas the cited marks are engaged in pre-recorded
computer programs, software specifically designed to track materials and control inventory and smart phones
and their paraphernalia, and software for mobile phone, television etc. Since the products provided under the
subject mark and the kind of customers associated with it do not coincide with that of the cited marks, it is
Therefore, relying on the decision in Kedar Nath Gupta vs J.K. Organisation [71 (1998) DLT 818] where it was
held that “a simple similarity in the name in the trade mark alone is not sufficient to make out a case either of
infringement or of passing off for in both the cases confusion or deception is the essential element. For ascertaining
confusion one has to examine (a) the nature of the two marks including the letters used, the style of using the
letters, the device in which they have been used, the color combination of the trade mark (b) the class of customers
(c) the extent of reputation (d) the trade channels (e) the existence of any connection in the course of trade and (f)
all other surrounding circumstances”, it is submitted that the objections be waived on account of the apparent
difference in the specification of goods of the subject mark and the cited marks.
It is also humbly submitted that a broad classification of goods or articles does not allow a proprietor monopoly
over all such articles. This principle was emphasized in Vishnudas Trading as Vishnudas v. The Vazir Sultan
Tobaccos. Ltd.,[JT 1996 (6], it has been held by the Hon’ble Supreme Court in a case that, “If a trader or
manufacturer actually trade in or manufactures only one or some of the articles coming under a broad classification
and such trader or manufacturer has no bonafide intention to trade in or manufacture other goods or articles which
also fall under the said broad classification, such trader or manufacturer should not be permitted to enjoy monopoly
in respect of all the articles which may come under such broad classification and by that process preclude the other
traders or manufacturers to get registration of separate and distinct goods which may also be grouped under the
broad classification.”
It was held in Australian Wine Importers Case [(1889) 6 RPC 311] that, “if you come to look at the classification,
you will find goods of the same description in one sense in different classes, and you will find goods of different
descriptions in the same class." The test of similarity of goods and services is looked at from a business and
commercial point of view. The nature and composition of the goods/services, the respective uses and the trade
channels through which they are bought and sold all go into consideration in this context.
Other Conditions:
The Learned Registrar has also put forth a condition requiring certain amendments to the description of goods
for the subject mark. In accordance with the condition, the requisite Form TM-M incorporating the necessary
amendments has been filed and copies of filing receipt and the Form TM-M are attached herewith as Exhibit B.
It is also brought to the kind attention of the Learned Registrar that the Applicant INTELENET GLOBAL
SERVICES PRIVATE LIMITED, is a large global Business Process Outsourcing player. The Applicant is committed
to delivering the client’s strategic goals and helping in enhancing, broadening, and deepening the relationship
to add value. They provide business process services, powered by strong processes, consulting and technology
to enable world-class customer management solutions. Their operations consist of middle and back office skills
and capabilities across customer contact, transaction and financial processing, and related consulting and
technology services. The Applicant since its inception in 2001 has been providing innovative, cutting-edge
solutions supporting customers across, Banking, Financial Services and Insurance; Telecoms, Technology and
Utilities; Travel, Transport and Hospitality; Healthcare and Retail, Manufacturing and Services.
The Applicant has a current portfolio of more than 100 clients which includes the Fortune 500 companies, and
have operations spread across 70 global delivery centers across North & Central America, UK, Europe, Asia Pacific
and the Middle East. Over the last decade, the Applicant has consistently held on to the top rankers spot in
Nasscom BPO listings, and over the next decade aim to rise higher and take on the global BPO rankings with
The Applicant was ranked amongst the Nasscom’s top 10 BPOs in India, and Deloitte Technology Fast 50 India
in 2005. With the acquisition of Sparsh in 2006, the Applicant ranked as a “Leading BPO in India” with over 12
centers in 7 cities and a dedicated workforce of 9000 people supporting over 50 clients globally. Also in 2006,
the Applicant earned the ISO 27001 Certification to assure service delivery at global standards. Relevant extracts
In lieu of the aforementioned facts, it is quite clear that the subject mark is considerably different from the cited
marks and therefore we request the Learned Registrar to waive the objection under Section 11, and allow the
adverse orders be passed against the Applicant without giving an opportunity of being heard in the matter.
Accordingly, we hereby apply for a personal hearing in the matter as provided under Rule 33(6) of the Trade
Sincerely,
WARNING/DISCLAIMER : THE DATA OF TRADE MARKS REGISTRY IS UNDER THE PROCESS OF DIGITISATION, IF ANY
DISCREPANCY IS OBSERVED IN THE DATA PLEASE CONTACT OR SUBMIT AT APPROPRIATE TRADE MARKS REGISTRY
ALONGWITH SUPPORTING DOCUMENTS. THIS WILL HELP IN UPDATION OF ELECTRONIC RECORDS.
PRINT EXIT
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EXHIBIT B
Receipt No.: 1753251
Date: 27/07/2017
Amount: Rs.900/-
Ref No: A-3543126 Form
No: 760805
FORM TM-M
THE TRADE MARKS ACT, 1999
Application/Request for any miscellaneous function in respect of a Trademark
Application /Opposition/Rectification
under the Trade Marks Act
Temp# :1667033
REQUEST CORRECTION OF CLERICAL ERROR
OR FOR AMENDMENT U/R 37
FEE 900
APPLICANT OR REGISTERED PROPRIETOR/OPPONENT/THIRD PARTY MAKING
THE APPLICATNION/REQUEST
Applicant Name INTELENET GLOBAL SERVICES
PRIVATE LIMITED
Treading As NA
Address Intelenet Towers, Plot CST NO. 1406 -
A/28, Mindspace Malad (West), Mumbai –
400090, Maharashtra, India
Service Address Selvam and Selvam, Old No 9, Valliammal
Street, Kilpauk, Chennai - 600010, Tamil
Nadu, India
Mobile No NA
Email address tmo@selvamandselvam.in
AGENT OF THE APPLICANT OR REGISTERED
PROPRIETOR/OPPONMENT/THIRD PARTY AS THE CASE MAY BE(if any)
Agent Name SELVAM & SELVAM, ADVOCATES
Address NA
Mobile No 9940067841
Agent Email tmo@selvamandselvam.in
Nature of the Agent Registered Trade Marks Agent
Registration No NA
Class(es) 9
REQUEST / APPLICATION IN THE MATTER OF
APPLICATION NUMBER 3543126
REQUEST CORRECTION OF CLERICAL ERROR
OR FOR AMENDMENT U/R 37
Details Of corrections The specification of goods under Class 9
be amended so as to remove the
description- "Electronic communication;
Internet communication; Computerised
communication services". Therefore, the
amended specifications for the subject
mark under Class 9 should read as-
"Computer software applications;
Computer software for processing images,
graphics and text; Computer software for
wireless network communications;
Communication software; Computer
software for transmission of sound and
video messages."This amendment is in
furtherance of the Examiner's direction as
per the Examination Report.
Date 27-07-2017 11:20 AM
Digitally Signed By
PAGE No : 1
To, RECEIPT NO : 1753251
SELVAM & SELVAM, ADVOCATES FILING DATE : 27/07/2017 11:47:20
9/3, Valliammal Street, Kilpauk, Chennai - 600010 BRANCH NAME : MUMBAI
ATTORNEY : 1110 e-mail: tmo@selvamandselvam.in USER : selvam
Application Class No of Ref No. Party Party
S.N0. Form Description Party Name Amount(Rs.)
No Class Type Code
CORRECTION OF CLERICAL
INTELENET GLOBAL SERVICES
1 TM-M ERROR OR FOR AMENDMENT U/R 760805 9 1 3543126 Proprietor 2126629 PRIVATE LIMITED 900
37
Amount in Words Nine Hundred Total 900
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About Intelenet®
Intelenet® is a large global Business Process Outsourcing player, committed to delivering our client’s strategic goals
and helping in enhancing, broadening, and deepening the relationship to add value.
Backed by The Blackstone Group, a leading Global Private Equity player, with a current portfolio of clients that includes
Fortune 500 companies, we are a 55,000 people organization spread across 70 global delivery centers across North &
Central America, UK, Europe, Asia Pacific and the Middle East; supporting 110+ clients in over 50 languages.
55,000 110+ 50 8 70
Employees Clients Languages Countries Locations
Commencing operations in November 2001, Intelenet today supports 110+ clients in 50 languages with Contact Centre
solutions, F&A, HRO and IT solutions across Banking and Financial Institutions, Healthcare, Travel and Hospitality,
Telecom, Retail, Manufacturing, and Information Technology (IT) verticals.
Over the last decade, we consistently held on to the top rankers spot in Nasscom BPO listings, and over the next decade
aim to rise higher and take on the global BPO rankings with our focus on “customer experience” powered by
“technology” and “analytics”.
Affiliations
CEO Newsletter
Download
(download/newsletter/IntelenetCEONewsletter-
July2017.pdf)
Newsletter Archive
June 2017 (download/newsletter/IntelenetCEONewsletter-June2017.pdf)
Happenings
March 2017
20% of US Bank Branches to
Disappear by 2020
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Service Capabilities
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Sitemap (sitemap.html)
Contact us
Intelenet® Global Services Private Ltd
Intelenet towers
Plot CST No. 1406 - A / 28
Mindspace, Malad (West)
Mumbai - 400 090
Maharashtra, India
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About Intelenet®
Intelenet® is a large global Business Process Outsourcing player, committed to delivering our client’s strategic goals
and helping in enhancing, broadening, and deepening the relationship to add value.
Backed by The Blackstone Group, a leading Global Private Equity player, with a current portfolio of clients that includes
Fortune 500 companies, we are a 55,000 people organization spread across 70 global delivery centers across North &
Central America, UK, Europe, Asia Pacific and the Middle East; supporting 110+ clients in over 50 languages.
55,000 110+ 50 8 70
Employees Clients Languages Countries Locations
Commencing operations in November 2001, Intelenet today supports 110+ clients in 50 languages with Contact Centre
solutions, F&A, HRO and IT solutions across Banking and Financial Institutions, Healthcare, Travel and Hospitality,
Telecom, Retail, Manufacturing, and Information Technology (IT) verticals.
Over the last decade, we consistently held on to the top rankers spot in Nasscom BPO listings, and over the next decade
aim to rise higher and take on the global BPO rankings with our focus on “customer experience” powered by
“technology” and “analytics”.
Affiliations
CEO Newsletter
Download
(download/newsletter/IntelenetCEONewsletter-
July2017.pdf)
Newsletter Archive
June 2017 (download/newsletter/IntelenetCEONewsletter-June2017.pdf)
Happenings
January 2017
For Cash-Mukt India! 6 BPOs, 2
telcos and a consultancy
running helpline for free
- The Economic Times - Telecom
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Industry Solutions
With the rising number of Global customers, every industry needs to strengthen their capability to service customers in various
languages, at multiple time-zones through various contact channels.
Intelenet® is a Global BPO currently supporting multiple industries with customized services to suite the different customer lifecycle
approaches in a fundamentally strong operational environment.
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Services Capabilities
The services segment demands are high, and with brand equity and repeat sales on the line, on-time and on-budget delivery between
stakeholders is a must for all clients.
With such committed services now expected across every function at every corner of the globe, clients are in need of a service partner
who can meet their delivery and performance requirements without incurring higher capital expenditures.
Intelenet® is a service centric organization supporting our clients across industries and geographies with value driven operations that
are aligned to the clients’ goals.
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Business Process
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Today’s customer indulge in service interactions over in-
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expect all records to be logged irrespective of medium, with
explicit expectation of being serviced in a personalized fashion
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Proof of our partnering commitment to drive client’s technology performance is witnessed in our winning the TMC CRM excellence
award for in-house tools deployment 3 years in a row. Aside from these, in 2015 alone, we won the following awards:
Versatile CIO of the year Golden Peacock Excellence in Innovation Best in class CIO Award for Business
2015 Innovative Product / Awards 2014 Technology – Best Intelligence (Loading
Service Award - Rapid E-learning Tool- Station)
iResolve™ (CRM) I- Refresh
We have over 600 applications and tools that help us drive some elements of operational excellence as listed below.
To save executive time from compiling reports. It ensures accuracy and enhances management touch time.
To have a common platform for key business drivers and provide a clear direction for success by identifying metrics that set business
priorities.
To provide comparative analysis and drill down to an agent level on a real time YTD basis.
Apart from our homegrown tools, Intelenet® takes advantage of the technological advancements and deploys ready tools that are apt for
a contact center environment. For instance, Intelenet® has deployed an automated IVR based CSAT process for one of our UK travel
client for whom we service 30 million calls annually.
Intelenet® embodies many such technological advancements for client processes and works with stakeholders across the contract
journey to build such ‘Transformation / Innovation’ roadmap with technology advancements across the operations cycle.
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7/27/2017 Global Delivery Centers | Intelenet Global Services
Intelenet® has set-up delivery centers across countries to support clients with regional services and skilled resources in a
productive environment.
Our network spans across USA, Guatemala, UK, Poland, UAE, Saudi Arabia, Jordan, India, and Philippines
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Our centers in Fort Wayne, IN, Campbellsville, KY and Fargo, ND, along with our At-Home-Agents network are well
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equipped to effectively handle critical onshore processes.
Intelenet® Guatemala
Our center in Guatemala City, support Travel, Logistics & Hospitality, Financial Services clients with BPS services in English
and Spanish.
Our Guatemala operations primarily cater to US and LATAM clients, interested in efficient, compliant and secure process
management from nearshore locations.
Intelenet® UK
Intelenet® UK operations primarily cater to Travel, Retail and Financial Services clients from our center in Plymouth.
Our onshore capability spectrum cover UK based processes across the BPS cycle.
Intelenet® Poland
Intelenet’s center in Krakow serves as the hub for EU based processes, where we support clients with varying BPS
processes in English, German, Spanish, Italian, French, Swedish, Portuguese, Polish, and Dutch.
Our center supports Travel, Retail & Financial Services clients, across BPS cycle.
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These centers support clients across Travel, Logistics, Telecom and Financial Services clients with BPS services in English
and Arabic.
Intelenet® Philippines
Our Manila center is a hub for managing critical processes for global clients across the Financial Services, Hospitality,
Retail and Healthcare sectors.
This center provides strong offshore delivery support to clients with services across the BPS cycle.
Intelenet® India
Our 57+ centers across India supports Financial Services, Healthcare, Travel, Transportation & Hospitality, Utility, Retail
and Manufacturing clients with the entire BPS spectrum.
With access to over 20+ Local and International languages, our India delivery capability continues to retain its top position
in the India market.
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