To, Date: 18/06/2018

The Registrar of Trademark,

Trademark Registry, CHENNAI

Sub: REPLY TO EXAMINATION REPORT(MIS-R) Dated on: 18/05/2018 16:17:42

Ref: Application Number: 3811116

Sir,
With reference to the above application, the point wise reply is as under: -

Reply attached seperately

SELVAM & SELVAM, ADVOCATES

Attorney [1110]
SS Ref: TMA-IN/3235 June 18, 2018

The Registrar of Trade Marks

Trade Marks Registry,
Intellectual Property Office Building,
G.S.T. Road, Guindy, Chennai-600032,
Tamil Nadu, India.

Dear Madam/Sir, Through online filing system

Application No. : 3811116

Trade Mark : XCHANGE (Device)

Class : 42

Applicant : ValueLabs LLP.

We write with regard to the above subject matter.

We acknowledge the receipt of the Examination Report dated May 18, 2018 and received by us on the same day

via email in respect of the above application.

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:

Relative grounds for refusal

The Trade Mark application has been objected on relative grounds of refusal under Section 11 of the Act stating
that the similar trademarks are already on record of the register of Trademark for the similar goods/service.

The following marks have been cited in the examination report:

Application No. Class Cited Marks

2587510 42
 3003339 42

It is however submitted that the cited marks will not pose a threat to the registration of the subject mark for the
reasons as stated under:

Visual Dissimilarity
At the outset, it is submitted that the subject mark and the cited marks are prominently dissimilar due to the

difference in their respective visual appeal. The subject mark is evidently visually dissimilar from the cited marks and

the same can be ascertained from the comparison below:

Subject Mark Cited Marks

Application no. 3811116 Application No. 2587510 Application No. 3003339

The subject mark and cited marks are distinct by virtue of their structural and virtual differences. The subject mark
is a word “Xchange” written in a stylized font in blue with the letter X in capital. The cited mark bearing application

no. 2587510 consists of the word “vxchange”, where the letter V is written in white within a green square. The cited
mark bearing application no. 3003339, consists of the word “acc-x-change” wherein “acc” and “change” are written

in green color with the letter “X” written in a stylized manner placed between them in black background.

The Indian judiciary in a plethora of cases has stressed on the visual dissimilarity to be one of the guiding factors to

decide on the confusion or deception between the marks. In K.R. Chinna Krishna Chettiar vs. Sri Ambal & Co.,

Madras & Anr [1970 AIR 146] it was duly held by the Hon’ble Court that “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 Vinayak Tea
Co. vs. Kothari Products Ltd [2002 (2) AWC 1448] “that a simple similarity in the name in the trademark 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

trademark (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.”

The mere similarity in the letters of the alphabet between two marks, cannot be considered as a sufficient ground
for rejection of a mark. At this juncture, it is pertinent to place reliance upon the pronouncement of the Bombay

High Court in Hiralal Parbhudas v. Ganesh Trading Company [AIR 1984 Bom 218], that “microscopic comparison

of words is impressible in examining a trademark.”

In light of the above precedents as well as the prominent visual and structural differences, it is submitted that a

person of average intelligence would be able to differentiate between the cited marks and the subject mark,
therefore leaving no scope of confusion or deception amongst them. It is brought to the kind attention of the

Learned Registrar that the subject mark and cited marks are visually dissimilar and state that the objection ought
to be waived.

Phonetic Dissimilarity

It is submitted that at one glance of the subject mark and the cited marks, the phonetic dissimilarities between the

marks cannot be ignored. It is pertinent to place reliance upon the judgement passed by the Bombay High Court in

J.C. Eno Limited vs Vishnu Chemical Co, (1940) 42 BOMLR 924 that “phonetic similarity plays a significant role of

distinguishing one ‘Mark’ from the other”. It is further submitted that the subject mark consists of a word “XCHANGE”
with no prefix or suffix. The cited mark bearing application no. 2587510, consist of the word “XCHANGE with a prefix

“V’. The cited mark bearing application no. 3003339, consist of the word “Xchange” with a prefix “acc”. Hence, the
objection on grounds of causing confusion that would be caused due to the similarity between the marks is non-

existent, as a common man of average intelligence would be capable of making out the disassociation between the
marks, especially since the subject mark is dissimilar to the cited marks in terms of its pronunciation.

Relying upon on Biofarma Vs. Sanjay Medical Store 1998 (18) PTC 671 wherein the Court laid down that “the

following factors have to be considered for deciding the application of deceptive similarity: the nature of the marks,

i.e. whether the marks are word marks or level marks or composition mark i.e. both word and level marks; the degree
of resemblances between the marks, whether they are phonetically, visually or structurally similar and hence similar

in idea; the nature of goods in respect of which they are used the trademarks; the similarity in the nature, character

and performance of the goods of the rival traders; the class of purchaser who are likely to buy the goods bearing the
marks; the mode of purchasing the goods and placing orders for the goods; and any other surrounding circumstances.”
Therefore, in view of the afore-mentioned precedents and arguments, it is humbly submitted that the subject mark

and cited marks are phonetically very dissimilar and will not cause any confusion or deception in the mind of the

common man and state that the objection be waived.

Difference in Specifications
It is submitted that there is dissimilarity between the subject mark and the cited mark in the specification of the

services in Class 42, as showcased hereunder:

Mark Specifications

Subject Mark Class 42

3811116 Information technology [IT] consulting services; Advisory and information

services relating to computer software; Software design and development;

Design and development of computer hardware; Research relating to the

development of computer hardware; Computer programming services;

Outsource service providers in the field of information technology.

Cited Mark Class 42

3003339 Establish, Maintain, Run, Develop and Design Website, Web Portal, Software,

Hardware which are included In Class 42

The Applicant through the subject mark in Class 42 exclusively deals with services relating to developing and

designing of computer software and hardware, computer programming, outsourcing, advisory and information
services etc. The services provided under the cited mark bearing application no. 3003339 relate to establish,

maintain, run, develop and design website, web portal, software, hardware which are included in Class 42. The

services provided by the cited mark deals with building websites. This clearly indicates the difference in the
specification of services. The Supreme Court in the case Mahendra and Mahendra Paper Mills Ltd v. Mahindra

Mahindra Ltd., [2002 (2) SCC 147], had held that “while deciding on similarity, factors such as the nature of the

market itself, the class of customers, the extend of the reputation, the trade channels and the existence of any

connection in course of trade must be considered.”

The Supreme Court in Vishnudas Trading as Vishnudas v. The Vazir Sultan Tobaccos. Ltd, JT 1996 (6), had held
that “if a trader or manufacturer actually trades 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 broad classification, such trader or manufacturer should not be permitted to enjoy
monopoly in respect of all the articles which may come under broad classification and by that process that preclude

the other traders or manufacturers to get registration of separate and distinct goods which may also be grouped under

the broad classification.”

Thus, it is submitted that the specification of services provided by the Applicant under the subject mark is in relation
to developing and designing of computer software and hardware, computer programming, outsourcing, advisory

and information services etc. The overall idea and the sphere of operation of the subject mark and the trade channel

is different from that of the cited mark bearing Application No. 3003339. It is highly unlikely that this vague similarity
of classes between the marks would create confusion or deception in the minds of a common man of average

intelligence.

Trademark to be seen as a whole

It is submitted that the subject mark is a unique representation of the Applicant’s business. Reliance ought to be
made on the well-known principle of ‘Trademark taken as a whole’. When the subject mark and cited marks are

taken as a whole, they are significantly dissimilar to each other.

It is brought to the kind attention of the Learned Registrar that according to Section 17 of the Trade Marks, the

subject mark ought to be examined as a whole and not in isolation. The afore-mentioned section states that when

a trademark consists of several parts, then the registration shall, confer over the proprietor exclusive right over the

trademark as a whole and not to parts of the mark. When taken as a whole, it is apparent that the subject mark and
cited marks are dissimilar.

It is relevant to place reliance on the judgement of Division Bench' judgment of the Calcutta High Court in Emami

Limited Vs. Three N Products Private Limited, 2010 LawSuit (Cal) 23, “by virtue of Section 17, identity or the
similarity of the marks has to be assessed on the basis of entirety of the marks as registered.”

Further, the Supreme Court in Amritdhara Pharmacy v. Satyadeo Gupta [AIR 1963 SC 449] observed that “the

standard of comparison to be adopted in judging the resemblance is from the point of view of a man of average

intelligence and imperfect recollection. It was held further that the two names as a whole should be considered for

comparison and not merely the component words thereof separately.”

Further, in Cadila Laboratories Ltd. V. Dabur India Ltd., [1997 PTC (17) 417] it was held that “As has been settled,

while ascertaining two rival marks, as to whether they are deceptively similar or not, it is not permissible to dissect the
words of the two marks. It is also held that the meticulous comparison of words, letter by letter and syllable by syllable,

is not necessary and phonetic or visual similarity of the marks must be considered.”

Therefore, it is humbly submitted that the subject mark when taken as a whole, is prominently different from the

cited marks, owing to their visual and phonetic dissimilarities.

The Calcutta High Court in Prem Nath Mayor v. Registrar of Trade Marks [AIR 1969 Cal 80], held that,

“Distinctiveness being primarily a matter of fact. Its totality of the impression, phonetically and visually which is the

test. If that totality of impression is likely to cause deception or confusion, then the identity is established. If not, then

they are dissimilar.”

It is imperative for the Applicant to get the subject mark “Xchange” registered and obtain exclusive right to use the

title and restrain the unauthorized use/adoption or infringement of the trademark. The rejection of registration

would be detrimental to the Applicant and not commercially viable.

About the Applicant

The Applicant of the subject mark is a leading global technology company specializing in Digital Enablement and

Product Development. Since its inception in 1997, it has established 25 offices, served more than 180 clients and is

currently employing more than 5000 employees. In 20 years of software delivery expertise, the Applicant has

acquired excellent reputation and goodwill. The Applicant has massively invested in partnerships, accelerators and

Research & Development labs. The Applicant is the registrant of the domain name valuelabs.com from as early as
December 21, 1999 where comprehensive information about the services of the Applicant can be accessed from

anywhere in the world, including India.

The Applicant has received several awards for its services such as the ‘Most Innovative IT Solutions Partner - India
2018’ by CFI.co. and 2014 Deloitte Technology Fast 500 Asia Pacific Award. It was also featured in the ’10 Most
Promising Product Outsourcing Companies – 2017’ in India by Silicon India magazine in their December 2017 issue;

featured in the list of 100 Best Companies for Women in India, 2017, by AVTAR and the Applicant was listed as one

of the 25 Most Recommended Quality Assurance Providers for 2016. These accolades stand testimony to the fact

that the Applicant has substantial goodwill and reputation. The customers of the Applicant will thus be able to
distinguish the services of the Applicant from the services of others in the trade. Relevant extracts evidencing the

above information is attached as Exhibit A.

In lieu of the afore-mentioned facts, it is evident that the subject mark is eligible for registration. Therefore, in order

to safeguard to uniqueness, we request the Learned Registrar to waive the objections under Section 11 and allow

the mark to proceed toward advertisement.

Should the Learned Registrar not be inclined to accept the application for registration, we request that no 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 provided under Rule 33(6) of Trade Marks Rule, 2017.

Sincerely,

For Selvam and Selvam

EXHIBIT A
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