SHALLAKI DS 650 Opposition

BEFORE THE REGISTRAR OF TRADE MARKS,
OFFICE OF THE TRADE MARKS REGISTRY,

BOUDHIK SAMPADA BHAWAN, MUMBAI
FORM-TM “O”
NOTICE OF OPPOSITION
Sections 21(1), 73 & Rules 42, 43
IN THE MATTER OF
Application No. 6017450 in Class 05 in the name of SAHASRAYOG
VAIDYA SALA PRIVATE LIMITED having address at Shop no. 36,
Ground Floor, Sri Lakshmi Venkateshwara Nilaya, 4th Main Road, 2nd
Cross, Sir MV Nagar, Ramamurthy Nagar, Bangalore – 560016.
=================================
We, GUFIC BIOSCIENCES LIMITED, a Company incorporated under

the Companies Act, 1956 and having its registered office at 37, FIRST
FLOOR, KAMLA BHAVAN II, S. NITIYANAND ROAD, ANDHERI
(EAST), MUMBAI- 400069 and Corporate Office situated at SM House,
11 Sahakar Road, Vile Parle- East, Mumbai- 400057, hereby submit and
give notice of our intention to oppose the registration of the trade mark
“SHALLAKI DS 650” (Word) advertised under Application No.
6017450 in Class 05 in the Trade Marks Journal No. 2129. The said
journal was published made available to public on 06.11.2023. Hence,
filing of this opposition is in time.
The grounds of our Opposition are as follows:
PRIOR USE OF THE MARK BY OPPONENT

1. That the Opponent herein in connection with its well-established business,
conceived and adopted the mark “SALLAKI” (Word) vide Application no.
385295 dated 13.01.1982 under Class 5 as the trademark comprising of the
Word (SALLAKI in Capital) under the Trademarks Act, 1999.
2. It is submitted that the Opponent is the open and exclusive user of the
Trademark “SALLAKI”, under Class 5 since 1981 whereas, your mark has
a user claim as propose to be used only.
3. The Apex Court in American Home Products vs Mac Laboratories

Private Limited (1986 AIR 137) the court while dealing with the action
for injunction against infringement of a registered trademark held that for
the purposes of the registration of the trademark, it is not necessary that the
goods should be in existence at the date of the application for registration
and that in an infringement action, the plaintiff is not required to prove the
reputation of his mark.
4. The Hon’ble Supreme Court in the matter of S. Syed Mohideen v. P.

Sulochana Bai (MANU/SC/0576/2015), held that “The scheme of the Act
is such where rights of prior user are recognized superior than that of the
registration and even the registered proprietor cannot disturb interfere
with the rights of prior user.” Thus, due to its longstanding and continuous
use (since 1981) and outreach in India, the Trademark has become
distinctive in nature and is widely recognized.
THE MARK “SALLAKI” HAS ACQUIRED SECONDARY

MEANING
5. Secondary meaning refers to the process of acquiring distinctiveness.
When it comes to symbols that aren’t inherently distinctive, when, where,
and how secondary meaning was developed in the symbol determines
acquisition and priority of ownership.
6. That Opponent has filed the registration of the mark in 13.01.1982 and the
same has been identifiable as a brand for Pharmaceuticals Products. In
Mrs. Ishi Khosla vs Anil Aggarwal and Anr. (2007 (34) PTC 370 Del),
the Hon’ble Delhi High Court held that to acquire secondary
meaning/distinctive meaning it is not necessary that product is in the
market for number of years. If a new idea is fascinating and appeals to the
consumers, it can become a hit overnight.
7. Hence, Opponent’s mark has acquired secondary meaning by virtue of

long and extensive use by Opponent and hence your mark has infringed
Opponent’s mark.
THE TWO MARKS ARE DECEPTIVELY SIMILAR
8. It is pertinent to mention that where one mark contains the whole of the
other or its essential features, it is a factor to be taken into consideration. It
should be considered whether the individuality of the common part is lost
or whether the common part stands outs prominently. In the instant case
your mark “SHALLAKI DS 650” is deceptively similar to Opponent’s
mark i.e., “SALLAKI”.
9. The Delhi High Court in Vijay Foam & Company vs V.K. Bajaj &
Company [1994 PTC 19 (Del)] observed that the Plaintiff are the
registered proprietors of the mark ROYALL. The Defendants started using
the mark ROYALLTOUGH/ROYALL for similar goods the injunction
was granted on the ground that the Defendant’s mark is deceptively similar
to the Plaintiff’s mark.
BOTH THE MARKS PERTAIN TO SIMILAR CLASS OF GOODS

AND CUSTOMERS
10. The Hon’ble Supreme Court in Cadila Healthcare limited Vs. Cadila
Pharmaceuticals Limited (2001 PTC 541 SC) observed that adjudicating
authorities should consider requiring the applicant to furnish an official
search report from the Trade Mark office pertaining to the trade mark in
question which will enable the drug authority to reach a correct conclusion.
The Court penned down certain factors for determining deceptive
similarity between pharmaceutical trademarks, which include:
a. The nature of the marks i.e., whether the marks are word marks, label
marks or composite marks;
b. The degree of resemblances between the marks, i.e., similarity of idea
or sound;
c. The nature of products;
d. The class of purchasers, their education and intelligence and the
degree of care they are likely to exercise in purchasing and/or using
the goods;
e. The mode of buying the products or placing orders for the products;
and
f. Any other surrounding circumstances.
11. The Delhi High Court has also given some important rulings in this regard
and in one of the cases i.e., Bio-Chem Pharmaceutical vs. Astron
Pharmaceuticals, {2003 (26) PTC 200 (Del)} has observed
that trademark/name disputes in the pharmaceutical sector must be seen
through the prism of public interest where the correct manufacturer is held
responsible in case there is any problem with its pharmaceutical product
and conversely no innocent manufacturer is made to suffer an injury
because of the same name. Further, the Court has placed reliance on aural
similarity between medicinal products and while examining the similarity
between GENTAC and ZANTAC/ZINETAC marks has observed that a
large percentage of Indian population is unfamiliar with nuances of the
English language and may be confused.
12. Further, relying on the Cadila judgement, the Delhi Court has also
necessitated the need for drug authorities to consider requiring the
applicant to furnish a search report from the Trade Marks Office for the
brand name sought to be approved for the drug in question.
13. In view of the above judgements, it is clear that the Mark with respect
Class 5 of the trademark i.e., pharmaceutical’s products, your mark is
deceptively similar to Opponent’s mark and will cause confusion in the
eyes of the public.
14. Moreover, Public interest would support lesser degree of proof showing
confusing similarity in the case of trade mark in respect of medicinal
product as against other non-medicinal products. Confusion between
medicinal products may, therefore, be life threatening, not merely
inconvenient. There should be as many clear indicators as possible to
distinguish two medicinal products from each other, is not uncommon that
in hospitals, drugs can be requested verbally and or under critical pressure
situations. Many patients may be elderly, infirm or illiterate. They may not
be in a position to differentiate between the medicine prescribed and
bought which is ultimately handed over to them.
SIMILARITY IN IDEA MUST BE CONSIDERED
14. That with respect to wordmarks it is necessary to take into account the
meaning conveyed by the words or the ideas suggested by them, for words
are remembered not only by their sound and appearance but also by the
ideas suggested by them. Words conveying the same meaning or
suggesting the same idea are in general likely to deceive or cause
confusion.
15. That your mark operating on the similar context as to Opponent and both
the marks are held to be similar. That in Corn Products Refining Co. vs
Shangrila Food Products Ltd. (AIR 1960 SC 142) in which Gluvita was
held similar to Glucovita.
GOODWILL OF OPPONENT’S TRADEMARK
16. The earnest and indefatigable efforts of Opponent coupled with resources
and money were recognized worldwide in the form of extensive sale and
widespread publicity of Opponent’s business, resulting into its significant
national and trans-border market reputation and good-will. It is pertinent to
mention that Opponent’s company is Gufic Bioscience Limited.
17. Therefore, by virtue of extensive goodwill and reputation, Opponent’s

brand and its trademark 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
Opponent or its trademark or any of its formatives has become an
expression associated exclusively with Opponent alone and has become a
well-known mark associated exclusively with Opponent.
18. It is submitted that Opponent is an honest and uninterrupted user of the

trademark since the date of its creation.
19. The contents of the preceding paragraphs demonstrate that Opponent and
all its associated mark including the trademark hold:
a. Distinctiveness;
b. Immense market reputation and goodwill;
c. Opponent is the honest and concurrent user of its mark including the
Trademark and there is phonetic similarity between the said two
marks.
20. The Opponent crave leave to add, amend, and/or alter any of the grounds
of the opposition.
21. The Opponent, therefore, pray that:
a. the above application be dismissed and registration of the impugned

mark “SHALLAKI DS 650” (Word) vide application no. 6017450 be
refused;
b. costs of these proceedings be awarded to us, the Opponent in the
matter;
c. such other and further reliefs as the nature and circumstances of the
case may require, be granted.
M/S GUFIC BIOSCIENCES LIMITED
37,1st Floor, Kamala Bhavan II, Swami Nityanand Road, Andheri
(East), Mumbai – 400069

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BEFORE THE REGISTRAR OF TRADE MARKS,

OFFICE OF THE TRADE MARKS REGISTRY,

Sections 21(1), 73 & Rules 42, 43

We, GUFIC BIOSCIENCES LIMITED, a Company incorporated under

The grounds of our Opposition are as follows:

PRIOR USE OF THE MARK BY OPPONENT

3. The Apex Court in American Home Products vs Mac Laboratories

4. The Hon’ble Supreme Court in the matter of S. Syed Mohideen v. P.

THE MARK “SALLAKI” HAS ACQUIRED SECONDARY

7. Hence, Opponent’s mark has acquired secondary meaning by virtue of

THE TWO MARKS ARE DECEPTIVELY SIMILAR

BOTH THE MARKS PERTAIN TO SIMILAR CLASS OF GOODS

SIMILARITY IN IDEA MUST BE CONSIDERED

GOODWILL OF OPPONENT’S TRADEMARK

17. Therefore, by virtue of extensive goodwill and reputation, Opponent’s

18. It is submitted that Opponent is an honest and uninterrupted user of the

21. The Opponent, therefore, pray that:

a. the above application be dismissed and registration of the impugned

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