Attorney Code: 9287

FORM TM-O

THE TRADE MARKS ACT, 1999

Notice of Opposition to Application for Registration of a Mark

[Sections 21(1), 64, 66, 73, Rule 42(1)]

BEFORE THE REGISTRAR OF TRADE MARKS,

TRADE MARKS REGISTRY,
DELHI

IN THE MATTER OF Application No. 2649063 in Class 44 in respect of the

mark in the name of Huda Qazi D/O Qazi Shabir Ahmad

Trading As SRL Laboratories of the address Samad Plaza, Ground Floor,
Baghat Chowk, Srinagar, Kashmir (Jammu & Kashmir).

And

IN THE MATTER OF Opposition thereto by SRL LIMITED having its

registered office at Fortis Hospital, Sector 62, Phase – VIII, Mohali-160062 and
corporate office at GP-26, Sector-18, Udyog VIhar, Gurgaon- 122015.

We, SRL LIMITED, a company incorporated and registered under the

Companies Act 1956 having its Registered Office at Fortis Hospital, Sector 62,

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 Phase – VIII, Mohali-160062 and corporate office at GP-26, Sector-18, Udyog
VIhar, Gurgaon- 122015 (hereinafter referred to as the “Opponent”, which term
shall include its subsidiaries, affiliates, joint ventures, sister concerns,
predecessors-in-title, licensees and assignees), do hereby give notice of our

intention to oppose the registration of the mark advertised under

Application No. 2649063 in Class 44 for “Pathological Laboratory And Diagnostic
Centre” in the Trade Marks Journal No. 1786 dated February 27, 2017 at Page No.
6332 which journal was made available to the public on the same day:

The grounds of Opposition are as follows:

1. The Opponent, SRL Limited, is the largest Diagnostics Company in India
which provides superior quality diagnostics services to its customers through a
very efficient network of labs and collection points. The Opponent has over 3500
tests in its repertoire which is the largest menu of tests in India, 350 networking
laboratories including 4 Reference Labs, 4 Centres of Excellence, 40 Labs
Accredited by NABL, 2, Labs Accredited by NABH, 4 CAP accredited labs and
a footprint spanning over 5100 collection points as on 31 st January, 2017. The
company has labs in Dubai, Sri Lanka and Nepal, and also about 69 collection
points in various countries outside India as on 31 st January, 2017. The vision to
create SRL diagnostics was driven by the philosophy to provide high quality
accurate tests/outcomes at affordable prices to people. SRL is known for high
ethical standards synonymous with 'TRUST' and each and every constituent of
'Team SRL' follows immaculate value system.

2. The Opponent has contributed significantly in ‘revolutionizing diagnostic

services in India’ by ushering in the ‘most specialized technologies and
innovative services’. The Opponent’s ‘Research and Innovation division’ is ISO
certified and the Opponent’s Lab, SRL, was the first lab in the Private Sector
which was recognized by the Government of India's Department of Scientific and
Industrial Research. The Opponent provides wide range of tests, quality

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 diagnostic, prognostic and monitoring services to other path labs, private and
Government hospitals, clinicians and patients. The Opponent also provides
services of testing samples for the Multinational and Indian Pharmaceutical
companies/ CROs undertaking Phase III/ IV Clinical Trial work, thereby
supporting their international regulatory submissions.

3. The Opponent has always been committed to deliver quality services and
in order to achieve the high quality standards, the Opponent has a well-
established quality assurance program in place from the date of incorporation of
the Company in 07.07.1995 as Specialty Ranbaxy Private Limited, the name of
which was subsequently changed to Specialty Ranbaxy Limited on 07.07.1995.
The name of the company further changed to SRL Ranbaxy Limited on
25.11.2002 and thereafter, the name of company was changed again to Super
Religare Laboratories Limited on 28.08.2008 and finally changed to SRL Limited
on 06.07.2012 which is as on date is a well-known brand name in the field of
diagnostics and healthcare industry.

4. The Opponent has been conferred with many awards and recognitions for
their business ethics and social causes. Details of some of the recent awards
conferred on the Opponent are as under:
Year Award
2014  Security Strategist Awards 2015 Award from Indian Express
Group;
 VC Circle Healthcare Awards - Best Diagnostic Service
Company in 2014;
 Best Private Public Partnership initiative of the Year for
Himachal Pradesh project: Maharashtra Healthcare Leadership
Awards- 2014;
 Best Agency (Servicing Healthcare Industry) in the Asia
Healthcare Excellence Awards 2014, Singapore;
 Frost and Sullivan Award - Best Diagnostics Company in 2014;
 Development of Diagnostic Assays Using Advanced Molecular
Technology - best projects in the eINDIA Awards 2014;
 2nd Runner Upin "Golden Edge" Awards for 3rd Edition of
Healthcare CIO Summit
2015  The Best Diagnostic Service Provider of Year' Award at the Six
Sigma Healthcare Excellence Award-2015;

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  The World's Greatest Brands & Leaders 2015 - Asia & GCC
 Knowledge Management Leadership Awards 2015 at Asia
Pacific HRM Congress
 Business Technology Award 2015 in Healthcare for our Mobile
App My SRL;
 The CIOL C-Change Enterprise 2015 award for Oracle Right
Now CRM implementation under "Business Innovator"
category;
 Inc. India Innovative 100 Awards 2014, conferred upon us in
January 2015;
 4th Health Healthcare Leaders "Forum Award 2015 for SRL
Global Knowledge Forum in category of "Innovative Use of
Technology by a Diagnostic Service Provider" organised by e-
Health‚ March 2015;
 DQ Live (Cybermedia) Award in the category of "Cloud" for
CRM, March 2015;
 DQ Live (Cybermedia) Award in the category of "Enterprise
Applications" for MYSRL app in recognition of excellence in
implementation and use of technology for business
benefits‚ March 2015;
 CIOL C-Change Enterprise Awards 2015 under "Business
Innovator" category for "Oracle RightNow CRM"
implementation‚ March 2015;
 SRL had won the National Healthcare Excellence Awards, being
the Best Diagnostics Company in INDIA2015 conferred by
CMO;
 SRL has been adjudged the "Best Diagnostic Service Company
of the Year" in ASIA by CMO Asia in the Asia Healthcare
Excellence Awards in a grand ceremony held on 12th August,
2015 at the Pan Pacific, Marina Square, Singapore.
 SRL has been adjudged “Best Diagnostic Service Company” of
the year at the prestigious CMO Asia “National Awards for
Excellence in Healthcare in July, 2015
 The CIO, Mr Radhakrishna Pillai of SRL has been conferred
with   “India’s Best CIOs” Top 50  Award in July, 2015
2016  Frost and Sullivan Award for being Asia's Best Diagnostics
Service Provider of the Year 2016;
 CMO Asia's National Awards for Excellence in Healthcare as
the Best Diagnostic Services Company 2016 second year in a
row.
 ABP News Healthcare Leadership Awards 2016” in the
category of “Best Use of Technology by a Diagnostic Service
Provider” awarded on 23rd Nov, 2016

5. The Opponent has invested and continues to invest huge amount of

money into the promotion and publicity of the services provided by it on a

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 regular basis through a host of media, including advertisements through
electronic media.

6. The Opponent had also applied for the registration of the trademark SRL
and variations thereof. Details of which are set out below:
Application Trade Mark Class Date of Goods/Services
No. Application/
Use
1371221 42 July 14, 2005 Medical, Health &
Clinical Services
January 1, Included In Class 42.
2001
1371222 SRL 42 July 14, 2005 Medical, Health &
Clinical Services.
January 1, Included In Class 42.
2001
2664444 www.srlhj.com 35, January 21, Class 35: Advertising;
42 2014 business management;
and business
44 administration; office
functions.
Class 42: Medical
laboratory.
Class 44: Providing a
website on the
Internet.
2664445 16 January 21, Paper and Paper
2014 Articles; Printed
matters; Printed award
Certificates;
Newsletters;
Photographs;
Instructional and
teaching materials
Journals; Newspaper;
Books, Publications of
books and magazine,
Greeting and
Invitation cards,
Periodicals, Brochures,
Pamphlet, Catalogues,
Stationery; Office
requisites (except
furniture); Visiting
Cards, Envelops,

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 Letter heads, Posters,
Address Books,
Telephone Diaries and
Directories,
Photographs, Photo
Albums, Atlases,
Writing Instruments,
Calendars, Index
Cards, Prospectus,
Scrap Book;
3174663 44 February 2, Consulting services in
2016 the field of health and
nutrition; drug use
testing services; health
care services, namely,
providing diagnostic
medical testing and
delivery of results;
health, medical
counselling; nutrition
counselling; healthcare
and medical
diagnostic services.

7. The Opponent has spent and continues to spend substantial sums of

money in advertising and promoting the products/services under the mark SRL

and . The Opponent has taken an active role in promoting the

name and brand SRL by sponsoring numerous national and international events.

8. The trademark SRL is a fanciful word having no denotative meaning, and

is, accordingly, an inherently distinctive mark. The Opponent is, thus, the

proprietor of the trademarks SRL and by virtue of priority in

adoption, continuous use and extensive promotion. Due to the knowledge of and
recognition by the relevant sections of the consuming public on account of the
extensive sale of products under the SRL marks, the said trademark has come to
be exclusively identified and associated with the Opponent and none else. The

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 use by any other entity of the trademark SRL and/or , or any
deceptive and/ or confusingly similar variant thereof, will amount to a violation
of the Opponent’s rights.

9. Owing to decades of market presence and extensive promotion and

advertising, the Opponent's mark SRL are known and recognized by the relevant
section of the public. The trademark of the Opponent deserves protection as a
well-known trademark in India as defined in Sections 2 (zg) and 11(6) of the
Trade Marks Act, 1999 (hereinafter referred to as “the Act”) for the following
reasons:
(a) The Opponent adopted the trade mark SRL from the date of incorporation
of the company i.e. 07.07.1995, when no similar marks were in existence or in
use by any other entity.
(b) The services rendered under the mark SRL have become extremely
popular and now compete with the other established players in this business.
(c) The Opponent’s trademark has been extensively promoted and advertised
by the Opponent by expending huge sums of money so that the Indian and
the global consuming public recall the same to be exclusively
associated/connected/related only with the Opponent.

10. The present opposition is filed by the Opponent against the Applicant,
Huda Qazi D/O Qazi Shabir Ahmad Trading As SRL Laboratories (hereinafter
referred to as “the Applicant”) who has applied for the registration of the mark

(hereinafter referred to as the “Impugned Mark”), under

Application No. 2649063 dated December 25, 2013 in Class 44 in respect of
“Pathological Laboratory And Diagnostic Centre”.

11. The Applicant has adopted a deceptively similar mark to the Opponent’s
mark which can be adduced from a depiction of both marks in the table below:-

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 Opponent’s Mark Applicant’s Mark

SRL

The registration of the Impugned Mark would, therefore, be a negation of the

scheme and purpose of the Act as embodied in the Preamble thereto which reads
as follows:
"An Act to amend and consolidate the law relating to trade marks, to provide for
registration and better protection of trade marks for goods and services and for the
prevention of the use of fraudulent marks."

12. The Applicant is attempting to register the impugned mark, which

incorporates the Opponent’s marks SRL and in whole and is

deceptively and confusingly identical to the Opponent’s marks SRL and

. The Learned Registrar may note that the Applicant’s impugned

mark is identical in appearance, structure and phonetics to the Opponent’s marks

SRL and . The impugned mark applied for comprises the

Opponent’s well-known trade marks SRL and in entirety. The

nature of the Applicant’s mark is such as to deceive the public and cause
confusion. Further, there exists a real likelihood of confusion on the part of the
public, which includes a likelihood of association/ connection with the

Opponent’s marks SRL and , and consequently, the Applicant’s

impugned mark deserves to be refused in view of the provisions of the Section 11
of the Act.

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13. The Opponent’s marks SRL and , are well known marks
within the meaning of Sections 2(zg) and 11(6) of the Act on account of extensive
reputation and goodwill enjoyed by the said marks in India. It is submitted that
the registration of the impugned mark would not only amount to unfair
advantage to the Applicant, but also be detrimental to the repute and distinctive
character of the Opponent’s well-known trade marks and its services. The
registration of the impugned mark is accordingly liable to be refused under
Section 11(2) of the Act.

14. The use by the Applicant of its impugned mark is also liable to be
restrained by virtue of the law of passing-off. The Application is, therefore, liable
to be rejected under Sections 11(3) of the Act.

15. The Opponent, in its capacity as the owner of the earlier trademarks, does
not consent to the registration of the Impugned Mark and the Applicant,
therefore, is not entitled to rely upon Section 11(4) of the Act.

16. The dishonesty and mala fides of the Applicant are writ large. In view of

the fact that the Opponent’s marks SRL and is a fanciful word,
having no denotative meaning, the Applicant can have no justification
whatsoever for adopting the deceptively identical impugned mark.
Consequently, the adoption of the impugned mark by the Applicant entirely
lacks any bona fide intention and the Applicant cannot, therefore, claim
registration under Section 11(10) of the Act.

17. It is submitted that the Applicant, being in the same trade, are bound to
have been aware of the Opponent’s exclusive rights in the trademarks SRL and

. The Applicant with a dishonest and mala fide intention to ride

upon and benefit from the Opponents’ hard-earned reputation and goodwill, is
trying to register a mark which is deceptively similar to the Opponents’

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 registered trademarks SRL and . The Applicant’s adoption and use
of the Impugned Mark is in bad faith and, therefore, the Applicant cannot seek
any relief from the provisions of Section 12 of the Act, which stipulate that the
use must be both honest and concurrent.

18. The Opponent will also be damaged by the registration of the Applicant’s
impugned mark since the same will result in public confusion and may give
statutory recognition to the unlawful and illegal intentions of the Applicant.

19. The Applicant’s adoption of the Impugned Mark is not honest and the
Applicant cannot, therefore, claim to be the proprietor of the Impugned Mark. As
the adoption of the Impugned Mark is likely to confuse consumers, any alleged
use of the same for the similar and overlapping set of services is likely to be
detrimental to the exclusivity of the Opponent’s marks. The Applicant cannot be
the proprietor of the Impugned Mark and the Application is, therefore, contrary
to the provisions of Section 18(1) of the Act.

20. Under the facts and circumstances of the case and in the interest of the
purity of the Register and in the interest of the public and the trade in general,
we respectfully submit that this is a fit and proper case for the exercise of the
Registrar's discretion under Section 18(4) of the Act to refuse the application of
the Impugned Mark.

21. Registration of the Impugned Mark in the name of the Applicant would be
contrary to the provisions of Sections 11(2)(a), 11(2)(b), 11(4), 12, 18(1) and 18(4)
of the Act.

22. In view of the grounds set forth above, the Opponent prays that the
present Opposition be allowed and consequently that Application No. 2649063 in

Class 44 for the mark be refused registration. The Opponent also

prays that it be awarded the costs of these proceedings.

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All correspondence in relation to these proceedings may kindly be sent to the
following address for service in India:
SAIKRISHNA & ASSOCIATES
B- 140, Sector-51,
NOIDA-201 301
Phone: +91-120-4633900 Fax: +91-120-4633999
Email: [email protected]

Dated this the ____ day of June, 2017

_____________________
Advocate for the Opponent
Saikrishna & Associates

VERIFICATION
I, Reena Pal, Advocate, verify that I am acquainted with the facts of the present
case and state that the averments made in paragraph 1 to 8 are derived from the
records of the Opponent and believed to be true, the averments made in
paragraph 10 is based on the published records of the Trade Marks Registry, the
averments made in paragraphs 9, 11 to 21 are based on legal advice received and
believed by me to be true and the averments made in paragraph 22 are in the
nature of prayer to the Learned Registrar.

Verified at ___________on this the __ day of June, 2017

_______________________
Name and Designation
To,
The Registrar of Trade Marks
Trade Marks Registry
Chennai
Fee: Rs. 2500/-

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