Attorney Code: 14607

TM-O
THE TRADE MARKS ACT, 1999
BEFORE THE REGISTRAR OF TRADE MARKS
TRADE MARKS REGISTRY, MUMBAI

NOTICE OF OPPOSITION TO APPLICATION FOR REGISTRATION

OF A MARK

IN THE MATTER OF Opposition to Application No. 3373635 in Class 43 for

the mark ‘Fookrey THE LAZY LOUNGE’ in the name of Feroz Khan, D- 23,
Symphony Chs, Nahar Road, Chandivali, Mumbai - 400072.

And

In the matter of Opposition thereto filed by Gopal Kaushik, Haryana.

I, Gopal Kaushik, adult Indian, residing at 1124, Sector 14, Faridabad 121007,
in the state of Haryana, within the Union of India (hereinafter referred to as
"the Opponents") hereby give notice of my intention to oppose the registration
of the trade mark advertised under the above number in Class 43 in the Trade
Marks Journal No. 1878 dated 3rd December, 2018 at Page No. 5352, which
was made available to the public on the same date.

THE GROUNDS OF OPPOSITION ARE AS FOLLOWS:

1. The Opponent has been carrying on a renowned and well reputed business
for close to a decade of owning, managing and running India’s foremost pub/
lounge bar popularly referred to as THE LAZY DOG.

2. The Opponent submits that the trade mark THE LAZY DOG was the
nickname used by the Opponent’s friend to describe him. THE LAZY DOG
began as a brainchild of the Opponent and as a result of the entrepreneurial
spirit of the Opponent with the establishment of THE LAZY DOG in Manali in
April, 2008. The Opponent’s love for the outdoors and his free spirit spurred
him on to begin his quest with freedom and enterprise, that of THE LAZY DOG.
THE LAZY DOG currently graces the hill station of Manali and the dream
tourist destination of Goa.

3. The Opponent in the year 2008 adopted the trade name/ Service mark
THE LAZY DOG in relation to “restaurant, bar and hotel (services for
providing drinks & temporary accommodation)” and ever since its

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adoption, the trade name/ Service Mark THE LAZY DOG has become distinctive
of the services of the Opponent through continuous and consistent use thereof.
Further, the Service Mark THE LAZY DOG has acquired secondary significance
due to its uninterrupted, consistent and long use and the fact that the said
mark is exclusively associated with the services and/ or business originating
from the Opponent only. The main services offered through the said Service
mark are hospitality services including restaurant and fine dining, pub and
lounge bar.

4. It is submitted that the Opponent’s first pub/ lounge bar THE LAZY DOG
was set up in Manali in April, 2008 and became functional from July, 2008
onwards. The Opponent subsequently launched THE LAZY DOG pub/ lounge
bar in Goa from January, 2013 onwards. It is submitted that the restaurant/
lounge / pub THE LAZY DOG in Goa is housed in a Summer palace built by a
local Royal family in the 1900’s which adds its own blend to the aura of THE
LAZY DOG. The Opponent has been using the trade name/ Service mark “THE
LAZY DOG” since 2008 & onwards openly, continuously and extensively, and
the same have acquired a tremendous reputation and goodwill in the course of
trade. The said service Mark THE LAZY DOG is exclusively associated with the
Opponent only and none other.

5. It is submitted that in addition to its proprietorship in the mark THE

LAZY DOG, the Opponent also uses the mark as an integral and conspicuous
part of its trading name. Therefore whether it is from the Service mark
perspective or a trade name perspective, the only significance or association
the mark THE LAZY DOG has is with the Opponent alone and none other.

6. Furthermore, the Opponent obtained Domain Name registration for his

website www.thelazydog.in in June, 2008. It is submitted that when one clicks
on the Opponent’s website you are automatically linked/ connected to the
Opponent’s FACEBOOK Page.

7. It is submitted that the Opponent is the original and lawful proprietor of

the trade mark/Service mark THE LAZY DOG and has obtained statutory
protection of the same. Particulars of the registration in India are as follows:

Sr Service Registration Class Status

No. Mark No.
1. THE LAZY 2090479 dt. 43 Registered
DOG (Logo) 27th
January,
2011

The said registration is valid, subsisting and existing in force.

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8. The Opponent’s services under the trade name/ Service Mark THE LAZY
DOG has been widely publicised inter alia through print media and the internet
by way of articles and write-ups appearing in leading newspapers, magazines,
journals, etc. all of which enjoy a wide viewership, circulation and readership
all over India. In addition, many people in India and other parts of the world
access the Opponent’s website www.thelazydog.in and have become acquainted
with the Opponent’s services under the trade name THE LAZY DOG.

9. Apart from the consistent and open use of the services available under the
trade name / Service Mark THE LAZY DOG, the said trade name has also
featured in numerous articles and publications referring to the information
relating to the Opponent and the services available under this mark. It is
pertinent to note that these write ups that appeared in travel magazines, travel
guides, newspaper reports- variously describe the Opponent’s pub THE LAZY
DOG as “highly recommended” ; “Top Picks”, etc. The Opponent’s reputed trade
mark THE LAZY DOG finds mention in the International Travel Guide The
Lonely Planet as well.

10. The reputed character of the Opponent’s trade name THE LAZY DOG in
relation to its services is brought out by the consideration of the following
factors:

(a) The inherent nature of the mark and extensive and continuous use of the
trade name THE LAZY DOG since the year 2008 & onwards has resulted in
the mark being well entrenched in the minds of holiday goers, patrons and
consumers as being a mark of the Opponent alone;

(b) The Opponent’s services under the trade name/ Service Mark THE LAZY
DOG, being of highest quality, have generated immense reputation, goodwill,
command and exclusivity in the Services industry/ pub/ lounge bar circuit.;

(c) It is submitted that the reputed mark THE LAZY DOG being highly
distinctive and syntactically unusual and being adopted in an arbitrary
manner in relation to the impeccable services rendered by the Opponent, the
said trade mark is entitled to the highest level of protection.

11. The Opponent’s Mark “THE LAZY DOG” (Restaurant) has received several
positive, appreciative, favorable reviews on various Food and Travel Portals
such as Zomato, TripAdvisor as well as on its Facebook page.

12. As a result of the impeccable and effable quality of services rendered by

the Opponent, the Opponent’s services under the trade name /Service Mark
THE LAZY DOG has garnered revenues, which translate into enormous
goodwill and reputation amongst members of the trade and consuming Indian
public as well as foreign tourists. This has in turn rendered the trade
name/Service Mark THE LAZY DOG to be highly distinctive and exclusively
recognised and associated with the Opponent only and none other.

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13 The Opponent's trade name/ Service Mark which enjoys the highest
degree of inherent distinctiveness has been consistently used since the year
2008 & onwards, has earned publicity and popularity and is well recognised by
holiday goers, tourists, travelers and the public alike. The said trade mark is
therefore entitled to protection against misappropriation.

14. On account of priority in adoption, use, and extensive publicity, and

statutory protection thereof, the Opponent possesses the exclusive right under
common law and statutory law in respect of the mark THE LAZY DOG for its
services and is thus exclusively entitled to use the same. Any misuse of the
said trade mark THE LAZY DOG or any other deceptively and / or
phonetically/confusingly similar trade mark by a third party would be in
violation of the Opponent’s said statutory rights in the aforesaid trade mark.

15. The Opponent has been vigilant about misuse of its rights in its trade
mark and has also filed Suits against third parties attempting to infringe, pass
off and/ or misuse and misappropriate his reputed and renowned trade
name/Service mark THE LAZY DOG. In or about April, 2013 the Opponent very
successfully initiated a Suit being Suit No. 339 of 2013 [Gopal Kaushik V
Gastro Pub Private Ltd. & Ors.] before the Hon’ble High Court of Bombay
wherein the Hon’ble Court was pleased to grant relief against Infringement and
Passing off of the Opponent’s reputed trade mark THE LAZY DOG. The
Opponent craves leave to refer to and rely upon the same at the appropriate
stage of the present proceeding.

16. The present opposition is being filed against the registration of Application
No. 3373635 in Class 43, which has been advertised in the Trade mark
Journal No. 1878 dated 3rd December, 2018 at Page No. 5352 for registration
of the mark “FOOKREY THE LAZY LOUNGE” (hereinafter referred to as the
'impugned mark').

17. The Opponent submits that the impugned mark ' FOOKREY THE LAZY
LOUNGE ' sought for registration is deceptively and / or confusingly and / or
conceptually similar to the Opponents reputed trade mark THE LAZY DOG.
The impugned mark incorporates the essential elements of the Opponents
reputed trade mark, thereby being deceptively/ confusingly similar to the
Opponents reputed mark THE LAZY DOG of which the Opponent is the prior
adopter/user / exclusive proprietor thereof. In view of the fact that the
impugned mark applied for is deceptively similar to the Opponents reputed
trade mark/ name, customers and patrons would assume, that the services of
the Applicant under the impugned mark is emanating from the Opponent. The
Applicant in a very deceptive and sly manner has adopted a confusingly/
deceptively and conceptually similar mark in order to free ride/ ride upon the
immense reputation enjoyed by the services bearing the Opponents trade
mark. Furthermore, in addition to the rival marks being similar, the services
rendered by the rival marks are same/ similar. This clearly underlines the
dishonest and malafide intention of the Applicant. Therefore, there is bound to
be confusion and / or deception amongst the consuming public and those
patronizing the services bearing the impugned mark.

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18. The registration of the impugned mark is likely to be contrary to the
provisions of Section 2(1)(i) of the Trade Marks Act as the mark constitutes a
false description which would mislead the consumers and public in a material
way as regards source and origin of the goods. The consumers on coming
across the services bearing the impugned mark would be misled into believing
that the services/ products are coming from the Opponent, given the well
known character of the trade mark / name THE LAZY DOG.

19. The Opponent submits that the Applicant has neither adapted the
impugned mark to distinguish their services from others nor is it capable of
distinguishing their services in the course of trade. Therefore the mark applied
for does not qualify for registration within the meaning, ambit and scope of
Section 9 (1) (a) of the Trade Marks Act, 1999.

20. It is submitted that the registration of the impugned mark would

contravene provisions of Section 11 of the Act as the Act clearly prohibits the
registration of an identical and / or similar mark which are applied upon
related/ cognate/ allied services for which the earlier trade mark is registered.
The Opponent submits that his trade mark THE LAZY DOG is a reputed/ well
known trade mark and the use of the impugned mark is likely to result in –

a) Undue advantage of the reputation and goodwill subsisting in the

Opponent’s reputed trade mark and would be detrimental to its well known
character and reputation;

b) Inducing consumers and members of trade to falsely associate such use

as use originating from the Opponent or sponsored or endorsed by the
Opponent and thereby be led into a state of confusion and misrepresentation;

c) Impacting the Opponent’s extensive goodwill and reputation in its mark

which has been built through vast and continuous use, promotion and through
stringent quality controls and technological advancements;

d) Dilution of the exclusivity of the Opponent’s mark if third parties such as

the Applicant are allowed to register identical or similar marks and as a
consequence thereof there is availability of several third party goods or services
under similar/identical marks in the market.

21. It is submitted that the use of the impugned mark is likely to cause
confusion and/or deception. Thus registration of the impugned mark is
contrary to the provisions of Section 11(1) of the Act, as the impugned mark is
deceptively and / or conceptually similar to the Opponent’s earlier trade mark
coupled with the fact that the goods / services bearing the rival marks are used
in respect of similar services.

22. The Applicant is not the proprietor of the impugned mark. It is a settled
proposition that if adoption of the mark is tainted from its inception, no
amount of subsequent use can inure any benefit in the Applicant’s favour. The

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registration of the impugned mark contravenes section 18[1] of the Act as the
Applicant has furnished no justification for adoption of the impugned mark. It
is submitted that this is a fit case for exercise of discretion under Section 18[4]
against the Applicant. The registration of the trademark would be in negation
of the intent and purpose of the Act.

23. The Opponent submits that the adoption of the impugned mark is
dishonest and that there can be no logical explanation for adoption of a
deceptively similar mark. It is apprehended that the subsequent dishonest
adoption of the impugned mark would lead to passing off of the Applicant's
sub-standard services bearing the impugned mark. The Opponent submits
that the Applicant herein has dishonestly adopted the impugned mark with a
malafide intention to cash upon the Opponent’s reputed Mark. The Opponent
has been operating 2 restaurants in Manali and Goa bearing the mark / name
“THE LAZY DOG” both of which experience heavy number of footfalls on a
regular basis. Hence only dishonest and malafide intentions may be attributed
to the subsequent adoption of impugned mark by the Applicant in the same
state.

24. The Opponent further submits that the registration of the impugned mark
would lead to dilution in reputation of the Opponent’s reputed trade mark THE
LAZY DOG.

25. The Opponent’s Registration for Trade Mark THE LAZY DOG is valid,
existing and subsisting on the Register and, therefore confer upon them an
exclusive right to the use of the said trade mark and to restrain others from
using identical and / or deceptively similar mark/s within the provisions of
Section 28 and 29 of the Act. Thus registration of the impugned mark should
be refused as it contravenes the said Sections of the Act.

26. The Opponents categorically deny the user claimed by the Applicant and
put them to strict and cogent proof of the same. The Opponents submit that
the Applicants have adopted the impugned mark Fookrey THE LAZY LOUNGE
in order to cash in on the reputation of the Opponent’s well known trade mark.
The Opponents submit that they will put to loss and undue hardship, should
the impugned mark proceed to registration.

27. The registration of the impugned mark would be against the purity of the
Register.

28. In the circumstances, the Opponent submits that the registration of the
impugned mark would for the above reasons be contrary to the provisions of
Sections 2(1 )(i), 9(1)(a), 9(1)(b), 11(1), 11(2), 11(3)(a), 11(10), 18(1), 28 & 29 and
103 of the Act.

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29. The Opponent craves leave to add to and/or amend or modify or alter or
delete any of the foregoing paras, reasons and grounds.

30. The Opponent submits that the Learned Registrar ought to refuse
registration of the impugned mark “FOOKREY THE LAZY LOUNGE" under
Application No 3373635 in Class 43 in the exercise of his discretion under
Section 18 (4) of the Act.

31. In the circumstances, we pray that:

A]the subject Application for the impugned mark be refused;
B] the instant Opposition be allowed;
C] such further orders be passed and reliefs be granted as the learned Tribunal
may deem fit and necessary in the circumstances of the case, and
D] costs of these proceedings be awarded to us.

The Opponent respectfully requests that all communications in relation to

these proceedings may be sent to the following address in India:

Boazz Law Chambers

313, Churchgate Chambers,
5, New Marine Lines, Churchgate,
Mumbai 400 020.
Email ranni@boazzlawchambers.com
Ph No. - 022-22616426/28

Dated this day of February, 2019.

For Gopal Kaushik

(By His Advocate)

Rani Boazz
Boazz Law Chambers

To,
The Registrar of Trade Marks
Trade Marks Registry
Mumbai.

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Verification

I, Gopal Kaushik, sole proprietor, do hereby verify that the contents of

Paragraphs 1 to 15 of statement of case are true to the best of my knowledge
based upon records of the Opponent to which I have free and full access. The
contents of the paragraph 16 to 30 are based on information received by me
and believed to be true. Paragraph 31 is only a prayer before this Hon'ble
Tribunal.

Solemnly affirmed at .............. )

This day of February, 2019. )

Gopal Kaushik