REPLY TO ABSOLUTES GROUNDS OF REFUSAL UNDER TRADEMARKS ACT, 1999

23 Mar REPLY TO ABSOLUTES GROUNDS OF REFUSAL UNDER TRADEMARKS ACT, 1999

To,

The Registrar of Trade Marks,

Trade Marks Registry,

Boudhik Sampada Bhavan,

Antop Hill, Mumbai- 400037

Dated-23.03.2021

Sub: Reply to Objections under S. 9 (1) (a) of Trade Marks Act, 1999 to application number- 5876991 in class 15.

Ref: Your Examination report dated 27.02.2021.

Sir,

I respectfully disagree with the decision of the learned examiner stating that the applied mark under S. 9 (1) (a) of Trade Marks Act, 1999 as the mark is non-distinctive and as such it is not capable of distinguishing the goods or services of one person from those of others.

1. The mark was selected with elaborate research after complete market survey with due respect to all provisions of Trade Marks Act including absolute grounds for refusal of Trade Marks. The applied mark
   INDOSPAIN is a hybrid expression coined out of two distinctive entities, i.e. something ambiguously and vaguely and with no definitiveness relating neither to France or French Society nor to Indian or Indian Society. The mark consists of a compound appellation therefore it is prima facie entitled to registration.

I draw the kind attention of the learned Examiner to the case law of Pondicherry Textile Corporation Limited Versus Assistant Registrar of Trade Marks 2004 (28) PTC 653 (IPAB) in which registration was sought for, “ANGLO FRENCH TEXTILES” in respect of yarns, fabrics, textile piece goods and readymade garment. The assistant Registration refused the Trademark holding that the name has geographical significance indicating that the goods are manufactured in that place, and the expression relating to a territory not registrable as it indicates that the goods are originating from England and France. However the IPAB reversed the decision and held as following:

“ The Assistant Registrar has erred in interpreting the expression `Anglo French’ as something belonging to England and France and further being indicative of the goods originating from England and France. `Anglo French’ is an expression which has been coined as a distinctive expression having no nexus in its ordinary signification to a geographical name. It is the duty of the Assistant Registrar to consider whether from the trade mark any ordinary person would come to the conclusion that the goods are manufactured from a particular place. Again the Assistant Registrar must ensure that the territory which is forbidden for being used for the purpose of registration must be an identifiable and specific territory with a locational situation. The expression `Anglo French’ is a hybrid expression that appears to have been coined out of two distinctive entities, i.e. something ambiguously and vaguely and with no definitiveness relating to England or to English society and similarly to France or French society. So is the position with respect to the expression like Indo-German etc…..

“A geographical name can only be prima facie capable of distinguishing the goods of a person from those of others when he can visualise of it that it is such a name as it would never occur to others to use as a trade mark in respect of their goods. In the present case, the mark `Anglo French’ is such a name that it would never occur to any person to use it as a trade mark. Furthermore, it does not relate to any particular city or place. Also the applicants have filed evidence of use of the mark from 1987 and they have disclaimed the word `textiles’. In view of the above, we are of the opinion that the trade mark `Anglo French’ could be registered.”

In the light of the above judgment the mark INDOSPAIN  should be registered as it has no reference to goods of musical instruments in class 15. It is such a name that it would never occur to any person to use it as a trade mark. No other traders would be interested to adopt such a name which is neither laudatory not descriptive of goods in class 15.

11. While accepting the trade mark EUROPREMIUM in the light of the acceptance of the mark ULTRAPLUS the European Court of Justice held that “when an undertaking extols, indirectly and in an abstract manner, the excellence of its products, yet without directly and immediately informing the consumer of one of the qualities or specific characteristics of goods and services in question, it is a case of evocation and not designation.”

Prayer: In view of the aforesaid circumstances and submissions, we humbly pray that the application be accepted and the trade mark be advertised as accepted for registration.

Thanking You.

Yours Sincerely,

Digitally Signed By

LOYAL CONSULTANCY