Reply to objections -“consists exclusively of words or indications which may serve in trade to designate the quality”

23 Mar Reply to objections -“consists exclusively of words or indications which may serve in trade to designate the quality”

To,

The Registrar of Trade Marks,

Trade Marks Registry,

Intellectual Property building

Anna Salai, Industrial Estate,

Guindy, Chennai, Tamil Nadu 00032

Dated-22.03.2021

Sub: Reply to Objections under S. 9 (1) (a) Trade Marks Act, 1999 -Application number- 5850608 in class 41.

Ref: Your Examination report dated 23.02.2021 Sir,

The examiner of Trade Marks while examining the applied raised objections stating that the applied mark as the mark consists exclusively of words or indications which may serve in trade to designate the quality or other characteristics of the goods or service. I respectfully disagree with the decision of the learned examiner and submit my reply as under:

1.The device mark SIMPLE GOODNESS (DEVICE) was selected with elaborate research, continuous brainstorming and complete market survey with due respect to all provisions of Trade Marks Act including absolute grounds of refusal. The design is unique, eye-catching as well as unusual and decorative so it will be taken by the public as an indication of origin. The applied mark in multi colours including red, pink, blue, yellow and green. The colours are of memorable appearance and that will convey the significance of the trade mark to the average customer. The device mark is new and visually distinctive and it will be recognized as different to other marks in the market. The font and style of the letters are unique. The letter “OO” is converted into balloons and there is party cap on the first letter “S”. Therefore the mark is inherently distinctive in a trade mark sense. The letter D is presented in unique manner. The arrangement of letters is unusual and unparalleled. The mark is evocative and suggestive but not descriptive.  The expression “SIMPLEE” and “GOOD” followed by the tagline “The party place”  has meaning but no direct reference to services Party store, Party rentals, Online party store, Customized party supplies, Event management, Party planner in class 41.

The following are the distinctive elements presented in the device mark

2.I requested the learned examiner to consider the fact that the perception of the average customer for the services in question does not depend on the dissection

of the mark and on the examination of each feature of the mark. It turns on the feature which contributes most to the overall impression created by the whole mark. The mark as a whole is distinctive even though some characters are descriptive. The mark departs significantly from the norm and does not serve in normal usage from a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought. The applied mark is not purely descriptive. It is presented or configured in a manner that distinguishes the resultant whole from the usual way of designating the goods or services concerned or their essential characteristics. Therefore the imposition of S. 9 (1) (a) is not justifiable in the instant case.

3.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.”

5. Shri K. C. Kailasam, famous author has written in his book “Law of trade Marks “ that the Registrar in India refused registration of the trademark “Parivar” (meaning family) in respect of washing soap on the ground that the mark did not qualify for registration and that the use of the mark on the date of application was very short. The applicants filed a fresh application, again the mark was refused. An appeal to the High Court was allowed. The Court held that the Deputy Registrar’s finding that the mark was descriptive of the goods was incorrect. The mere fact that soap is used by the entire family is not sufficient to warrant the conclusion that the word “Parivar” was laudatory in respect of soap.
6. I draw the kind attention of the lenred examiner to a paragraph K. S. Savaksha has quoted in his Classic Book Law of trade Marks:

“The mere fact that an invented word has a covert reference to the goods is no objection to the registration of the word as an invented word. Thus, ‘Solio'” would be understood as having some reference to the sun, but nevertheless, it was held to be an invented word. Similarly, Ivlazawattee’, which was a combination of oriental words, was held to be an invented word,’ and so was Entozine.”

6. Learned author K. S. Savaksha has again written which I would like to quote in support of the acceptance of my trademark:

“The  following words, which were prima facie not distinctive, but were proved to have become distinctive, were accepted by the Registrar in India: ‘Fargo’ for motor cars; ‘Golden’ for ink; Pyari’ (Darling) for beedies; ‘Eveready’ for batteries; ‘Eversharp’ for pens and pencils; ‘Universal’ for soaps; ‘OK’ for gin; ‘Champion’ for plugs.”. ‘Liverpool”” for cables, ‘Brick’) for powder used as a boiler-water purifier, which was sold in the form of bricks, ‘Yorkshire'” for solid-drawntubes of copper and Vantanb2 for electric torches, were held to

be inherently incapable of distinguishing goods.

8. In Hindustan Petroleum Corporation Ld. v. Registrar of Trademarks, the order passed by the Deputy Registrar was reversed by the Bombay High Court. HPC had applied for registration of the word SEETUL in class 4 in respect of lubricants and lubricant specialties. Application was refused by the Deputy Registrar as the mark was considered to be descriptive of the goods (SEETUL meant cool, chilly, etc.) and also because it was a common personal name. The High Court held that “it is not permissible to import the prohibition under section 9(1)(d) of the Act unless the word has a direct reference to the quality or character of the goods. In the present case, the word SEETUL has no direct reference to the quality or character of goods, the Registrar was clearly in error”. The judge also held that there is no material to conclude that the word SEETUL is a personal name, much less a common feminine name. The Registrar’s order was set aside.
9. In Union Carbide & Carbon Corporation Appl, an application for registration of the trademark CRAG in class 5 in respect of fungicides, insecticides and herbicides was rejected by the Registrar on the ground that the mark was similar to “CRAGG” which occurred as a surname 25 times in the London telephone directory. Reversing the decision of the Registrar on appeal, LLOYD-JACOB J. held that in considering the distinctiveness of a mark in such a case, it is necessary to consider not only the likelihood that a person bearing the resembling surname may commence trading in goods for which the mark is registered but also the likelihood that such trading would cause that name to be applied to the goods.

9.In Ram Rakhpal v Amrit Dhara Pharmacy,” the following observation was made:

“A trade mark registrable under s 9(I)(d) can be an ordinary or common word having some significance, but it must not have any significance in relation to the goods to which it is applied. It is the significance of the designation, in connection with the goods upon which it is used, not its abstract significance which is determinative. For instance, ‘Plow’ cannot be a trade mark for ploughs, but can be a trade mark for tomato juice.”

While accepting Baby Dry for diapers, it was held:

“The signs and indications referred to in Article 7(1)(c) of Regulation No 40/94 are thus only those which may serve in normal usage from a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought. Furthermore, a mark composed of signs or indications satisfying that definition should not be refused registration unless it comprises no other signs or indications and, in addition, the purely descriptive signs or indications of which it is composed are not presented or configured in a manner that distinguishes the resultant whole from the usual way of designating the goods or services concerned or their essential characteristics.

As regards trade marks composed of words, such as the mark at issue here, descriptiveness must be determined not only in relation to each word taken separately but also in relation to the whole which they form. Any perceptible difference between the combination of words submitted for registration and the terms used in the common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics is apt to confer distinctive character on the word combination enabling it to be registered as a trade mark.

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