Reply to Objections under S. 9 (1) (a) and S. 9 (1) (b) of Trade Marks Act, 1999

21 Mar Reply to Objections under S. 9 (1) (a) and S. 9 (1) (b) of Trade Marks Act, 1999

To,

The Registrar of Trade Marks,

Trade Marks Registry,

Mumbai/Delhi/Kolkata/Chennai/Ahmehabad

Dated-22.03.2021

Sub: Reply to Objections under S. 9 (1) (a) and S. 9 (1) (b) of Trade Marks Act, 1999 -Application number- 5859050 in class 12.

Ref: Your Examination report dated 01.03.2021. Sir,

The examiner of Trade Marks while examining the applied raised objections stating that the applied mark is a common geographical name and as such it is not capable of distinguishing the goods or services of one person from those of others. The learned examiner has also raised objections stating that The objection is raised under S 9(1) (b) of the Trade Marks Act 1999, as the mark consists exclusively of words or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service.

I respectfully disagree with the decision of the learned examiner and submit my reply as under:

Reply to S. 9 (1) (a)

1.The device mark Mumbai cylces device mark 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 is of memorable appearance and that will convey the significance of the trade mark significance 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. Therefore the mark is inherently distinctive in a trade mark sense. I request you to please consider the mark as a whole capable of distinguishing without considering the individual elements.

2. I draw the kind attention of the lenred examiner to a paragraph written by learned author K.C. Kailasam:

A.“ There are some insignificant geographical names which would be registrable as trade marks on evidence of use and acquired distinctiveness, such as `Glenfield” for starch, or “Stone” for ale,^I6 or a place which is devoid of any geographical significance in relation to the goods concerned, such as ‘North Pole’ for Bananas, ‘Monte Rosa’ for cigarettes, etc. Even the geographical name “Simla” in respect of cigarettes, which by a strict standard was not accepted under the old law, may perhaps now qualify for consideration.”

 B.The applied mark not a mark which traders in business usually employ for the purpose of describing the character or quality of their goods in class 12. Learned author K. C. Kailasam has again written which I would like to quote in support of the acceptance of my trademark:

“Where the geographical name used as a trade mark is wholly arbitrary and fanciful with respect to the goods concerned, no reason appears for denying protection to the first user/applicant. The courts have often referred to the example of “North Pole” for bananas or ice cream, “Congo” for shoe polish, and “Alaska” for menthol cigarettes.

C.When the geographical name has another signification and the latter is much more generally known than the geographical name, the right to such a trade mark should be recognized. “Magnolia” is the name of a tree and better known as such than as the name of a small summer resort Massachusetts. The English Courts upheld the trade mark “Magnolia” for metal goods.”

D.Some case where registration of geographical names were permitted such as “Apollilaris” in respect of mineral water. “Califomia Syrup of Figs” for laxatives. California Fig Syrup Co.’s. Appizo.”Itala” in respect of Motor vehicles. 21.”

Prayer: In view of the aforesaid circumstances and submissions, we humbly pray that the objections under S. 9 (1) (a) please be waived and the application be accepted and the trade mark be advertised as accepted for registration.

 Reply to S. 9 (1) (b)

3.I requested the learned examiner to consider the device mark Mumbai cylces as whole and not to analyze it part by part. 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. Furthermore, a mark composed of signs or indications satisfying that definition should not be refused registration. 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) (b) is not justifiable in the instant case.

4.As regards trademarks 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. Talking the applied mark as a whole the imposition of S. 9 (1) (b0 is not justifiable

5.The Court held that a mere suggestive significance in connection with the goods would not render it inappropriate for use as a trademark. The same was discussed in the matter of People Interactive (India) Pvt. Limited v/s. Vivek Pahwa [2016

(6) AIR Bom R 275]. The relevant portion of the judgment is produced in verbatim herein below:

A.“11. …In the third category we have suggestive words. These only hint at a feature or a specialty. The consumer must, in his mind, make the necessary link between the word and the goods. This class of expression requires no proof of acquisition of a secondary meaning to proceed to registration; it may, however, be hedged with a disclaimer regarding the manner of use.”

B.In Jagdish Gopal Kamath Vs. Lime & Chilli Hospitality Services [(2015) 4 AIR Bom R 272], the Hon’ble Bombay High Court held that even in the case of device mark what is to be considered is the essential, prominent, and leading feature of the mark whether it is a label, device, composite, word and where the finding was that, there was nothing else in the so called device other than the words “Café Madras”, the said words would enjoy protection. The relevant portion of the judgment is produced in verbatim herein below:

“25. …We must, of necessity, consider what is the essential, prominent and leading feature of that mark, by whatever name called (label, device, composite, word). Even if the Defendant’s case is to be accepted, there is nothing essential or prominent in that so-called device other than the words ‘Café Madras’.”

 C.In Sunil Mittal & Anr. v/s. Darzi on Call [(2017) 242 DLT 62], the Hon’ble Delhi High Court observed that However, the phrase in Section 9(1) (b) “may serve designate the rendering of services” should be construed properly.

The relevant portion of the judgment is produced in verbatim herein below:

“18. ….There might be various words in the dictionary, which would describe goods or service. However, not all such words would become un-registrable under Section 9 (1) (b).”

D. As was observed in Keystone Knitting Mills Ltd’s TM (1928), 45 RPC , 193): “One has to look at the word…..not in its strict grammatical interference, but as it would present itself to the public at large who are to look at it and form an opinion of what it connotes.”

6.Learned author K.C.Kalisham has written on the same page 165 to see also Kanwar Ayurvedic Pharmacy v. Registrar of Trade Marks (PTC, Suppl 1 465 Pun) where the order of the Registrar refusing Vedana Nigrah Ras was set aside. Similarly, the order of the Registrar refusing “SOLAR” for photographic apparatus was set aside (PTC, Suppl 2. 416 Bom) . Again, in Parivara Seva Santha v. Bliss Chemical & Pharmaceutical India Ltd   the word “BLISS” was held not to have any direct reference to the character or quality of goods, namely condoms. (2002PTC, 755). It was held that ANGLO FRENCH is a hybrid expression coined out of two distinct entities and as such registrable.

7.The Court of Justice of the European Union has also held that “…The perception of the average customer for the goods 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.” [Koninklijke Philips v Remington [2006]EWCA Civ 16)

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

Rukmini Satyavama