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

07 Apr 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 Mark Registry

Intellectual Property Building

Anna Salai, SIDCO Industrial Estate,

Guindy, Chennai, Tamil Nadu 600032

Dated-05.04.2021

 Sub: Reply to Objections under S. 9 (1) (a) and S. 9 (1) (b) of Trade Marks Act, 1999 -Application number- 5777464 in Class 44.

Ref: Your Examination report dated 10.03.2021 .

Sir,

The examiner of Trade Marks while examining the applied Trademark device raised objections under S. 9 (1) (a) stating that the mark is a non-distinctive and as such it is not capable of distinguishing the goods or services of one person from those of others.

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 Dental Stories Dental Stories with the devic of Teeth was selected with elaborate research 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. The applied mark is of memorable appearance. The device mark is new and visually distinctive. It drags the immediate attention of the viewer and remains constant in mind of customer. The trademark represents my business as such it is an invaluable asset of my enterprise.  I have started using the mark and the mark has gained substantial good will over a period.

3. The proprietor of the applied mark is a pioneer in aesthetic treatment of dental and facial problems like permanently removing the deeply visible stains created from smoking and nicotine from the teeth, lips and face. The cosmetic treatment of teeth, lips and face is an extremely important area of human health, hygiene and beauty care. In such a circumstance, registration of the applied mark is crucial for the survival and growth of my enterprise. In the absence of registrations of the applied trademark, irreparable loss is causing to me that cannot be expressed in words and letters.
4. The applied mark is evocative and suggestive but not descriptive. I request you to please consider the mark as a whole without considering the individual elements. The mark departs significantly from the norm and does not serve in normal usage from a consumer’s point of view to designate services in class 44. The device is not purely descriptive. Addition of the expression with the word Dental makes the mark arbitrary and inventive. The expression Dental Stories Dental Stories with the devic of Teeth which literally means story of the teeth is such an expression which in no way attracts absolute grounds of refusal. The combination of Dental and stories make the mark quite distinctive therefore imposition of S. 9 (1) (a) is not justified in the instant case. The mark 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.

4.The applied mark consists of a heading with skillful and covert allusion to the services of the applicant such as “Dental Services, Facial Aesthetic Services, Multi Specialty Dental Clinic, Hygienic and Beauty care for human beings”  but that is not sufficient on which to found a sound objection. It was held in land mark judgments 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. The mark as whole fulfils the requisite for registrability of the mark is apparent from the definition of the expression “trade mark” contained in section 2(1)(zb), therefore it is prima facie entitled to registration.

Reply to S. 9 (1) (a)

The examiner of Trade Marks while examining the applied Trademark device also raised objections under S. 9 (1) (b) Trade Marks Act 1999 stating that the mark consists exclusively of words or indications which may serve in trade to designate the intended purpose 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 applicant relies the judgment on BABY DRY CASE in which ECJ held in Procter & Gamble Company vs. OHIM:
2. “As it is, that word combination, whilst it does unquestionably allude to the function which the goods are supposed to fulfil, still does not satisfy the disqualifying criteria set forth in paragraphs 39 to 42 of this judgment. Whilst each of the two words in the combination may form part of expressions used in everyday speech to designate the function of babies’ nappies, their syntactically unusual juxtaposition is not a familiar expression in the English language, either for designating babies’ nappies or for describing their essential characteristics.”
3. In the light of the above judgment although word “Dental” and the device of “Teeth” in the combination may form part of expressions used in everyday speech to designate the function of services in class 44 but the syntactically unusual juxtaposition of the mark “Dental Stories Dental Stories with the devic of Teeth” in which an arbitrary expression “Stories” combined with the unique device in attractive shape and colours is not a familiar expression in the English language. Therefore the objections to the applied trademark under S.(1)(b) is not justifiable.
4. ECJ held in BABYDRY case: “Word combinations like ‘BABY-DRY cannot therefore be regarded as exhibiting, as a whole, descriptive character; they are lexical inventions bestowing distinctive power on the mark so formed and may not be refused registration under Article 7(1)(c) of Regulation No 40/94.”
5. Similarly the device mark “Dental Stories Dental Stories with the devic of Teeth”in attractive shape and colours is a lexical inventions bestowing distinctive power due to addition of an arbitrary expression Stories in the mark so formed as a result of which the mark should be refused registration under S. 9 (1) (b).

In BABYDRY case the ECJ held:

1. “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.”
2. In the light of the above judgment descriptiveness must be determined not only in relation to each word “Dental” and the “Device of Teeth” taken separately but also in relation to the whole device mark including the expression “Dental Stories Dental Stories with the devic of Teeth” which they form as a whole device mark”. The perceptible difference between the combinations of words is apt to confer distinctive character on the word combination enabling the mark “Dental Stories with the devic of Teeath” to be registered as a trade mark.”
3. In holding that the mark “Dental Stories Dental Stories with the devic of Teeth immediately conveys to the consumer the intended purpose of the goods and does not possess any additional element to render the mark as a whole capable of distinguishing the applicant’s services from those of other undertakings, the Tribunal will wrongly interpret and apply the provision of S. 9 (1)(a) of Trade Marks Act.
4. Learned author K. S. Savaksha has written in his classic “ Law of the Trade Marks” 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.
7.Learned author K.C.Kalisham has written on the page 165 of his famous book “Law of trade Marks” that in Kanwar Ayurvedic Pharmacy v. Registrar of Trade Marks (PTC, Suppl 1 465 Pun)  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.

8.The Court of Justice of 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 interpretation of the absolute ground for refusal to register the applied mark in the instant case should not be based on the exclusively descriptive character of the signs or indications of which it consists, too broadly. In the applicant’s view, only signs or indications which could only be perceived by the public as designating the characteristics of the goods concerned and which as such are deemed incapable of fulfilling the distinguishing function of a trade mark of enabling goods to be associated with the undertaking marketing them, by distinguishing them from goods of the same kind from competing undertakings, may be refused registration under S. 9 (1) (a) and S. 9 (1) (b) of the Trade Marks Act. In the instant case, taking the mark as a whole satisfies the requirement of distinctiveness therefore the application be accepted and the trade mark be advertised as accepted for registration.

Thanking You.

Yours Sincerely, Digitally Signed By

LOYAL CONSULTANCY