23 Mar REPLY TO OBJECTIONS UNDER S.9(1)(A) OF TRADEMARKS ACT,1999- ABSOLUTE GROUNDS OF REFUSAL
To,
The Registrar of Trade Marks,
Trade Marks Registry,Plot No32, Pocket 1,Sector 14 Dwarka
New Delhi- 110078
Dated-24.03.2021
Sub: Reply to Objections under S. 9 (1) (a) of Trade Marks Act, 1999 to application number- 5550311 in class 43- Agra Canteen.
Ref: Your Examination report dated 12.02.2021.
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 a common surname/personal name/geographical name/ornamental or a non-distinctive geometrical figure and as such it is not capable of distinguishing the goods or services of one person from those of others.
- The mark was selected with elaborate research after complete market survey with due respect to all provisions of Trade Marks Act. The applied mark
Niagra Fall is invaluable business asset of my business enterprise. The expression Niagra Fall is wholly arbitrary and fanciful with respect to the goods concerned such as Services for providing food and drink not being directly descriptive of the character or quality of the above services. The applied mark is a case of evocation and not description. Therefore the mark does not serve in trade to designate the quality and intended purpose of the goods. It is prima facie entitled to registration
2.The applied trademarks is the only means by which as a service provider I am enabled to inspire and retain public confidence in the quality and integrity of my services made and sold which are baby diaper, adult diaper, wipes, and sanitary pads. The applied mark 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.
- I draw the kind attention of the lenred examiner to a paragraph written by learned author K.C. Kailasam:
“ 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.”
4.The expression Niagra Fall is not a mark which traders in business usually employ for the purpose of describing the character or quality of their services in class 43. 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.
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.”
Some case where registration of geographical names were permitted on evidence of use:”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.”
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:
“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.”
- 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’.”
- 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).”
- 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.”
- 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. (2002 PTC, 755). It was held that ANGLO FRENCH is a hybrid expression coined out of two distinct entities and as such registrable.
- In considering whether a word is descriptive or not, three points have to be kept in mind. First, the word has to be considered in relation to the goods. Thus the test is to conjoin the mark to the goods and consider what the word would mean to the average purchaser concerned with such goods. In the instant case the mark Niagra Fall is not connected to goods baby diaper, adult diaper, wipes, and sanitary pads directly. Secondly the speed of the mental reaction of the purchaser to the word has to be considered. “There is a wide range,” as Mr. Faulkner has said, “between an instantaneous perception of the descriptiveness and a prolonged cogitation ending possibly in a state of suspicion that the mark might mean so-and-so, but he is not at all sure. The latter state of mind would probably cause the mark to fall under the heading of a skillful and covert allusion to the goods, which is not sufficient on which to found a sound objection. In the present case of Niagra Fall there is no instantaneous perception of the descriptiveness. Thirdly, one must also consider the particular customers concerned in the goods, whether these are brought by the general public or by a select and restricted class of very knowledgeable purchasers. In the present case the purchasers of baby diaper, adult diaper, wipes, sanitary pads are knowledgeable purchasers because only a limited class of customers use the goods applied herewith.
- 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)
- 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.”
REPLY TO S.11
I respectfully disagree with the decision of the learned examiner stating that objection is raised under S 11 (1) of the Trade Marks Act, 1999, as the mark is identical with or similar to earlier marks in respect of identical or similar description of goods or services and because of such identity or similarity there exists a likelihood of confusion on the part of the public.
12.Both the marks, the applied mark Niagra Fall and the cited mark NIAGRA CHAT BHANDAR are different from each other considering as a whole The likelihood of the confusion must be assessed in entirety, not their shared element. The mere occurrence of letters in the cited trademarks will not create any confusion in the mind of average customers who are circumspect by general nature as decided by numerous case laws in the subject of Trade Marks. Taking into consideration our whole marks, I pray that there will be no likelihood of confusion on the part of the public. Our trademark departs significantly from the norm and makes itself an arbitrary forceful word different from others.
13.While dismissing the appeal that DROPOVIT is similar to PROTOVIT, The Supreme Court said in Hoffmann-La Roche case: “it’s probable effect on the ordinary kind of customers that one has to consider. For this purpose it is necessary to apply both the visual and phonetic tests. It is also important that the marks should be compared as wholes. The true test is whether the totality of the trade mark is such that it is likely to cause deception or confusion or mistake in the minds of the persons accustomed to the existing trade mark”. In the light of the above case the likelihood of the confusion must be assessed in entirety, not their shared element. The mere occurrence of letters in the cited trademarks will not create any confusion in the mind of average customers who are circumspect by general nature.
14.In the High Court of Calcutta SORBILINE was considered NOT deceptively similar to SORBITON. Justice Sengupta said: “It is clear that the Tribunal ought not merely to look at the marks as they stand side by side, for …they will not be so put before any customer whom it sought to deceive by means of either of them…allowance must be made for this in probability of deception.”
The difference in the service is significant. We do not provide temporary accommodation service as claimed by the proprietor of the cited 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
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