REPLY TO OBJECTIONS UNDER S.9(1)(a)- THE MARK IS NON-DISTINCTIVE UNDER TRADEMARKS ACT, 1999

23 Mar REPLY TO OBJECTIONS UNDER S.9(1)(a)- THE MARK IS NON-DISTINCTIVE UNDER TRADEMARKS ACT, 1999

To,

The Registrar of Trade Marks,

Trade Marks Registry,

Boudhik Sampada Bhavan,

Antop Hill, Mumbai- 400037

Dated-22.03.2021

Sub: Reply to Objections under S. 9 (1) (a) Trade Marks Act, 1999 -Application number- 5777327 in class 3.

Ref: Your Examination report date18.03.2021. Sir,

The examiner of Trade Marks while examining the applied raised objections stating that the applied 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:

1.The device mark NATURES’ 180 DEGREE BLOOSOMS (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 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.

2. The expression “nature’s”, “Blossom” and “180 DEGREE” although words and numbers having a meaning but not directly in reference to goods in class 3 such as Non-medicated cosmetics and toiletry preparations, essential oils and skin care products. All the above words and numbers in unique yellow color circle dotted with leaves and small rings give a unique look to the device mark. “Feel the smoothness of nature” tagline at the end of the mark in a circular fashion provides unique look to the mark as a whole. Therefore imposition of S. 9 (1) (a) is unjustified to the applied mark.

3..I requested the learned examiner to consider the device mark as whole and not to analyze it part by part. 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. 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.

4. I draw the kind attention of the learned examiner to the following trademarks registred in the class 3 for similar goods and avaible in the E-register of Trade Marks Registry:
5. NEUTRABLOOM-1281492-
6. NATURE POWER-1122144

C.NATURE PLUS(DEVICE_

1. NATURE FLO-2643745

E.NATUREVITA PURE (DEVICE)-3371738

1. NATURE PINCH-
2. NATURE BAY46
3. BLOOSOMS TO VOW THE WORLD

9.BLOOSM PHENYLE

10.BLOOSM HYGENE CARE

In the light of the above registered mark the applied mark should also be registered by waiving the objections under S. 9 (1) (a).

5.In support of the acceptance of my trade mark I bring the kind attention of the learned Examiner to M/S Girnar Food & Beverages vs M/S Godfrey Phillips India Ltd. on 19 March, 2001.  In that case Delhi High Court held:

“That however when the mark Super is used in conjunction with the word Super is used in conjunction with the work ‘cup’ both the words have to be considered as a whole and not separately. Words like SUPER TASTE, SUPER FLAVOUR, SUPER TEA, SUPERFINE TEA, SUPER QUALITY TEA may have direct reference to the character or quality of tea but these words cannot have a secondary meaning even by long user. However, the words SUPER CUP have no such direct reference to the character or quality of tea and any indirect reference will not make it a laudatory word or incapable of having a secondary meaning and this mark cannot be said to be a purely laudatory or descriptive one.”

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.”

1. 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.
B.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.”

6. 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.

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

(A) 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 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).”

1. 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.”

D.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 the application be accepted and the trade mark be advertised as accepted for registration.

Thanking You.

Yours Sincerely, Digitally Signed By

LOYAL CONSULTACY