REPLY TO OBJECTIONS UNDER S.9(1)(b) OF TRADEMARKS ACT, 1999

21 Mar REPLY TO OBJECTIONS UNDER S.9(1)(b) OF TRADEMARKS ACT, 1999

T

The Registrar of Trade Marks

Trade Mark Registry

Intellectual Property Building

Anna Salai, SIDCO Industrial Estate,

Guindy, Chennai, Tamil Nadu 600032

Dated-21.03.2021

Sub: Reply to Objections under S. 9 (1) (b) of Trade Marks Act, 1999 to application number- 5864297 in Class 9.

Ref: Your Examination report dated 24/02/2021.

Sir,

The examiner of Trade Marks while Examining the applied mark has raised objections  stating that the applied mark under S. 9 (1) (b) of Trade Marks Act, 1999  consists exclusively of words or indications which may serve in trade to designate the intended purpose of the goods.  I respectfully disagree with the decision of the learned examiner and submit my reply for the acceptance of the applied mark as under.

1. The applied mark was selected after elaborate research, continuous brainstorming, complete market survey with due respect to my business interest as well as provisions of Trade Marks Act including absolute grounds of refusal under S.9. Thereafter I created the applied mark which is a unique, invented, newly coined word MOBILPAIR not being directly descriptive of the character or quality of the goods. The word mark is not a dictionary word and has no meaning in any standard works of reference. It is sincerely requested not to consider the mark separately as MOBILE and PAIRs because the law prescribes not to analyze the mark part by part but as a whole. The mark as a whole is distinctive.
2. A distinctive contraction or variation of two common words resulting in a new word conveying no meaning may be registered as an invented word. Therefore MOBI may have been taken from the word MOBILE and joined by word PAIR but the resulting word MOBILPAIR is invented. The mark is suggestive but not descriptive. Therefore the mark does not consist exclusively of words or indications which may serve in trade to designate the intended purpose of the goods distinctive and is prima facie entitled to registration.
3. 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 in class 9 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 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 MOBILPAIR, descriptiveness must be determined 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 their essential characteristics is apt to confer distinctive character on the applied composite device mark enabling it to be registered as a trade mark. Viewing the applied composite mark as a whole the mark is rendered distinctive so the imposition of S. 9 (1) (b is not justifiable.
5. The Supreme Court held “it is true that the word “DROPOV1T” is coined out of words commonly used by and known to ordinary persons knowing English. But the resulting combination produces a new word, a newly coined word, which does not remind an ordinary person knowing English of the original words out of which it is coined unless he is so told or unless at least he devotes, some thought to it. It follows that the word “DROPOVIT” being an invented word is entitled to be registered as a trade mark and is not liable to be removed from the Register on which it already exists”

6.The applied trademark MOBILPAIR does not evoke instaneous perception of descriptiveness in the mind of the customer at the market place due to the fact that the word is meaningless.  The applied trademark inspire and retain public confidence in the quality and integrity of my goods made and sold which are Mobile Phone, Tablet PC & Laptop Spare Parts / Accessories. The applied mark may consist of a heading with skillful and covert allusion to the goods but that is not sufficient on which to found a sound objection. It was held in landmark 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.

7. 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.”

8. 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.
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.”

 10.In the light of the above judgment the applied device mark MOBILPAIR is distinctive and entitled for registration as it does not connote any kind of action or effect that the services in applied class of 9 are likely to show, therefore it is a device which is inherently capable of distinguishing the applicant’s services. The mark  forms primarily a visual mark with strong and original characteristics apt for registration in class 9.

11.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.”

12. 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’.”

13. 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).”

10. 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.”
11. 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.
12. 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)
13. 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.”

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

KRISHNA RUKMINI SATYAVAMA