S.9(1) objection Replies under Trade Marks Act 1999

21 Mar S.9(1) objection Replies under Trade Marks Act 1999

To,

The Registrar of Trade Marks

Trade Mark Registry

Intellectual Property Building

Mumbai/Delhi, Kolkata, Chennai/Ahmedabad

Dated-21.03.2021

Sub: Reply to Objections under S. 9 (1) (b) of Trade Marks Act, 1999 to application number- 5726973 in Class 25.

Ref: Your Examination report dated 25/11/2020.

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 Master Touch device 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. There after I created the applied mark which is a unique label mark Master (M/T) Touch (s) expressed in white colour on dark blue back ground. The mark is eye catching, attractive and memorable. It drags the immediate attention of the view and remains constant in mind. The trademark represents my business as such it is an invaluable asset of my enterprise.  I have started using the mark ever since the day of application and the mark has gained substantial good will over a period.  The applied mark is a case of evocation and not designation. 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.

2.The applied trademark Master Touch  is an arbitrary dictionary word and there is no instaneous perception of descriptiveness in the mind of the customer at the market place due to uniqueness of the device mark. Other than two expression “Master” and “Class” there are alphabets within circle as distinctive elements making the mark distinctive as a whole.  The applied trademark inspire and retain public confidence in the quality and integrity of my goods made and sold which are READYMADE GARMENTS AND WEARING APPARELS, SLEEPWEAR, NIGHTWEAR. NIGHTGOWNS, LINGERIE, UNDERGARMENTS, SWIMMING COSTUME, HOSIERY GOODS, SHIRTS, T-SHIRTS, FOOTWEAR, JEANS, JACKETS, TROUSERS, BOOTS, SLIPPERS, SOCKS, PANTIES, NIGHT SUITS, BABA SUITS, PAJAMA, GLOVES, TIES, BOWS, BANDS, BELTS (FOR WEAR), LEATHER, GARMENTS, WOOLLEN GARMENTS, CAPS. HATS, HEADWEARS, NECKWEARS, AND HOSIERY GOODS, CLOTHING. 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 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.

3. 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.”

4. 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.
5.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.In the light of the above judgment the applied device mark Master Touch  is distinctive and entitled for registration as it does not connote any kind of action or effect that the services in applied class of 25 are likely to show, therefore it is a device which is inherently capable of distinguishing the applicant’s services. The device forms primarily a visual mark with strong and original characteristics apt for registration in class 25.

7.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.”

8. 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’.”

9. 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.”

10.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.

11.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 Master Touch 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, 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 are knowledgeable purchasers because only a limited class of customers use the goods applied herewith.

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

Rukmini Satyavama