SLOGAN MARKS REPLY TO OBJECTION UNDER S.9 (1) (a) of Trade Marks Act, 1999

28 Mar SLOGAN MARKS REPLY TO OBJECTION UNDER S.9 (1) (a) of Trade Marks Act, 1999

28.03.2021

To,

The Registrar of Trade Marks

Trade Marks Registry,Ghatlodia, Ahmedabad – 380061

Sub: Reply to objections under S. 9 (1) (a) of Trade Marks Act, 1999 in respect of application number 5100082 in class 29.

Ref: Your Examination Report dated 26.03.2021.

Sir,

The examiner of Trade Marks while examining the trade Marks has raised objections under S. 9 (1) (a) of the Act stating that the applied mark is a non-distinctive and as such it is not capable of distinguishing the services of one person from those of others. I respectfully deny the objections and state the reply as under:

3. The applied mark COME LET US FLY HEALTHY INDIA HIGH is a slogan as well as a tagline. The mark definitely constitutes a trade mark within the meaning of Section 2(m) & (zb) of the Act distinguishing the applicant’s goods such as dairy products and dairy substitutes from other traders. The slogan mark glorifies India and human health and the country but it has no direct reference to the dairy products manufactured by the applicant. The mark conveys the essence of the applicant’s company and its goods as well as the aspirations and commercial expression to the consumers.
4. The applied slogan mark and tagline is very much important for applicant’s business in the branding and advertisement campaign especially in the visual media. The applied mark is the first line of communication with the consumer- a marketing and communication tools par excellence and directly impacts the consumers by encouraging them to choose applicant’s goods. The applied mark will support applicant’s business in commercial terms by enabling the public to link the applied slogan and tagline to applicant’s company. The mark is imaginary but having capability to linger in the minds of the consumers for a long time even after the taste of an advertising campaign. It is coined to be memorable and impactful and no doubt it will make the customers feel good about what about applicant’s goods and foster more efficient purchasing decisions by creating distinction in consumers’ minds.
5. In Procter & Gamble Manufacturing (Tianjin) Co. Ltd v. Anchor Health & Beauty Care Pvt. Ltd. the registrability of the word ‘Allround/Allrounder’ as a trade mark and the words ‘Allround Protection’ as a slogan mark was considered and the court held as follows while dismissing the appeal against the decision of the Single Judge:

“The different manufacturers/suppliers of toothpaste have attempted to market their product by boasting the feature, either of being capable of resulting in extra white teeth or as protecting the gums or as producing a fresh breath. The respondent/plaintiff on the contrary marketed its product by highlighting its product as capable of providing ‘ALLROUND PROTECTION’ and which was further described as, producing stronger whiter teeth, fresher breath and healthier gums. While the words stronger whiter teeth, fresher breath and healthier gums, in our opinion, are descriptive, the expression ‘ALLROUND PROTECTION’ connotes the peculiar quality of the product of the respondent/plaintiff. Thus the words ‘ALLROUND PROTECTION’ in our view cannot be said to be descriptive.”

5. In the light of the above famous judgment COME LET US FLY HEALTHY INDIA HIGH in respect of goods in class 29 such as dairy products and dairy substitutes is not descriptive but it connotes the peculiar quality of the above services.
6. Learned writer K. C. Kailasam in his famous book “Law of Trade Marks and Geographical Indication: has written on page 168.

“Practice of the Registry

According to the evolving practice of the registry, the following types of trademarks may be considered to be capable of distinguishing and as such registrable, without evidence of use:

…

slogans with only indirect reference such as COLOUR ME BEAUTIFUL (Class 3), PARDON OUR SCAFFOLDING (Class 6).

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 faithfully,

Loyal Consultancy