Section 11(1) Reply to Examination Report Format

REPLY TO EXAMINATION REPORT

Date:__________

THE REGISTRAR OF TRADE MARKS,

TRADE MARKS OFFICE, __________

Sub.: Reply to the examination report dated __/__/____ for Application No.  ____________ in class __ by the Applicant M/s ____________

Respected Sir/Ma’am,

This is with reference to the examination report being issued under your letter reference no. TMR/____/EXM/____/ made available to us from official website with respect to our client’s trade mark registration application no. _____.

We, for and on behalf of our client, M/s _________________________, having its place of business at _______________________________, submits this response/submission to your objection.

Objection/Remarks:

The 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.

Reply:

1.  _______________ filed for registration vide application no. ________________ for the services falling under class ______________, falls outside the scope of the aforementioned objection.

2. Our client’s mark as a whole is conceptually, phonetically and structurally different from the marks cited vide trade mark application number ______________ (Hereinafter referred to as conflicting marks) in your search report attached along with the Examination report issued.

3. ________________ is a collaboration of different words and the new meaning has been coined by bringing them together, which makes it very distinctive and unique in nature. There will be no confusion in the mind of customer, consumer or a buyer as the sound and meaning of our mark is completely different. 

“In Essco Sanitations, Delhi v. Mascot Industries (India) AIR 1982 DEL 308, it has been held that while considering the possibilities of phonetic confusion, the words must not be subjected to a meticulous individual analysis. Only some structural examination of words is permissible to find out if the marks possessed any outstanding characteristic that would inevitably create a more or less impression on the bearer’s mind.”

4. In our case the mark ______________ has a unique name and a different one, which makes it unique. Moreover, in support of same, we hereby are disclosing relevant case laws, wherein the marks were accepted on the ground of their suffix being different from that of conflicting mark. 

In Hindustan Unilever Ltd. V. Ashique Chemicals, Aghin Chemicals and P.C. Thahir trading as Aghin Chemicals and Cosmetics 2011 (6) Bom CR 854, wherein it was held that the marks “Sunlight” and “Surplus” are not deceptively similar as in both the marks though the prefix was common but the suffix was distinct.

5. _______________ should be read as whole and not separately. Also, we would like to clarify & undertake that the mark is to be used as a Wholeand No word of it will be used separately.

6. In support of our above submissions, we would like to refer a few case law/authority and the relevant text from the judgments has been quoted as under: 

In Corn Products V. Shagrila Food Product Ltd.The Supreme Court held that it is well recognized that in deciding a question of similarity between two marks, the marks have to be consideration as a whole. We have to approach it from the point of view of man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them.

7. Furthermore, we would like to clear and make a valid statement, that the mark is clearly unique and was first coined by the applicant itself and has no particular meaning of same. Also, the mark is not similar to any other mark or business in the domestic as well as international market, for similar business and nature of goods. The mark is nowhere near to cause any confusion in the minds of general public which makes it distinguishable from the other businesses, brands or goods in the market. 

8. The mark of the applicant is neither similar nor identically or visually same/similar to the other mark enclosed in the Examination report. The visual impact of the trademark remarkably displays a recognizable distinctive identity. It is further submitted that the overall impression of the mark is unique in the trade and therefore, the mark is capable of distinguishing the goods of the applicant from those of others. It is also well-established rule of Law that where a trademark consists of a combination of number of features, the distinctiveness must be considered by taking the mark as a whole and all its integers should be considered in combination. 

In the light of facts stated and according to principal of fair justice & fair use, submissions made, tabled representation and ruling cited hereinabove and considering the most important fact that the mark is to be used as whole and has a unique name and different prefix and suffix. We humbly request the learned Registrar that our client’s mark sought for registration under trade mark application no. ______________ may please be accepted and the order for its advertisement in the Trade Marks Journal may please be passed. 

Thanks

__________

(Signature)

Note by Author: 

This format of reply is drafted by CS Harshdeep Singh Narula and he has made it free to use this draft for the educational purposes only. You may reach out to CS Harshdeep Singh Narula at contact@harshdeepnarula.in or at his Whatsapp no. +91 98780 67337.

Profile of Author:

Harshdeep Singh Narula, a practicing Company Secretary (CS) and Fellow member (FCS) of ICSI, brings over 5.5 years of expertise to the field. Specializing in Intellectual Property and Startup advisory, he is a trusted advisor for businesses, ensuring compliance and success through his commitment to excellence and ethical practices. 

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Section 11(1), Reply to examination report, Trademark objection, Examination report format

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