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 9(1) (a) of the Trade Marks Act 1999, as the mark is non-distinctive and as such it is not capable of distinguishing the goods or services of one person from those of others.

Reply:

1. It is our contention that the mark _______________“wordmark” has attained distinctiveness through continuous use in commerce. The mark has been consistently associated with our services, fostering consumer recognition and establishing a unique association with our brand.

2. Consumer perception studies and market feedback affirm that our target audience recognizes ________________ “wordmark” as an indicator of origin for our services. This consumer association further supports the distinctiveness of the mark in the relevant market.

3. The mark is exclusively used in connection with specific services, and its association with these offerings is firmly established. This association reinforces the mark's ability to serve as a distinctive identifier of the origin of our services.

4. The inherent strength of the mark _________ “wordmark” lies in its coined nature, combining elements that are not commonly associated with the goods/services in question. This inherent strength enhances its capacity to act as a source identifier, notwithstanding any perceived non-distinctiveness.

5. Over time, the mark ________ “wordmark” has acquired a secondary meaning in the minds of consumers, directly associating it with our brand and creating a distinctive link that extends beyond the literal or descriptive interpretation of the mark.

6. The word _________ “wordmark” is a unique word, which altogether has no dictionary meaning, which was coined by the applicant and fancifully applied to its services, which now has attained popularity in the eyes of public.

7. 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.

8. 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.

In the light of facts stated and according to principal of fair justice & fair and continuous use, submissions made, proofs enclosed and rulings cited hereinabove, we would clarify that our mark is distinctive and distinguishable and is remotely going to affect any other business and is also capable of distinguish itself from the goods of one person from those of other. We humbly request the learned Registrar that our client’s mark sought for registration under trade mark registration 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. 

Tags:

Section 9(1)(a), Reply to examination report, Trademark objection

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