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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) (b) 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:
A. We humbly submit that our client’s mark filed for registration vide application no. _______ for the services falling under class ________,falls outside the scope of the aforementioned objection.
B. The mark is collaboration of different words, design, color combinations and alphabets and the new meaning has been coined by bringing them together, which makes it very distinctive and unique in nature. Also, the mark is a coined expression and as a whole has been fancifully applied to the services offered by the applicant.
C. Though the words, color combinations, alphabets have its distinctive meaning, but when considering it as a whole along with verbal representation of the wordmark, it forms no such particular or exclusive meaning, which may be restricted under section 9(1)(b). In Godfrey Philip India Ltd. v. Girnar Food and Beverages Pvt. Ltd., Supreme court ruling state that a descriptive trademark may be entitled to protection if it has assumed secondary meaning which identifies it with a particular product or as being from a particular source. And hence can be concluded that Common words of a language and/or descriptive words can be trademarked, when they have acquired distinctiveness/secondary meaning.
D. _____________is a distinctive and non-descriptive composite term that combines the words ______ and ______. The amalgamation creates a unique and identifiable mark that does not explicitly describe the nature or characteristics of the services but rather conveys a sense of professionalism.
E. The mark has been extensively used in commerce exclusively in connection with the specified goods and services. Through consistent usage, has acquired distinctiveness, and consumers associate the mark specifically with the applicant's business. This consumer recognition underscores the unique branding value of the mark.
F. Analyzing the mark in its entirety, does not immediately convey the essential characteristics of the services. Instead, it serves as an indicator of the source of the services, distinguishing the applicant's offerings from those of others in the marketplace.
G. It is our contention that the mark 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.
H. Over time, the mark 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.
I. A comprehensive search has been conducted, and no similar trademarks or business names have been identified in the relevant industry. This underscores the uniqueness of _____________ and its potential to serve as a strong and distinctive identifier for the specified services.
I respectfully submit that the mark satisfies the requisite criteria for registration under the Trade Marks Act 1999. It is requested that the Registrar reconsiders the objection and grants registration for the mark in connection with the listed services.
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)(b), Reply to examination report, Trademark objection, examination report format
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Section 9(1)(b) Reply to Examination Report Format (docx)
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Absolute grounds for refusal of registration:
(1) The trade marks -
(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service.
In trademark law, Section 9(1)(b) may address the requirements and limitations on the registration of trademarks based on certain characteristics like kind, quality, quantity, intended purpose, values, geographical origin, time of production, or other relevant characteristics of goods or services. This section is likely aimed at ensuring that trademarks are distinctive and serve the function of identifying the source of goods or services in the marketplace.
In simpler terms, it's saying that a trademark should not be registered if it only consists of common marks or indications that describe characteristics of the goods or services.
For example, if you're selling coffee, you can't register a trademark that simply says "Hot Coffee" because that's a common description of the product. The idea is to reserve trademarks for unique symbols, logos, or names that help consumers easily identify and distinguish one company's products or services from another's.
So, Section 9(1)(b) is a rule to ensure that trademarks are distinctive and not just generic descriptions of the goods or services they represent. This helps maintain the effectiveness of trademarks in serving their purpose of indicating the source or origin of products or services in the marketplace.
An examination report is a document issued by the trademarks registry after reviewing a trademark application. It details findings on the proposed mark's distinctiveness, distinguishness, similarities and compliance with legal requirements of the Trademarks act.
Majorly the examination report is received under section 9(1)(a) and/or 9(1)(b) and/or 11(1) of the Trademarks Act, 1999.
with in One Month from the date of receipt of this Examination Report.
if no reply is received or a request for a hearing is applied for within the above mentioned stipulated time ,the said application shall be treated to have been abandoned for lack of prosecution under Section 132 of the Trade Marks Act,1999 and there after the status of application in the computer database shall reflect abandoned status.
In that case you have to file fresh application along with fees.
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