Refer 9

To, Date: 14/06/2019
The Registrar of Trademark,

Trademark Registry, DELHI
Sub: REPLY TO EXAMINATION REPORT(MIS-R) Dated on: 06/06/2019 12:29:44

Ref: Application Number: 4156066
In case of hearing,your prefered mode of attending the hearing is: PHYSICAL
Sir,
With reference to the above application, the point wise reply is as under: -
Reply attached seperately
KHURANA & KHURANA

Attorney [5175]
KHURANA & KHURANA, ADVOCATES AND IP ATTORNEYS
E – 13, UPSIDC Site-IV, Kasna Road, Greater Noida - 201308, India
Phone: +91.120.2342010, Fax: 2342011 Website: www.khuranaandkhurana.com
Email: info@khuranaandkhuraana.com
Offices: Greater Noida (Delhi-NCR). Pune. Bangalore. Indore. Mumbai & Hyderabad
The Registrar of Trade Marks

Intellectual Property Bhawan
Plot No 32, Sector 14,
Dwarka,
New Delhi -110078
Date: 13th June, 2019
Reply to the Examination Report
In the matter of Application Number: 4156066

For Trade Mark ‘MEDWHITE’ in Class 3
In the name of: ADONIS PHYTOCEUTICALS PRIVATE LIMITED
Sir,
We are referring to the observations raised in the Examination Report as conveyed vide
your letter No. ‘Not Available’ dated 06/06/2019 which has not been received by us but
we have noticed the contents of the same on IPO website today and reply to the same is
furnished hereunder
Observation No.1:
The Learned Examiner has raised objection on the grounds of Section 9 (1) (a)
stating that 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.
We humbly wish to submit that we do not agree that the Trade Mark is non- distinctive
character, that is to say, the mark is not capable of distinguishing the services of one
person from those of others. The mark of the Applicant has been originally
conceptualized and developed by the Applicant, thereby making the mark highly
distinctive of the goods it seeks to cover, blended with the Philosophy of the Applicant.
The Applicant’s mark “MEDWHITE” is unusual and never adapted before combination
of words and does not convey any overt reference to the goods covered under the mark
and this inherent uniqueness makes the Applicant’s mark absolutely distinctive and
imparts to it the best credentials for registration. It is an established principle of trade
mark laws that Invented/coined combination of words adopted as trademarks are
inherently distinctive and entitled to highest degree of protection. The apparent
idiosyncrasy of the subject mark unequivocally corroborates its distinctiveness and
annuls any likelihood of it being adopted by other traders to describe the characteristics
of their own goods or services.
It is a well set judicial principle that the most imperative requisite of the word
“distinctive” when used in relation to the goods in respect of which a trade mark is to be
registered is that the trade mark should be ‘adapted to distinguish’ the goods of the
proprietor from the goods of other persons. In the present case the trade mark
“MEDWHITE” has been adapted to distinguish its goods from those of others and
indicates the source of origin of goods under the mark to the Applicant only and is
incapable of honest adoption by anyone else.
The Supreme Court in the case of National Bell Co. v Metal Goods Mfg Co., 1971 AIR
898 observed that in determining the distinctiveness, regard must be had whether a Trade
Mark is inherently distinctive or is inherently capable of distinguishing and by reason of
its use or any other circumstances, it is in fact adapted to distinguish or is capable of
distinguishing the goods.
It has been held in a plethora of cases that a mark which is comprised of peculiar, odd
and rare elements in itself would merit it to be inherently distinctive. To ascertain
distinctiveness, the mark must be read as a whole. It is a well-established principle that a
mark should be read as a whole on its total impression. In the present case, on reading the
Applicant’s mark “MEDWHITE” in its entirety, we can humbly reiterate that it
comprises of an unusual, unique and never before adopted coined word ‘MEDWHITE’
which throws light on its distinctiveness and makes the mark highly distinguished,
distinct and registrable.
In the case of P. N. Mayor v. Registrar of Trade Marks, AIR 1969 Cal 80, the Calcutta
High Court held that the general requirement of the Trade Mark Law was that the mark
must be distinctive in the sense that it should be adapted and distinguished and this
distinctiveness was fundamental and primarily a matter of fact and such distinctiveness
might be either in individual features or in general arrangement. A mark should be
considered as a whole on its total impression and as a general rule, attempts to dissect a
mark in order to destroy distinctiveness have been disapproved in such cases as Re,
Hawthorn & Co., Ltd., (1934) 52 RPC 15 and Re, William Bailey (Birmingham) Ltd., Re,
Gilbert & Co., (1935) 52 RPC 136. We humbly contend that attempting to view the
subject Trade Mark as individual words would only defeat the aforementioned principle.
Further, in order to determine whether a trade mark is inherently distinctive would also
depend upon whether “other traders would be likely, in the ordinary course of their
business and without improper motive, to desire to use the mark, upon or in relation to
their own goods.” If there is no likelihood, then registration of the mark ought to be
granted. In the present case, no person or entity has prior to the Applicant used such a
coined word for identifying himself as the source of their goods under class 3. There is no
evidence to suggest that any competitor has done so or have any applications been filed
for such a word by any other party before the Applicant.
2
So on application of the above principles of distinctiveness, we find that the captioned
mark is unambiguously and beyond doubt “distinctive” and request the learned registrar,
that registration should be allowed.
So we feel it apposite at this juncture to stress that registration should be allowed as there
is no prejudice to the legitimate trade.
In view of the position explained above, the reasons for refusal as indicated in the
examination report are not good grounds for refusal and the mark should be accepted.
We, therefore, request you to proceed with the application and the same may be
advertised in the journal and initiate other actions as required by the Trade Marks Act,
1999.
If for any reasons, the replies furnished by the undersigned do not satisfy the Examiner
and need further deliberation and explanation, we would apply for hearing for which the
date may be communicated to the undersigned at the above mentioned address.
Yours faithfully,
Khurana & Khurana, Advocates & IP Attorneys

Attorney Code: 5175

Refer 9

Uploaded by

Copyright:

Available Formats

Refer 9

Uploaded by

Document Information

Original Title

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Refer 9

Uploaded by

Copyright:

Available Formats

To, Date: 14/06/2019

The Registrar of Trademark,

Sub: REPLY TO EXAMINATION REPORT(MIS-R) Dated on: 06/06/2019 12:29:44

Reply attached seperately

KHURANA & KHURANA

The Registrar of Trade Marks

Reply to the Examination Report

In the matter of Application Number: 4156066

Khurana & Khurana, Advocates & IP Attorneys

You might also like

Pfad - The Proxy pFad of © 2024 Garber Painting. All rights reserved.