Replytoexaminationreport Section 9
Replytoexaminationreport Section 9
Replytoexaminationreport Section 9
Date : 06.03.2021
To,
Sub : Reply of the examination report Dtd. 11.02.2021 In the matter of TM Application No.
4841104 in class 9 for registration of word mark ‘MOBILE SKIN’.
Sir / Madam,
Sir,
We hereby submit our reply as under to the examination report downloaded from official website of Trade
Mark office as we have not received examination report physically.
With respect to objection under section 9(1)(a) of the Trade Marks Act-1999, in the Examination Report,
the point wise reply is as follows :
1. The Applicant, Mr. Aditya Thakkar, is carrying a business of mobiles accessories such as mobile skins,
AS INCLUDED IN CLASS 9
2. The Applicant is also registered owner of Trademark ‘ENGRAVE SKIN’, under class 9, which was
filed under TM application No. 4367278 Dtd. 04.12.2019 and registered under certificate no. 2471047.
Copy of registration of Trade Mark ‘ENGAVE SKIN’ is enclosed herewith for your kind reference.
3. Accordingly, the Applicant has applied for registration of Trademark ‘MOBILE SKIN’ to carry on the
business of mobiles accessories such as mobile skins AND OTHER SERVICES AS INCLUDED IN
CLASS -9 vide TM Application No. 4841104 Dtd. 29.01.2021.
4. The said application has been examined and objected by the Learned Registrar on absolute grounds of
refusal under Section 9 (1(a) of the Trademark Act-1999, as the mark is non-distinctive and as such it is
non capable of distinguishing the services of one person from those of others.
5. We respectfully do not agree with the Learned Registrar that suggested mark ‘MOBILE SKIN’ is non-
distinctive and as such it is non capable of distinguishing the services of one person from those of
others.
6. We would also like to place reliance on the following precedents in support of our application for
registration of our Trade Mark ‘Mobile Skin’:
a. In the matter of Godfrey Philips India Ltd. v. Girnar Food and Beverages Pvt. Ltd., The Hon’ble
Apex Court has held 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”
(Common words of a language and / or descriptive words can be trademarked, when they have
acquired distinctiveness/ secondary meaning.)
In view of the above, I would like to clarify that the word ‘MOBILE’ and ‘SKIN’ has acquired
distinctiveness as the same is able to describe the activities to be carried out the applicant.
b. In the matter of Globe Super Parts v. Blue Super Films, Hon’ble High Court of Delhi has held that
“two words “SUPER” and “FLAME”, which are descriptive dictionary words, the combination of
which were declared by the court as coined words and accordingly protection was granted.
(Both the words (“SUPER” and “FLAME” may be individually descriptive and may not be
monopolized by any user. But together the combination of words has acquired distinctiveness
by virtue of prior, continuous and extensive use and therefore is protected.)
In view of the above, I would like to clarify that the word ‘MOBILE’ and ‘SKIN’ may be
individually descriptive and may not be monopolized by the applicant, but as the applicant has been
applied for the Combination of both the words, therefore they acquire distinctiveness and can be
trademarked.
c. In the matter of Ishi Khosla v. Anil Aggarwal, Hon’ble High Court of Delhi has held that “to
acquire secondary meaning it is not necessary that product is in the market for number of
years. If a new idea is fascinating and appeals to the consumers, it can become a hit overnight”
This case law settles the principle of “acquired distinctiveness”.
(The goods associated with a trademark do not have to be in the market for a certain number
of years for the trademark to have acquired distinctiveness. A trademark can acquire
distinctiveness, even overnight, and therefore, it depends from case to case. There is no fixed
time frame for a trademark to have acquired distinctiveness.)
d. In the matter of ITC Ltd. v. Britannia Industries, Hon’ble High Court of Delhi has settled the
principle regarding the “term of use” with respect to a trademark acquiring distinctiveness- “to
acquire secondary meaning, it is not necessary that product is in the market for number of years. If a
new idea is fascinating and appeals to the consumers, it can become a hit overnight”.
(It reiterates the same principle as laid down in the case of - Ishi Khosla v. Anil Aggarwal. This
case law settles the principle of acquired distinctiveness. The goods associated with a
trademark do not have to be in market for a certain number of years for the trademark to
have acquired distinctiveness. A trademark can acquire distinctiveness, even overnight, and
therefore it depends from case to case. There is no fixed time frame for a trademark to have
acquired distinctiveness.)
In view of the above submissions, we pray that objections raised under section 9(1)(a) of the Trade Mark
Act 1999, may please be waived off and our suggested Trade Mark be advertised in trade mark journal.
In case, Learned Registrar, is still not satisfied with our aforesaid submissions, we may please be given
an opportunity for further submissions.