SANJEEV KUMAR
TRADEMARK AGENT Agent Code: [32938]
IN THE INDIAN PATENTS AND TRADEMARKS OFFICE
BEFORE THE REGISTRAR OF TRADEMARKS, [DELHI OFFICE]
Applicant Name: SACHIN GARG )
) Application Number:
Examination Report (ER): ) 5831318
TMR/DELHI/EXM/2023/ )
) Class: 40
ER Date: 04/09/2023 )
) MARK: DEVICE
)
Examiner: AROHI SANKALAN )
)
)
The
Registrar of Trademark,
Delhi Office
In respect of the matter referenced above, we reply as follows:
Your Sincerely,
Sanjeev Kumar
Company Secretaries in Practice
[Agent Code: 32938 ]
SANJEEV KUMAR
TRADEMARK AGENT Agent Code: [32938]
Dear Sir,
We write with reference to the captioned application. The Learned
Examiner has raised objection to the registration of the captioned
application under Section 9(1)(b) of the Trade Marks Act, 1999.
With regard to the objection raised in the Examination report under
Section 9(1)(b) of the Act, our response is within the one month’s
prescribed time limit from the date of examination report as follows:
1. It is submitted that the subject mark has been arbitrarily
adopted, consisting of arbitrary and unrelated words
“ScrapBuddy” (DEVICE). The subject mark, when taken
together, will have a lasting impression in the minds of the trade
and public. As such the mark is inherently distinctive.
Besides, the subject mark “ScrapBuddy” (DEVICE) makes no
reference to the goods / services for which registration is sought. It
is submitted that the mark does not serve in trade to designate
the kind, intended purpose or rendering of the service or other
characteristics of the service. The words “ScrapBuddy” is a
coined phrase and specifically cannot render / designate kind,
intended purpose, etc.
SANJEEV KUMAR
TRADEMARK AGENT Agent Code: [32938]
Accordingly, the subject mark “ScrapBuddy” (DEVICE) is a distinctive
mark.
It is submitted that Applicant has uniquely adopted the instant device
mark by consciously conjoining the words ‘Scrap’ and ‘Buddy” together
to form the captioned composite mark with device. It is apprised that
the subject mark is a fanciful mark which is a unique combination of
the aforesaid words adopted by the Applicants which are not used
together in the common parlance. The juxtaposition of the said words
within the rectangular device makes it adequately distinctive. The
instant mark does not contain any common surname/personal
name/geographical name/ornamental or a non-distinctive geometrical
figure and as such is a unique mark which is capable of distinguishing
the goods or services of the Applicant from those of others. Subject mark
has been specially designed and customized by the Applicant to
demarcate its goods and services from those of others and it is highly
unlikely that a third party is using the same or similar mark with
respect to identical or similar services.
Further, the subject mark does not indicate the kind, quality, quantity
or the origin of the said services in any manner whatsoever. The mark
is completely arbitrary with respect to the services that are sought to be
registered under the subject mark i.e. “Advertising, Business
Management, Business Administration, Office functions”. In
Abercrombie & Fitch v. Hunting World, Inc. 189 USPQ 759 &
subsequently followed in India in Caterpillar v. Mehtab Ahmed
wherein it was held that where a mark is either invented, coined,
arbitrary or suggestive, it is to be treated as prima facie distinctive &
capable of registration. Additionally, the fact that there is no objection
raised under Section 11 and that there are no conflicting citations to
instant mark goes on to further corroborate the fact that instant
SANJEEV KUMAR
TRADEMARK AGENT Agent Code: [32938]
trademark is one of a kind and there are no similar marks. Upon the
strength of the aforesaid, we submit that the subject mark undoubtedly
merits registration as none of the absolute grounds for refusal of
registration u/s 9 of Act are applicable to it.
Therefore, Kindly accept the application in the interest of justice. In
view of what has been submitted hereinabove and considering the facts
and merit of the case ,Hon'ble Registrar is also requested to proceed
with the present application and pass necessary order to publish it in
the trademark journal, at the earliest and not to pass any adverse order
without giving us an opportunity of hearing.
Thank You
Your Sincerely,
Sanjeev Kumar
Company Secretaries in Practice
of Sanjeev Kumar & Associates
Agent for the Applicant
