Trade Mark Application and Objections Raised By Intelectual Property Organization and Its Reply

   Under Section 27 OF The TRADE MARKS ORDINANCE, 2001 – REPLY REGARDING:-

Reply of IPO Objections On Trade Mark Registration Application To Ipo

Dated:12/04/2021

The Examiner of Trade Marks
Intellectual Property Organisation
11-Shahrah-e-Aiwan-e-Tijarat, China Chowk,
Lahore.

Ref:     TRADE MARKS APPLICATION NO. 12455666 IN CLASS 09.

 

Sub:     NOTICE TO REMOVE OBJECTIONS UNDER SECTION 27 OF THE TRADE MARKS ORDINANCE, 2001 – REPLY REGARDING:-
 

Dear Sir,

Please refer to your Letter No.  123455  DATED 12/04/2021 requiring us to reply, regarding certain discrepancies raised by your office.

We take the opportunity to explain that the applicant has established its reputation for manufacturing UPS in the field of UPS  and  UPS manufacturers market. The applicant in order to maintain the the distinctiveness of its quality services from other competitors in the corresponding trade espoused the trademark “BEST  UPS OF THE TOWN”. The applicant complied with the entire statutory requirement for carrying out business while registering as a proprietorship and then under Income Tax laws of Pakistan and would like to satisfy your office regarding issues raised respectively.

 

1.        That, the trademark of the applicant is quite distinctive from the trademarks pointed out in your letter. The applicant’s trademark “BEST  UPS OF THE TOWN” has no resemblance with other marks as mention in your above-referred notice. The trademark of the applicant is artistically designed which creates its more distinctiveness; therefore there is no chance of any confusion and/or deception in course of trade. The trademarks in their entireties, different in style, label, meanings, presentation, and overall visual impression are distinct from each other.

 

2.      That, the applicant’s trademark is identical to other marks is incorrect. The difference between marks is apparent and would be identified without difficulty or prior coaching by members of the public. A sign will be identical to another mark where it reproduces, without any modification or addition, all the elements constituting the mark or were viewed as a whole, it contains differences so insignificant they may go unnoticed by the average consumer. That in order to determine whether a sign was identical with the trademark it had to be ascertained whether that sign formed a conceptual whole in which the mark lost its individuality, and therefore any distinctiveness, and blended in with that whole and that account had to be taken of the use and position of the mark in the relevant market and of how well-known it was without seeking to ascertain whether there was any likelihood of confusion. The perception of identity between the sign and the trademark had to be assessed globally with respect to an average consumer who was deemed to be reasonably well informed, reasonably observant and circumspect.

 

3.      That, the essential function of a trademark is to guarantee the identity of the origin of the marked goods or services to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the goods or services from others that have another origin. An average consumer can distinguish the difference between these marks without any difficulty. Our trademark is capable of distinguishing the services of our undertaking from those of other takings including enterprises pointed in your notice.

 

4.      Accordingly, in the case of any accused sign, which may be aurally identical but has some visual difference, one must take that into account in considering the question of identity. The visual impact may be slight, but it will count even if the marks are identical to the ear. There can only be identified if there is both aural and visual identity. That the appearance of these trademarks is conspicuously dissimilar, and moreover the sound is distinct to a sufficient degree, therefore, the opponent had not laid down a prima facie evidentiary foundation in respect of the likelihood of deception.

 

5.      There is always a center of attraction towards every At first glance, as in the given trademarks the center of attraction is different in all cases and in our case, predominantly, the center of attraction is circular a sign containing a spark design that is designed artistically, which definitely does not have any resemblance to any of the produced trademarks.

 

6.      Coming to the objection raised under section-14 (3) (a) of the Trade Marks Ordinance, 2001 which is produced for reading reference.

 

14. Absolute grounds for refusal of registration:-

(3) No trade mark nor any part thereof in respect of any goods or services shall be registered which consists of, or contains any scandalous design, or any matter the use of which would-

             

(a) by reasons of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a High Court or a District Court;

 

7.       That, within the meaning of this section, the trademark must not consist of outrageous design and must not likely to betray or to cause confusion and deprive someone against legal protection. The objection is rebutted on the basis that our trademark does not contain any contemptible design but rather consist of only one of its kind design, which is not enclosed, by any of produced trademarks. As far as descriptiveness is concerned with the quality of goods/ services, intended purpose of goods/ services, it is stated that based on our above produced arguments and facts, applied sections, are not applicable to our applied trademark because there is nothing to swindle any layman in terms of quantity, intended purpose, value, geographical origin, the time of production of goods or of the rendering of services, or other characteristics of goods or services. Having no connection between the trademarks, the said section is not relevant at all.

 

8.      As prima facie, our trademark speaks for itself that it a designer work, based on the creative blueprint logo. The produced logos have no sign of any kind and based only on wording, which does not have any nexus with our applied logo because our applied logo consists of a unique design of circular mark which encapsulates the whole theme of our nature of business and also contain a spark sign which is deemed to be its distinctiveness from other logos.

 

9.      The only thing similar between the trademarks is the word ‘Cable’ and realistically it is not possible for any manufacturer of the cables & wires to undertake the business of manufacturing cables & wires without incorporating the word ‘Cable’ into his name of the business. Hence, there is no similarity between the logos and nothing could be regarded as deceptive within the meaning of section 14(3)(A).  

 

 

That, the fair conclusion which can be drawn by taking into account all the relevant circumstances of the case is that applicant is competing fairly in the market in accordance with honest practices. The applicant has made a great effort in drawing the label of its mark to ensure that customers distinguish its product from those of the other competitors in the market.

 

Therefore, keeping in view the above illustrations and factual differences clarified above supports the version that the artistic mark designed and applied by the applicant is fairly different, unambiguous, crystal clear, and distinctive and is to be processed in the best interest of fair play.

 

Hope it will serve the purpose.

 

Thanking you,

Through

 Link:  IPO Pakistan

 

Advocate High Court