P.

SANJAI GANDHI IPR ATTORNEY

th
Old No.33 New No.65, BBC Villa Complex, Flat No.66, 6 Floor, Prakasam
Salai, Broadway, Chennai-600001
+91 9840622474 P: 044-45016444; iprsanjaigandhi@[Link]

Date: 29/12/2023

To:
The Registrar of Trade Marks & GI,
GST Road, Guindy,
Chennai – 600032.

Subject: Reply to Examination Report, Re: Application No:

5778913 in Class/Classes: 30

Respected Sir,

This is the reply to the examination report of the referenced trademark

application No. 5778913, after it was examined under the provisions of the
Trade Mark Act, 1999 and the Trade Mark Rules, 2017 and was objected to
under Section 9(1)(b) of the Trademarks Act, 1999.

Issue:

1. Issue No.1: Whether this applied logo can be refused under

Section 9(1)(b)?
2. Submission of User Documents to prove continuous
commercial use
Arguments

1. The applied logo cannot be refused under Section 9(1)(b) of the

Trademarks Act, 1999.

Since our trademark does not consist exclusively of marks or

indications which may serve in trade to designate the kind, quality,
quantity, intended purposes, values, geographical origin or the time
of production of the goods or rendering of the services or other
characteristics of the goods or services.

1. Composite Mark cannot be rejected under Section 9

A Composite Mark is a mark that involves a combination of different words,

devices, sounds, shapes, etc.
In the case of Visage Beauty and Healthcare Pvt. Ltd. v/s Registrar of
Trademarks 2022 SCC OnLine Del 3652, it was stated that the
combination of words as a composite marks cannot be rejected in Section 9
(and Section 11) of the Act, as the same does not directly describe the kind,
quality, etc. of the products concerned. In this case, the Registrar of
Trademarks had rejected the trademark application for the composite mark
“Glow-Getter” under Section 9(1)(b) of the Trademarks Act, 1999. The High
Court of Delhi overturned this decision.

Our trademark contains the words ‘Ice Raja’ with the slogan on a
pink background. Three scoops of ice cream, each of different colours that is
blue, brown and yellow, signifying different flavours are on top of the word
‘Ice Raja’ with sprinkles adorning each of the scoops. A pink spoon is lodged
into the brown scoop of ice-cream. Hence, our mark is a composite mark as it
contains a combination of words, device and signature. Additionally, with all
the factors here taken into consideration, our trademark is to be considered
as an artistic work. Therefore, Our mark is a distinctive and unique
composite mark. We also do not seek exclusive rights for the words ‘Ice’
or ‘Raja’. We only seek to obtain exclusive rights for the combination
of the two words as ‘Ice Raja’ along with an artistic depiction of our logo
with a slogan. The same is allowed by the Delhi High Court in the Visage
Beauty and Healthcare Pvt. Ltd. v/s Registrar of Trademarks 2022 SCC
OnLine Del 3652.

The High Court of Delhi allowed the appeal in Karim Hotels v The
Registrar of Trademarks CS(COMM) 112/2022. The appeal was filed
against the impugned order dated January 8 2019 through which the Senior
Examiner of Trade Marks had rejected the trademark below under Class 29
for “meat, fish, poultry and game; meat extracts; preserved, frozen, dried
and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk,
cheese, butter, yogurt and other milk products; oils and fats for food”. The
grounds of refusal were lack of distinctiveness and the presence of
prior similar marks Therefore, the court held that the reasons for rejecting
the application were not sustainable and set aside the impugned order. The
application was directed to proceed for registration with the conditions
subject to association with certain registered or pending trademarks of the
appellant and without any exclusive rights to the descriptive matter
appearing on the label, such as “Akbari murgh masala” and other descriptive
matter.

In the Our Applied Logo for Our Ice-Cream brand “ICE -RAJA” there
is both Distinctiveness as well as uniqueness and also there is no presence of
Prior similar mark. Our mark is Distinctive in a way that it shows its own
artistic logo representing a pink colour bowl like structure with three scoops
of ice-cream inside it with a spoon on top, this shows the creativeness and
uniqueness of the brand which no other possess.
 It additionally cited the case of Dubai Islamic Bank v. Union of India
W.P. (C) 12749/2019, where the Delhi High Court held that while
adjudicating upon the distinctive nature of the mark, the Registrar should
consider a multitude of factors including the composite nature of the mark,
any accompanying slogan and the overall customer base.

Therefore while looking into this Logo of “ ICE-RAJA” the mark itself
is Distinctive in nature. Distinctive itself means unique and different and if
we analyse the mark we can see its uniqueness , its colour scheme, patterns,
Graphics etc is very unique.

Additionally in the case of Navaid Khan v. Registrar of Trademarks 2023

SCC OnLine Del 3273, it was stated by the High Court of Delhi that, the
mark having a combination of words and devices had to be considered as a
whole for the purposes of grant of registration. In this case, the Court relied
on Abu Dhabi Global Market v. Registrar of Trademarks 2023 SCC
OnLine Del 2947, where it was stated that “composite marks ipso facto
stand excluded from the scope of Section 9(1)(b) of the Trademarks Act,
even if part of such marks consist of marks or indications which serve, in
trade, to designate the geographical origin of the goods or services in
respect of which the mark was registered.”

Our trademark contains the words ‘Ice’ and ‘Raja’ together as ‘Ice
Raja’. It contains a device which is the logo of our trademark (three scoops of
ice cream on a pink background with a spoon attached to the top scoop) and
it contains a signature. As a combination, our trademark is established to be
a composite mark. Therefore, as under Abu Dhabi Global Market v. Registrar
of Trademarks 2023 SCC OnLine Del 2947, section 9(1)(b) cannot be applied
on our trademark.
In Excitel v The Registrar of Trademarks, C.A.([Link]-TM) 5/2022
decided on July 18 2022, an appeal was filed against an order of the Senior
Examiner of Trademarks rejecting the mark ‘Reeltime’. The rejection was
based on the presence of prior similar marks. The examiner did not find the
affidavit of use as satisfactory and the internet extracts did not constitute
primary vidence and could only be considered as secondary evidence and,
hence, the mark did not have any user. With regard to the registered
trademarks in different classes owned by the appellant submitted as
evidence of use, the court held that same could not have been rejected by
the examiner as being irrelevant on the ground that one of the logo marks
was opposed by a third party. In the case of our applied logo “ICE-RAJA” it
has no other presence of a prior similar mark , it is unique and the original
distinctive mark of the abovementioned brand only and no other brand has
the same logo.

2. User Documents submitted are proof of acquisition of

distinctive character

Invoices provided by the client show our trademark being used since
24/10/2018. Client has also submitted invoices of consecutive years from
2018 onwards as Annexure-1 and onwards, to show the brand functioning. As
of now, five years have passed since then and the trademark has obtained a
distinctive character. ‘Ice Raja’ is now associated with quality taste and
proper satisfaction for money spent and the sustained business is evidence
of it.

As per Section 32 of the Trade Marks Act, 1999, a trademark that has been
registered in breach of Section 9(1) of the Act, shall not be declared invalid if
it has acquired a distinctive character in relation to the goods or services for
which it is registered.

Our trademark is filed under Class 30 for Coffee, tea, cocoa, sugar, rice,
tapioca, sago, artificial coffee; flour and preparations made from cereals,
bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder;
salt, mustard; vinegar, sauces, (condiments); spices; ice.

Therefore, our trademark has acquired a distinctive character through the

years it has been in business and customers associate our brand with good
quality ice-creams. This is further proved by the user documents provided by
the proprietor.
3. Registration in case of Honest concurrent use of Trademark.

Registration in the case of honest concurrent use, etc.—In the case of

honest concurrent use or of other special circumstances which in the
opinion of the Registrar, make it proper so to do, he may permit the
registration by more than one proprietor of the trademarks which are
identical or similar (whether any such trade mark is already registered
or not) in respect of the same or similar goods or services, subject to
such conditions and limitations, if any, as the Registrar may think fit to
impose.
The High Court of Bombay, in Kores (India) Limited vs. Khoday Eshwarsa and Son,
1985 (1) BomCR 423 summarised the factors to be considered in establishing honest
concurrent usage. The following were the factors stated by the court:

 "The honesty of the concurrent use.

 The quantum of concurrent use shown by the petitioners having regard to the
duration, area and volume and trade and to goods concerned.
 The degree of confusion likely to follow from the resemblance of the applicants'
mark and the opponents' marks.
  Whether any instance of confusion have in fact been proved.
 The relative inconvenience which would be caused to the parties and the amount
of inconvenience which would result to the public if the applicants' mark is
registered."

In the above Logo of “ICE-RAJA” the party are using the logo merely
depicting the name of their brand and not for any other irrelevant purpose . The
mark is being honestly used for the ice-cream business . The tagline is also there
which says ‘Kings of ice-cream”. Also there is no degree of confusion in this
mark.

In the case of Relative Tours And Travels vs Intellectual Property Appellate

(BOM)-2016-5-57 the court held that In the case of honest concurrent use or of
other special circumstances which in the opinion of the Registrar, make it proper
so to do, he may permit the registration by more than one proprietor of the
trademarks which are identical or similar (whether any such trade mark is already
registered or not) in respect of the same or similar goods or services, subject to
such conditions and limitations, if any, as the Registrar may think fit to impose.
The case of honest concurrent use and with which we are concerned, the opinion
of the Trade Mark Registrar shall be in accordance with Section 12 and the
permission envisaged thereunder is irrespective of the fact that there is any trade
mark already registered or not. In the above mentioned logo also it has been an
honest and concurrent use of logo in accordance with the section 12.

4. The trade mark claims to be entitled to the exclusive use of

any part as whole and the part as separate trademarks.

In the case of Uttam Chemical Udyog v. Shri Rishi Lal Gupta (DLH)-1979-11-6
, the registered trade mark was "5-Bhai", wherein numeral "5" had been disclaimed.
The registrar further concluded that the word "Bhai" had become publici juris and as
such passed an order imposing a disclaimer in respect of the word "Bhai". On
appeal, the High Court held that they had the exclusive right to use the combination
of the words "5-Bhai" in relation to the goods, but however, they could not restrain
others from either using the numeral 5 or the word "Bhai" independently or in
combination with other words.

In the abovementioned logo as well the word “ICE” and “RAJA” are
independent words but are used in combination here which makes it more
distinctive and is entitled to use the word as a whole.

Further In the case of Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd
955 AIR 558, 1955 SCR (2) 252 ., the apex court observed "It is true that where a
distinctive label is registered as a whole, such registration cannot possibly give any
exclusive statutory right to the proprietor of the trade mark to the use of any
particular word or name contained therein apart from the mark as a whole."

As held by the apex court "That is to say, the special advantages which the Act
gives to the proprietor by reason of the registration of his trade mark do not extend
to the parts or matters which he disclaims. In short, the disclaimed parts or matters
are not within the protection of the statute". In the above mentioned logo the
Proprietor has applied for the entire logo as whole and not the words separately.
Therefore is can be registered.

Also In the Charan Das & Veer Industries (India) v. M/s. Bombay Crockery
House where the plaintiff's mark was 'PERFECT' and 'SWASTIC PERFECT' and it had
disclaimed the word 'Perfect'. After the amendment of the Trademarks Act in 1999,
section 17 seeks to omit the provision relating to requirement of disclaimer. This
requirement has been discontinued now as under the present law the disclaimed
matter at a particular time may become distinctive if the proprietor acquires any
right by long use of those parts or matters in relation to his trade, he may, on proof
of the necessary facts, claim his rights by a passing off action.

4) Industrial Application of the Trademark

In the case of Living Media India Limited v. Jitender V. Jain and Anr 2002 VAD Delhi
161, 98 (2002) DLT 430 . The issue before the court was- whether the name and style
of “AAJ TAK” and its logo is a generic term and as such is not the monopoly of any
particular person either in relation to the news programme or otherwise. The court
observed that even if the words “AAJ TAK” are descriptive in nature and even if they
have a dictionary meaning,

together it is still coined word of the plaintiff and has acquired a secondary meaning
by virtue of prior, continuous and extensive use and therefore the combination of
the two words “AAJ TAK” cannot be used by any other user. Both the words “AAJ”
and “TAK” 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.

The Logo “ ICE-RAJA” is also a combination of two words ICE and RAJA. Both
the words have acquired an individual distinctiveness and they are eligible for
Trademark.

In the case Godfrey Philips India Ltd. v. Girnar Food and Beverages Pvt. Ltd 1997 (2)
ARBLR 559 Delhi, 69 (1997) DL 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. By applying this judgement in the
above matter, Both the words “ICE” and “RAJA” have their own uniqueness and when
combined together , they are distinctive. The Tagline itself says that the king of Ice-creams
which makes it an identifiable product.

5) OTHER RELEVANT DOCUMENTS :

It is submitted that the commercialization used by the applicant from 1/ 11/2018 date to Till
Date. Some of the documentaries submitted with reply to exam report are as follows:
1) Bill of Supply Dated : 24/10/2018.
2) Bill of supply Dated: 21/11/2020.
3) Bill of supply Dated : 10/01/2020.
These have been annexed along with the Reply to the examination Report Dated 11-12-
2023.
I submit that our trademark is not prohibited under Section 9(1)(b) of the
Trademarks Act, 1999 because of the following reasons cited below:

a) Composite mark cannot be rejected under Section 9(1)(b) of the

Trademarks Act, 1999.
b) While adjudicating upon the distinctive nature of the mark, the
Registrar should consider a multitude of factors including the
composite nature of the mark, any accompanying slogan and
the overall customer base.
c) The mark having a combination of words and devices have to
be considered as a whole for the purposes of grant of
registration.
d) Composite marks are excluded from the scope of Section 9(1)(b) of the
Trademarks Act, even if part of such marks consist of marks or
indications, which serve, in trade, to designate the
geographical origin of the goods or services in respect of
which the mark was registered.
Hence, in the light of the aforementioned law and cases cited, it is humbly
submitted that there should exist no objections to the Registration of the
trade mark in the instant case, because we are claiming for a composite
mark, which does not fall under the scope of Section 9(1)(b) of the
Trademarks Act, 1999. In conclusion, it is most humbly submitted that the
above arguments should be accepted. Therefore, Section 9(1)(b) is not
applicable to the present application and the Trademark Application may be
accepted at the earliest.

Thanking you,

P. Sanjai Gandhi
Advocate