PRO JURISTAS LAW OFFICES®
#13/52, GUPTA ENCLAVE, SOMAJIGUDA,
HYDERABAD, TELANGANA – 500082,
+91-9944230481, lawoffices@projuristas.com
12th August, 2020
To,
Mr. Venkat Rao,
Managing Director,
Chamu Technologies Pvt. Ltd.,
Rangareddy Colony, Rai Durg,
Hyderabad, Telangana – 500032.
Re: Legal opinion for registration of the Trade Mark ‘CHAMU’
Dear Mr. Venkat,
We hope this mail finds you well. We received your request last week regarding our legal
assistance for trade mark your registration. Thank you for approaching our office to assist
you in your case. You have asked us to check whether the trade mark ‘CHAMU’ which you
proposed for your mobile phone manufacturing company can be registered or not and
whether it is possible to register it during the times of this Covid-19 pandemic.
We have conducted extensive research on this case and have formed the following legal
opinion. While registering a trade mark we look into its distinctiveness or strength and prior
use or similarity of the mark. Therefore this opinion is divided based on these factors.
DISTINCTIVENESS AND STRENGTH
By law, a distinct and strong mark is easy to enforce against third parties. Also, more the
strength and distinct a mark is, more the chances of the mark being registered under the law.
The strength of a trade mark is dependent on the nature of the word used as a trade mark. The
following are the type of Trade Marks in order of their strength:
1. Inventive or coined Trade Marks
These are trade marks which are derived by merging two or more words, which have
no dictionary meaning. ‘Pepsi’ for beverages, ‘Kodak’ for cameras, or ‘Rolex’ for
watches are some common examples.
2. Arbitrary Trade Marks
These are trade marks which contain familiar words but are arbitrarily or randomly
used in relation to products or services without drawing any connection to the nature
of such products or services are termed as Arbitrary Trade Marks. ‘Apple’ for
technology services and mobile phones or ‘Yahoo’ for online search engines are some
common examples.
3. Suggestive Trade Marks
These are trade marks which do not directly describe goods or services but in a way
give an indirect suggestion to third parties about the same slowly leading to an
association with the goods by imagination. ‘LinkedIn’ for online professional network
or ‘Puma’ for shoes are common examples.
4. Descriptive Trade Marks
These are trade marks which make a direct reference or connection with the nature,
description or quality of goods or services. ‘Big Bazar’ for supermarkets or ‘Choco
Treat’ for chocolates are some common examples for Descriptive Trade Marks.
According to Section 9(1) of the Trade Marks Act, 1999, a Trade Mark shall not be registered
if it is not capable of distinguishing the goods and services of one person from that of
another. Therefore, the strongest Trade Marks are ones that are Inventive and Arbitrary since
they are excusive to one’s own brand which make the brand distinct and stand out from the
rest. The word ‘CHAMU’ therefore falls in the category of inventive Trade Marks. From our
discussions, your reason for choosing this name was because the word ‘CHAMU’ was
formed from the merger of the two names ‘Chandan’ and ‘Mukesh’, in the memory of your
late grand-father and father respectively. You told us it had been their dream to establish a
company dealing with Mobile Technologies. We believe your story is a heartfelt one and, the
name ‘CHAMU’ is a symbol of gratitude and love for technology. From our thirty years of
experience in the field of Trade Marks, we’ve seen brands or companies with a strong story
have gone a long way.
PRIOR USE OR SIMILARITY
To check for prior use or similarity to the proposed trade mark we form a clearance search
report by conducting extensive research. This is primarily conducted to knock out marks
which are identical and pose an imminent threat to the mark being applied for. This search
therefore, prevents Trade Mark rejection under Section 9 and Section 11 of the Trade Marks
Act, 1999. Our team of researchers has conducted an exhaustive search in various platforms
like the Trade Mark Registry, Ministry of Corporate Affairs, Domain Name Registry and
Common Search Websites in order to ensure precision and prevent any legal disputes in the
future. I have included only those trade mark’s which can be a potential threat to the
proposed trademark in this opinion. The following is my opinion based on the search report:
1. Trade Mark Registry
The Trade Mark Registry registers all the trademarks which qualify for registration
under the Trade Mark Act and Rules. Since goods associated with this proposed
trademark are mobile phones, ‘CHAMU’ would belong to Class 9 of the Nice
Classification. Nice Classification is an internationally accepted system of
classification for trademarks which is divided based on the goods and services being
applied for. We form a detailed search in the registry in order to identify marks which
are phonetically, deceptively, confusingly, orally or exactly similar to the trade mark
being applied for. The following marks were found to be similar to your trademark:
‘CAMU’ (refer to search report for logo) is a registered trade mark under class 9
with application no. 4225513, belonging to ‘Octoze Technologies Private Limited’.
It deals with Software applications for computers, mobile devices and wearable
devices. Therefore, the goods are not similar to the trademark being applied for.
There is a possibility of them filing an objection to the trademark ‘CHAMU’ since
both these trademarks sound phonetically similar. However, this should not pose a
threat to you trade mark since the Supreme Court in the case of M/S. Nandhini
Deluxe vs M/S. Karnataka Cooperative Milk Producers Federation Ltd, 2018(9)
SCALE 202 had opined that, a same or deceptively similar trademark can be used
even for goods falling under the same class if they are visually distinct when
compared. Supreme Court held that the use of similar trademarks for different
goods or services, even though they might be falling under the same class, cannot
be termed as infringement.
‘COMIO’ is a trademark applied for under class 9 with application no. 3551691,
belonging to ‘Topwise Communications Private Limited’. It deals with the
manufacturing of mobile phones, applications, accessories; scientific and life
saving equipment, among several other devices. The two trademarks ‘COMIO’ and
‘CHAMU’ appear to sound phonetically similar, so in order to prevent any
infringement disputes in the future, it is advisable to design the logo of ‘CHAMU’
visually distinct from that of ‘COMIO’ (refer to search report for the logo).
‘COMIO’ also uses a tagline, “Don’t Listen Kar Daal”, while advertising its
products. It is advisable to use your own distinct tagline in order to prevent
infringement disputes in the future.
‘MU PHONE’ is a trademark applied for under class 9 with application nos.
4225835 and 3946182 belonging to ‘Shenzhen Kechaoda Technology Co., Ltd’
and one named ‘Lin Luxian’. It deals with the manufacturing of mobile phones,
scanners, cameras and alarm systems among several others. It is important to note
that it has been using this trade mark since the year 2011, and so their trade mark is
likely to be approved soon. The two trademarks, ‘MU PHONE’ and ‘CHAMU’
appear to sound phonetically similar and so there is a slight chance of a suit for
trademark infringement. To avoid such a situation, it is advisable that the word
‘phone’ should not be used as a suffix with the proposed trade mark, if you wish to
use a suffix.
2. Ministry of Corporate Affairs
Apart from the trademark registry we usually also search the trade mark registry in
order to make sure that no trademark infringement suit should arise from any
company registered under the ministry. Many a times, companies though registered
under the Ministry do not register themselves with the trade marks registry leading to
further confusion and litigation. We are happy to inform that there appears to be no
company registered under this ministry with the name similar to ‘CHAMU’.
3. Domain Name Registry
In his fast paced word with growing technology, most companies and brands usually
have their own websites to advertise their products for further reach on digital
platforms. Technology in these tough times of the Covid-19 pandemic has been one of
the biggest sources of communication with the public at large. Therefore it has
become pertinent that most brands have their own domain name for their websites. It
is important to search for the availability of the domain name since future
infringement suits and more litigation may arise owning to many third party websites
being created. We believe that your company would also require its own domain
name in the future to advertise your products on digital platforms and so have
conducted this search in the Domain Name Registry. We are happy to inform you that
there appears to be no domain name registered under the name ‘CHAMU.IN’ and so
you would not have to face any such litigation problems in the future.
4. Common Search Websites
In order to further ensure that our clients don’t face any infringement suits we also
research in common search websites like Google for brands with names similar to the
proposed trade mark. We do this because; very often brands don’t register their own
trade mark but would still be in continuous use of the trademark. Such trademarks
though unregistered are protected under common law and suits for ‘passing off’
trademark can be filed against the third party infringer. The term ‘passing off’ refers
to ‘selling one’s own goods under the pretense that they are of another man’. Such
suits are complex and take years to solve. This leads to substantial damage to the
parties involved. From our search we found that the following trade mark was found
to be similar to the proposed trademark:
‘Microsoft Canvas Knight Cameo’ was the only phone which we have found with a
name similar to the proposed trade mark. Micromax has not registered the trade
mark ‘Cameo’ yet, however since they have been trading these smart phones since
2014, they would be deemed to be the owners of the trade mark. The name
‘CAMEO’ appears to sound phonetically similar to the word ‘CHAMU’, so there is
slight chance of an infringement suit to arise, however this wouldn’t be much of a
problem since the suffix’s used would also be taken into consideration while
deciding such a suit and since there is no similarity in the suffix’s you wouldn’t
have much of a problem.
FINAL COMMENTS
Upon perusing the entire research done, we believe that the proposed trade mark ‘CHAMU’
can most likely be registered. We however, believe that it would always be better to also
include a tagline or a prefix or suffix to the proposed trademark to make it sound exclusive
and easier for the public to relate to your brand. Incase you wish to expand your business
further, and include other goods or services under your proposed trade mark; it is always
wiser to include them in the same application, so that there is no hassle of litigation again in
the future.
As far as the courts and the Office of the Controller General of Patents, Designs and
Trademarks are considered, they are all efficiently functioning in the online or virtual mode.
All of the filing process is done through e-filing methods, so these Covid-19 times would not
hamper the registration process in any way.
The entire process of registration usually takes about 6 to 12 months, so it is advisable that
we begin the registration process as soon as possible. However upon the acceptance and
advertising the filed application in the trade mark journal, you can start using the proposed
trademark. The symbol ‘™’ must be affixed with the proposed trade mark to indicate
acceptance from the trade mark registry, until the registration is fully complete. It usually
takes one to two months to complete this process. Further legalities and procedures would be
explained to you in detail upon confirmation. Therefore, please confirm if you would like us
to move forward with the registration process. We also provide marketing and logo making
services to our clients. Do write back to us if you wish to avail these services too.
My assistant has already briefed you regarding our payment fees and the various service
packages we provide via mail. Please mention which service package you would prefer along
with the confirmation mail. We look forward to hearing back from you soon and wish your
business all the luck and success. Hope you stay safe during these tough times of the Covid-
19 pandemic.
Sincerely yours,
Pranavi Raj,
Partner,
Pro Juristas.
