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Judgment
Manmohan Singh, J
On 18th December 2008, the appellant made a trade mark application under registration No. 1765548 for the mark "BodyFit" under class 5 in respect "drugs for medical purposes; sanitary napkins; panty liners (sanitary); sanitary pants; menstruation tampons; napkins for incontinent; pads for incontinent; pants for incontinent; absorbent cotton; breast pads; and deodorants other than for personal use".
The application was examined by the Registry vide examination report dated 9th October, 2009 wherein the Registry had raised the objections under Section 9 and 11. The applicant was refused for registration.
The subject appeal is against the Registry's refusal order under official No. TLA 847 dated 28 January 2013 and received by the respondents on 4th March, 2013.
The appellant is a Japanese based company engaged in manufacturing and sale of baby care products, feminine care products and pet care products.
It has come on record that the mark BodyFit is an arbitrary combination of words which was adopted in Japan as early 1995 and subsequently used in several countries including but not limited to Japan, China, Taiwan, Korea, Thailand, Singapore, Malaysia, Indonesia, Myanmar, Laos, Cambodia and Vietnam. The appellant submits that the word BodyFit has no reference to the character and quality of goods for which the mark is claiming protection.
The case of the appellant is that in view of the extensive international use, the mark BodyFit has acquired extensive reputation and goodwill in the international market. Such reputation is evidenced by the turnover provided by the appellant for the years 2010 to 2012 in Countries such as China, Korea, Vietnam, Taiwan, Thailand, Indonesia, Malaysia, Singapore and Japan. The appellant states that the resultant reputation on account of the incessant use and reputation has percolated to India as well.
It is stated by the counsel for the appellant that his client has already commenced used of the mark BodyFit in India. On account of its incessant use, the mark has acquired extensive reputation and consequently, acquired distinctiveness. Documents substantiating the use in India are filed as Exhibit A.
The mark BodyFit is registered and pending registration in 77 countries. List of countries where the appellant's mark is registered is filed as Exhibit B.
In India, the appellant owns registration for the mark SOFY BODYFIT since 19"' February, 1997 in class 5 vide registration number 734416. Thus, the objection raised by the respondent under Section 9 is not sustainable and the same is waived.
With regard to objection under 11 of the Act is concerned, it is rightly submits that as on date the cited application Nos. 983284 and 1062401 has been withdrawn and the cited application number 1064342 has been abandoned. In view of the same, the appellant submits that there are no valid conflicting marks in the Register. Status of the three cited marks from the Registry's database is filed as Exhibit C. Thus, objection under section 11 is also waived.
In view of the aforesaid reasons that the mark BodyFit is inherently distinctive and capable of distinguishing the goods in due course for which the appellant is claiming protection. There are no conflicting marks in Register. Thus, the appellant's mark raising objection Sections 9 and 11 of the Act by the respondent are not sustainable. The appeal is allowed. The impugned order is set-aside.
Consequently, the application No. 1765548 is accepted for advertisement. The respondent to take necessary steps as per rules.