Manmohan Singh, Chairman:— The Appellant named above prefers the present appeal under Section 9(1)1 of the Trade Marks Act, 1999 against the order (statement of grounds of decision) dated 06.10.2018 communicated to us on 12 October, 2018 passed by the Registrar of Trade Marks, Delhi in respect of the trademark application no. 2657621 in class 25 for refusing registration of the trademark PRO PLAYER in the name of Perry Ellis International Group Holdings Limited filed on 10 January, 2014.
2. The objection is raised under Section 9(1)(a) of the Trade Marks Act, 1999, as the mark is devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person.
3. Another objection raised under Section 9(1)(b) of the Trade Marks Act, 1999, as the mark consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the services or other characteristics of the goods or services.
4. The objection is raised on relative grounds of refusal under Section 11 of the Act because the same/similar trademark(s) is/are already on record of the register for the same or similar goods/services.
5. Admitingly in the examiner report, 8 trademarks were referred having 3 players. It is stated by the learned counsel for the appellant that out of the 8 trademarks, 3 marks have been removed and the remaining trademarks are not identical. In support of the document it is stated by him that the same trademark has been registered in various countries including India, Australia, USA, Canada.
6. The counsel further brought to the attention that the mark PRO PLAYER is a popular brand internationally, including in India. The extensive, exclusive and continuous use of the mark PRO PLAYER has made the mark distinctive of the appellant. The appellant has several stores in tourist destinations like Miami, which is visited by all the tourist across the world, including India. Thus the tourist travelling to this destination bring the knowledge back to India. In fact, the mark PRO PLAYER is displayed on a weekly basis on the daily newspaper of United States and sports magazines which are also available in India. The said documents were also submitted with the user affidavit.
7. It is stated that the mark applied for has a trans-border reputation and goodwill of the appellant and the subject mark via the internet. The domain names www.proplayer.com and www.prey.com are open to public at large and the members of the trade and public. By sheer nature of the internet, the said sites are accessible by public worldwide, including in India.
8. The appellant also brought to the notice of IPAB that the appellant has a separate registration for the mark P Logo and PRO PLAYER under registration No. 2657620, wherein similar objections were cited and the appellant overcame the same.
9. In view of the circumstances mentioned above, the present appeal is allowed setting aside the impugned order. The application of the appellant shall proceed further in accordance with law.