To, Date: 26/06/2018

The Registrar of Trademark,

Trademark Registry, CHENNAI

Sub: REPLY TO EXAMINATION REPORT(MIS-R) Dated on: 28/05/2018 16:12:24

Ref: Application Number: 3817679

Sir,
With reference to the above application, the point wise reply is as under: -

Reply attached seperately

SELVAM & SELVAM, ADVOCATES

Attorney [1110]
SS Ref: TMA-IN/3220 June 26, 2018

The Registrar of Trade Marks

Trade Marks Registry,
Intellectual Property Office Building,
G.S.T. Road, Guindy, Chennai-600032,
Tamil Nadu, India.
Through online filing system

Dear Madam/Sir,

Application No. : 3817679

Trade Mark : KIVA (Device)

Class : 29

Applicant : Kiva Health Brands LLC

We write with regard to the above subject matter.

We acknowledge the receipt of the Examination Report dated May 30, 2018 and received by us on the same

day via email in respect of the above application.

The Learned Registrar of the Indian Trademark Office has raised objections to the subject mark proceeding

towards registration and our response to the said objection is detailed below:

Relative grounds for refusal

The Trade Mark application has been objected on relative grounds of refusal under Section 11 of the Act
stating that the subject mark is identical with earlier mark in respect of identical description of goods or

services and because of such identity there exists a likelihood of confusion on the part of the public.

The following marks have been cited in the examination report:

Application no. Class Mark

3391812 29 KIVAA

It is however submitted that the cited mark will not pose a threat to the registration of the subject mark for
the reasons as stated under:
Structural Dissimilarity
At the outset, it is submitted that the subject mark and the cited mark are prominently dissimilar with

reference to their respective structure and the same can be observed in the table below:

Subject Mark Cited Mark

Application No. 3817679 Application No. 1916987

KIVAA

It is submitted that the subject mark is a device mark and the cited mark is a word mark. Due to their evident

structural differences, any person of average intelligence would be able to differentiate between the subject

mark and cited mark. The subject mark is the word “KIVA” written in stylized font with the letter “V” as an

image of two leaves in different shades of green. The cited mark comprises of the word “KIVAA” with an
additional ‘A.’

In K.R. Chinna Krishna Chettiar vs. Sri Ambal & Co., Madras & Anr [1970 AIR 146] it was duly held by

the Hon’ble Court that “the resemblance between the two marks must be considered with reference to the ear

as well as the eye”. It has further been held by the Court in Vinayak Tea Co. vs. Kothari Products Ltd [2002

(2) AWC 1448] “that a simple similarity in the name in the trademark alone is not sufficient to make out a

case either of infringement or of passing off for in both the cases confusion or deception is the essential
element. For ascertaining confusion, one has to examine (a) the nature of the two marks including the letters
used, the style of using the letters, the device in which they have been used, the colour combination of the

trademark (b) the class of customers (c) the extent of reputation (d) the trade channels (e) the existence of any
connection in the course of trade and (f) all other surrounding circumstances.”

The High Court of Delhi, in Marc Enterprises Pvt Ltd v. Five Star Electricals India, [(2008) ILR 2Delhi771)],

had held that “the trademark used by the applicant was different in writing style, color, get-up etc. and visual

representation of both the marks were different and thus considered dissimilar.”.

In light of the above precedents as well as the prominent structural differences, it is submitted that a person
of average intelligence would be able to differentiate between the cited mark and the subject mark,
therefore leaving no scope for confusion or deception amongst them. It is brought to the kind attention of
the Learned Registrar that the subject mark and cited mark are visually dissimilar and state that the objection

be waived.

Difference in Classification

It is further submitted that the subject mark’s and the cited mark’s specifications of their goods under Class
29 are dissimilar. The dissimilarity in their specifications can be observed as hereunder:

Marks Specification Of Goods

Subject Mark KIVA under Class 29

Candied fruit; candied fruit snacks; dried fruit-based snacks; dried fruits; dried

fruits in powder form; infused oils for cooking; milk shakes; blended oil; cooking

oil; dairy-based powders for making dairy-based food beverages and shakes; dried

fruits in powder form; dried vegetables in powder form; edible oil, namely, cumin
oil, black seed oil, rosehip oil, jojoba oil; freeze-dried fruits; fruit-based organic

food snacks also containing mango, maqui berry, camu berry, acai berry and gogi

berry; organic dehydrated fruit snacks; preserved berries; processed chia seeds;

processed goji berries; processed acai berries; organic foods, namely, acai berry

powder, maca powder, and camu camu powder; goji berries, namely, processed

goji berries; chia seeds, namely, processed chia seeds; organic foods, namely,
maqui berry powder, and wheatgrass powder.

Cited Mark KIVAA under Class 29

Chips and Wafers included in Class 29; Potato Crisps and Flakes included in Class
29; Preserved, Dried, Tinned Cooked and Canned Fruits and Vegetables; Jellies,

Jams, Soups, Essences; Milk and Other Dairy Products; Eggs; Edible Oils and Fats;
Vegetable Preserves; Pickles, Butter, Ghee, Cheese, Creams, Vegetable Soup

Preparation; Salmon, Salad Oil, Sausages included in Class 29; Meat, Fish, Shellfish,
Poultry and Game, Meat Extracts; Food Stuffs for Human Consumption

It is further submitted that the subject mark and cited mark differ in their specifications of goods. Although
the two marks fall under the same class, it does not make them similar so as to create the slightest confusion
or deception in the minds of the common man as the subject mark, exclusively deals with fruit-based

candies, organic powders, snacks, infused oil, cooking oil, blended oil etc., which is a niche assortment of
products specially with organic ingredients. The cited mark deals with goods such as Chips, Wafers, Potato

Crisps, Flakes, Preserved, Dried, Tinned Cooked and Canned Fruits and Vegetables, Jellies, Jams, Soups,

Essences; Milk and Other Dairy Products; Eggs; Edible Oils and Fats; Vegetable Preserves; Pickles, Butter,

Ghee, Cheese, Creams, Vegetable Soup Preparation; Salmon, Salad Oil, Sausages Meat, Fish, Shellfish,
Poultry and Game, Meat Extracts.

It is further brought to the kind attention of the Learned Registrar, that the application for the cited mark

“KIVAA” bearing no. 1916987, has been filed on February 4, 2010. It is submitted that the applicant of the
cited mark has made the afore-cited application in bad faith, as there is no use of the mark whatsoever. A

mere cursory search on the internet would show that there is no existence of the cited mark in the relevant
market. Hence, it is further submitted that there would no scope for confusion and that the objection over

the subject mark ought to be waived.

It is a well settled principle that any person or entity should not be allowed to claim monopoly over a range

of products registered under the Class. The Hon’ble Supreme Court in Vishnudas Trading as Vishnudas

v. The Vazir Sultan Tobaccos. Ltd, JT 1996 (6), had held that “if a trader or manufacturer actually trades in

or manufactures only one or some of the articles coming under a broad classification and such trader or
manufacturer has no bonafide intention to trade in or manufacture other goods or articles which also fall

under the broad classification, such trader or manufacturer should not be permitted to enjoy monopoly in
respect of all the articles which may come under broad classification and by that process that preclude the

other traders or manufacturers to get registration of separate and distinct goods which may also be grouped
under the broad classification.

Therefore, it is submitted that although the subject mark and cited mark fall under the same class of goods,
this would not be a hindrance to the registration and usage of the subject mark within the relevant market.

The overall idea and the sphere of operation of the subject mark and the trade channel is different from
that of the cited marks. It is highly unlikely that this vague similarity of classes between the marks would

create confusion or deception in the minds of a common man of average intelligence. Therefore, it is
submitted that the mere similarity of few letter in the marks cannot deny registration of the subject mark

and state that the objection be waived.

Trademark to be seen as a whole

It is brought to the kind attention of the Learned Registrar that the subject mark ought to be examined as

a whole, according to Section 17 of the Trade Marks and not in isolation. The afore-mentioned section
states that when a trademark consists of several parts, then the registration shall, confer over the proprietor

exclusive right over the trademark as a whole and not to parts of the mark. When taken as a whole, it is

apparent that the subject mark and cited mark are dissimilar.

The Delhi High Court in Schering Corporation & Ors. vs Alkem Laboratories [CS (OS)730/2007], held that
“By virtue of Section 17 of the Act, it is the said marks and not parts of the said marks, which stand protected”.

It is submitted that the subject mark is a unique representation of the Applicant’s business in connection

with goods relating to food supplements, shakes, nutritional supplements etc. It is submitted that reliance

ought to be made on the well-known principle of ‘Trademark taken as a whole’. When the subject mark and

cited mark are taken as a whole, they are significantly dissimilar to each other, which can be observed from
the above-mentioned table.

Further, in Cadila Laboratories Ltd. V. Dabur India Ltd., [1997 PTC (17) 417] it was held that “As has been
settled, while ascertaining two rival marks, as to whether they are deceptively similar or not, it is not

permissible to dissect the words of the two marks. It is also held that the meticulous comparison of words,

letter by letter and syllable by syllable, is not necessary and phonetic or visual similarity of the marks must be

considered.”

The mere similarity of a few letters of the alphabet between the marks cannot imply similarity. Therefore, it

is humbly submitted that the subject mark when taken as a whole, is prominently different from each other
owing to their visual and phonetic dissimilarities.

It is imperative for the Applicant to get the subject mark ‘KIVA’ registered and obtain exclusive right to use

the title and restrain the unauthorized use/adoption or infringement of the trademark. The rejection of
registration would be detrimental to the Applicant and not commercially viable.

Other Registrations

Further, it is also pertinent to note that the Applicant has been using the subject mark extensively world
over and holds international registrations in the European Union, United States of America, New Zealand,

China and Korea. Relevant documentary evidence is annexed herewith as Exhibit A.

About the Applicant

It is submitted that the Applicant specializes in creating its own line of food supplements under the subject
mark. It produces food supplements for health, diet, energy, and beauty etc. The subject mark has an
extensive reach in the retail industry, as its products are sold in various online sites. The Applicant is also

the registrant of the domain name kivahealthfood.com. The website is specifically designed for the products

of the subject mark with a prominent incorporation of the subject mark, in addition to a vast amount of

information about its features.

The subject mark has also been widely and exhaustively promoted on social media websites such as

Facebook, Instagram etc. These social media portals feature the subject mark and are actively updated with

information on their latest products thereby reaching out to the public at large. The extent of reputation
accredited to the brand can be evidenced by the number of followers it has in the said social media

platforms. The products are widely sold in leading online shopping sites. Relevant extracts evidencing the
same has been attached herewith as Exhibit B.

As would be evident from above, the products under the subject mark are specialized and target a specific
range of consumers and thus the same would adequately differentiate the trade channel as well ensuring

that the likelihood of confusion/deception is nil.

In lieu of the afore-mentioned facts, it is evident that the subject mark is eligible for registration. Therefore,

in order to safeguard to uniqueness, we request the Learned Registrar to waive the objections under Section

11 and allow the mark to proceed toward advertisement.

Should the Learned Registrar not be inclined to accept the Application for registration, we request that no
adverse orders be passed against the Applicant without giving an opportunity of being heard in the matter.

Accordingly, we hereby apply for a personal hearing in the matter provided under Rule 33(6) of Trade Marks

Rule, 2017.

Sincerely,

For Selvam and Selvam

EXHIBIT A
 1325580- KIVA
Full details
Current Status
English
180 Expected expiration date of the registration/renewal
09.05.2026
151 Date of the registration
09.05.2016
270 Language of the application
English
732 Name and address of the holder of the registration
Kiva Health Brands LLC
99-1295 Waiua Place,
Unit B
Aiea HI 96701 (US)
811 Contracting State of which the holder is a national
US
842 Legal nature of the holder (legal entity) and State, and, where applicable, territory within that State where the legal
entity is organized
Ltd. Liability Company, Nevada, United States
740 Name and address of the representative
Seth M. Reiss, Seth M. Reiss, AAL, ALLLC
3770 Lurline Dr.
Honolulu HI 96816 (US)
770 Name and address of the previous holder
Kiva Health Brands LLC
2002 Kahai Street
Honolulu HI 96819 (US)
540 Mark
KIVA
541 Reproduction of the mark where the mark is represented in standard characters
511 International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice
Classification) - NCL(10-2016)
03 Aromatic oils; body oils; body and beauty care cosmetics; skin conditioners; skin lotions; skin toners; skin and
body topical lotions, creams and oils for cosmetic use.
05 Food supplements; food supplements for health, diet, energy, and beauty; food supplements, namely, anti-
oxidants; nutritional food additives for medical purposes in the nature of natural food extracts derived from
plants including fruit, and animals; powdered nutritional supplement concentrate; wheatgrass for use as a
dietary supplement; dietary food supplements; dietary supplement drink mixes; health food supplements;
herbal teas for medicinal purposes; medicinal tea; nutritional food additives for medical purposes in the nature
of natural food extracts derived from plants including fruit, and animals; nutritional supplement shakes;
powdered nutritional supplement drink mix; protein supplement shakes; nutritional food supplements.
29 Candied fruit; candied fruit snacks; dried fruit-based snacks; dried fruits; dried fruits in powder form; infused
oils for cooking; milk shakes; blended oil; cooking oil; dairy-based powders for making dairy-based food
beverages and shakes; dried fruits in powder form; dried vegetables in powder form; edible oil, namely, cumin
oil, black seed oil, rosehip oil, jojoba oil; freeze-dried fruits; fruit-based organic food snacks also containing
mango, maqui berry, camu berry, acai berry and gogi berry; organic dehydrated fruit snacks; preserved berries;
processed chia seeds; processed goji berries; processed acai berries; organic foods, namely, acai berry
powder, maca powder, and camu camu powder; goji berries, namely, processed goji berries; chia seeds,
namely, processed chia seeds; organic foods, namely, maqui berry powder, and wheatgrass powder.
30 Candy; chocolate powder; honey; organic spices; pepper spice; saffron for use as a food seasoning; spices;
spices in the form of powders; tea; tea extracts; tea for infusions; tea-based beverages; tea-based beverages
with fruit flavoring; vanilla; flavored salt; food flavorings, namely, infused oils, not being essential oils; fruit
teas; fruit jelly candy; herbal honey; herbal tea [infusions]; kombucha tea; mixes for making flavored tea; mixes
http://www.wipo.int/madrid/monitor/en/showData.jsp?ID=ROM.1325580 1/2
EXHIBIT B
 SS Ref: TMA-IN/

FORM TM-M

THE TRADE MARKS ACT, 1999

Form of authorization of an agent
(Section 145; Rule 19)

We Kiva Health Brands LLC, a company existing under the laws of State of
Nevada, the United States of America of the address 99-1295 Waiua Place, Unit B
Aiea HI 96701 United States of America hereby authorize, Mr. Raja Selvam, Ms.
Archana Priyadharshini, Ms. Prachi Jain and Ms. Ragini Gupta Advocates of
Selvam and Selvam, Old no: 9 Valliammal Street, First Floor, Kilpauk,
Chennai – 600 010, Tamil Nadu, India to act as our Agents for our trade mark
applications and all proceedings under the Trade Marks Act, 1999 and Trade Marks
Rules, 2017 and all such proceedings before the Registrar of Trade Marks or the
Government of India and all acts, deeds and things may deem necessary or
expedient in connection therewith or incidental thereto and request that all
notices, requisitions and communications relating thereto may be sent to such
Agent at Selvam and Selvam, Old no: 9 Valliammal Street, First Floor,
Kilpauk, Chennai – 600 010, Tamilnadu, India.

We hereby revoke all previous authorizations, if any, in respect of the proceeding

trademark and confirm and ratify all previous acts, if any, done by the said Agents
in respect of the matters aforesaid.

Dated this the April 09, 2018

KIVA HEALTH BRANDS LLC

Name:
Tchad Henderson
______________________________

Designation: 4-11-2018
_______________________

To,
The Registrar of Trade Marks
Office of the Trade Marks Registry
Chennai / Mumbai / Kolkata / Delhi / Ahmedabad