27 judgments of the Delhi High Court, the Madras High Court and 1 other court applying Trade Marks Act s.9(1)(b), from 2023–2026, each with a headnote by BRB Legal.
Appeal allowed and an interim injunction granted restraining use of "Lotus Splash" and other Lotus derivative marks for cosmetics and beauty products. Applying the anti-dissection rule, the dominant feature test, overall similarity and the perspective of the average consumer as explained by the Supreme Court in Pernod Ricard, the Division Bench held that an injunction was warranted at the prima facie stage. It disagreed with the Single Judge that the respondents' use fell within the exception in section 30(2)(a).
Refusal of a mark as descriptive set aside. The Court held that the reasoning was imaginary and based on conjecture: the order never clarified which products consumers were supposed to be choosing between, and there was no factual material to support the conclusion that the mark denoted a variety of goods. Decisively, the application was filed on a proposed-to-be-used basis, so there was no prior use from which any conclusion about consumer options could be drawn, and the order was silent on that aspect.
Refusal under section 9(1)(b) set aside. The objection rested on an erroneous assumption that the mark was a word mark: what was applied for was an artistic device using no word at all, and the allegedly descriptive word appeared only in the trade mark description forming part of the application, which the applicant agreed to amend. The devices were in fact used on the packaging of a product whose own mark had been registered since 1967, and documents evidencing use from January 2019 had been filed with the appeal.
A refusal under section 9(1)(b) was quashed as a non-speaking order. The applicant already held a registration for the identical mark in another class in India, and registrations for it in four other countries, all placed before the Registrar, and none of it was addressed. The mark should have been published so that any third party could oppose.
A refusal under section 9(1)(b) was set aside for dissecting a composite word mark. Even on an absolute grounds objection the mark must be considered as a composite whole, and the order never explained why the composite was descriptive or common to the trade. Registrations of the same mark in the United States and in Uganda had been brought to the Registrar's notice and were ignored. The applicant's services were also wider than the class applied for.
A mark built on a word that applies to almost all medicinal and pharmaceutical goods, which are essentially relief giving, is extremely generic however it is prefixed. The threshold for registration of a pharmaceutical mark is higher, the application was on a proposed-to-be-used basis with no user claimed, and registration would amount to expansive overreach.
Common English words can be registered when the mark is read in its totality, and the Registrar cannot dissect it the way he attempted. Even an unusual juxtaposition of words in common use may qualify as distinctive, and distinctiveness is judged against the particular services rather than in a vacuum, so long as the applicant claims no monopoly in the separate words.
The logo was already registered in classes 5, 30 and 35 and was refused in class 44 as descriptive. If it is descriptive for one class it is descriptive for the others, so the objection cannot stand alongside the Registry's own grants. Nothing could be more cryptic than the order.
The same tag line had been registered in Hindi and in vernacular transliterations. Refusing it in English alone for want of distinctiveness was plainly arbitrary. It is not the language that matters but the content, and the tag line was claimed with the mark, not in exclusion of it.
The prohibition applies only if the trade mark consists exclusively of marks or indications which serve in trade to designate, among other things, the intended purpose. A device mark of a pictorial element beside stylised words, examined as a whole, does not fall within it, and both cited marks stood at the status of objected.
A device mark of three leaves beside stylised words was refused as descriptive. There was a case to contend that it was suggestive and not descriptive, the examination report had noticed no conflicting marks at all, and the identical mark stood registered in five other classes with use evidenced by affidavit, invoices and advertisements.
Refusal of a word mark for travel and tourism services under sections 9(1)(a) and 9(1)(b) set aside. On section 9(1)(a), lack of distinctive character means the mark is not such as would enable the applicant's goods or services to be distinguished from another's, and there was no evidence to that effect: the Examiner referred to no other proprietor holding a registration for the expression or anything similar, and the phrase was not so commonplace as to be inherently lacking in distinctiveness. On section 9(1)(b), there is a difference between descriptive marks, which the provision proscribes, and suggestive marks, which are entitled to registration; the mark could not be treated as descriptive of travel services merely because those services might involve travel to various places. Section 9(1)(b) cannot be used to refuse any word mark which has some relationship, howsoever distant, with the goods or services applied for. The Court also criticised the practice, sanctioned by Rule 36(1), of passing an unreasoned refusal and then requiring the applicant to apply and pay for the grounds of decision, calling it an unwholesome practice.
A device mark was refused as liable to designate the kind or intended purpose of the service. Viewed as a whole, the image of a rooster beside stylised wording with the applicant's corporate name beneath it was distinctive. The identical device mark was already registered for a class of goods more closely related to the applicant's business, which made the refusal unjustified.
An order that never considered whether the mark had acquired a secondary meaning was unsustainable for that reason alone. Descriptive marks can be registered where secondary meaning is established, and a mark is not to be rejected straightaway merely because part of it carries a reference to the goods: the merits must be weighed along with the extent of usage, and the applicant's other registrations bear on registrability.
Three appeals against refusals in classes 16, 35 and 42 were withdrawn on instructions and dismissed as withdrawn. No question was decided, so the refusals of February 2019 stand.
Refusal under sections 9(1)(a), 9(1)(b), 11(1)(a) and 11(1)(b) set aside. The Statement of Grounds gave no reason why the word mark was not distinctive or was descriptive, and nearly a decade of use with documents on record showed acquired distinctiveness. Appeal allowed and the application sent to advertisement under the proviso to section 20.
Three defects. An objection under section 11 cannot be taken at all where the examination report identifies no similar or identical earlier mark in support of it. The order reproduced the language of section 9(1)(b) without saying how the mark fell within any of its grounds. And a user affidavit was not mandatory under the rules in force when the application was filed, which gave the Registrar only a discretion to call for one, which he never exercised.
Two dictionary words used together did not directly describe a positive quality of the services and only hinted at their intended nature, so the mark was suggestive at the highest even though it had the potential of being commendatory. A user affidavit showed use in India since 2013, identical registrations existed in several jurisdictions, and half of the ten cited marks were the applicant's own.
A tagline made of dictionary words can function as a source identifier so long as the expression does not describe or relate to the features of the goods and services. A question used to elicit someone's perception of a situation designates nothing about the goods in the classes applied for, and the examiner appeared to have relied solely on the dictionary meanings of the words.
Refusal under section 9(1)(a) and (b) of a composite mark set aside. The artwork, a water droplet covered by a leaf in the shape of a hand, was unique, creative and clearly distinctive. A mark must be seen as a whole, and the slogan and acronym within it, though prominent, are only part of it. The Registry produced no material to show the expression was common to the trade or descriptive of any feature of water treatment products, and slogans and taglines can be trade marks within sections 2(m) and 2(zb).
Refusal under sections 9(1)(b), 11(1)(a) and 11(1)(b) set aside. Although one element of the composite mark could be correlated with milk products, paired with the second element it produced a mark that did not describe the goods, so the mark was suggestive at best and not descriptive. Compared as a whole the mark was prima facie dissimilar to the cited marks except for one common word, and the appellant's own earlier registration of the word mark had not even been cited. The order recorded that no documents of use were on record when an affidavit giving sales figures from 1994-95 onwards had been filed and was on the record on the date of hearing.
A refusal was upheld. The disputed element of the mark was a slight alteration of a registered certification mark which has acquired generic meaning, so its use could mislead the public into thinking the goods were certified. A disclaimer would not cure it, because disclaimers are never communicated to the public at large and the comparison must be of the distinctive elements on which exclusivity is claimed.
A composite of two ordinary dictionary words which has no dictionary meaning of its own, and which alludes to the purpose of the services without explicitly stating it, is suggestive and not descriptive. The applicant also held the identical mark registered in two other classes. On the relative ground, a single shared word did not make the marks similar when each was compared as a whole.
Where a dictionary word is used in conjunction with another and the combination draws no instant connection with the kind of goods, the mark is at best suggestive. The objection rested on the generic half of the mark, over which no exclusivity was claimed or asserted, and the applicant already held the distinctive half registered as a word mark in the very class refused.
The conclusion in the order was not supported by any reasons at all, the examination report was mechanically followed without its contents being discussed, and only the first word of a composite mark was considered, leaving out the suffix, the byline and the device elements. The Registry's own counsel accepted that there were no reasons and asked for a remand.
Allowed. On section 9(1)(b) the examiner had ignored material going to reputation and goodwill, namely registrations for SOUNDLINK in the European Union, Canada, Colombia, Peru, Chile, Korea, Russia, Hong Kong and the USA, continuous use since 2010, and widespread sales online and through 35 retail stores. On section 11 the court held that composite marks are to be compared by overall appearance and commercial impression rather than dissected into individual features, so commonality of the word "sound" alone was not prima facie likely to cause confusion.
Allowed. A composite label mark comprising a wave or splash of milk with the words "JUST" and "MILK" was held capable of distinguishing. The use of "JUST" in relation to milk is plainly arbitrary, and in conjunction with "MILK" the mark becomes suggestive rather than descriptive. The appellant's existing registrations for the word "JUST" for milk and milk products supported the conclusion, and the objection under section 9 did not sustain.
