6 judgments of the Delhi High Court, the Supreme Court of India and 1 other court applying Trade Marks Act s.9(1), from 2023–2026, each with a headnote by BRB Legal.
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.
Appeal dismissed and the refusal of an interim injunction upheld. The Supreme Court compared BLENDERS PRIDE and IMPERIAL BLUE with LONDON PRIDE and found no visual, phonetic or structural resemblance capable of supporting infringement or passing off, resemblance being a sine qua non for both. The judgment works through the anti-dissection rule, the dominant feature test, the principle that no exclusive right attaches to common or descriptive terms, and the average consumer with imperfect recollection, and discusses the post-sale confusion doctrine as it has developed in the United Kingdom. Although the appellants held registrations for the composite marks, no evidence showed that any element, such as bottle shape, colour scheme or the word PRIDE, had acquired distinctiveness or secondary meaning. An earlier unsuccessful challenge to the use of PRIDE, where it was held that they had no independent registration for the word alone, also told against them.
Refusal set aside on two grounds. The Registrar had relied on an inability to ascertain whether a rectification petition filed by the applicant against the cited mark was pending elsewhere. The Court held that the pendency of a rectification petition between the applicant and the rival claimant need not per se concern the Registrar, whose task is to evaluate the application under section 9 or section 11(1), and that an inability to verify it is no ground at all to refuse: if particulars were wanted, the applicant could have been asked for them. On the user claim, the Registrar had overlooked the licence document under which the applicant permitted a sister entity to use the mark. The Court also recorded that nothing in the Act prohibits a fresh application where an earlier one was treated as abandoned for non-response to the examination report, the merits never having been considered.
The order referred to both sections 9 and 11 where the examination report referred only to section 11, and called for interference on that ground. In any event the application was for a device mark in relation to services, a market place for farmers and artisans, while the citations were word marks registered for goods.
Refusals of FRESHMENU as descriptive set aside as bereft of reasons. The order said only that the mark was objectionable under section 9 and was accordingly refused, and the grounds of decision obtained under Rule 36(1) added no more than that the mark was descriptive of the services. The Court held that notwithstanding Rule 36(1) it is incumbent on any authority exercising quasi-judicial power to specify its reasons; the grounds did not deal with the evidence of use that had been filed, and the proviso to section 9(1) on acquired distinctiveness was never considered at all.
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.
