50 judgments of the Delhi High Court, the Calcutta High Court and 4 other courts applying Trade Marks Act s.9, from 2023–2026, each with a headnote by BRB Legal.
Rectification allowed and GOLDI cancelled. The Court found the rival marks phonetically, visually and structurally nearly identical with no conceptual distinction, in the same class and for similar goods, with common trade circles, distribution networks, retail outlets and consumers, so an average consumer of imperfect recollection would be confused or would at least assume an association. Section 47(1)(a) independently supported removal, there being no evidence of how the respondent adopted the mark and none of use three months before the date of application, and sections 9(2)(a) and 11(1)(a) and (b) would in any event have barred registration.
Interim injunction refused. The plaintiff's case rested on a blank geometric pentagonal structure said to be a dominant element of its registered marks, but the Court found prima facie that it had not established this: the feature is not used separately and independently so as to create any association in the public mind, and no goodwill in the bare shape was proved. The extent of sales attributable to the shape as opposed to the BRITANNIA wordmark was left as a question for trial. The defendant had adopted its mark in October 2022 and the suit was filed only in May 2024, with no evidence that the plaintiff's sales had suffered.
Ad interim injunction set aside. The Division Bench doubted whether any prima facie case for interlocutory relief had been made out, noting that the suit was essentially one for disparagement with belated pleadings on trade mark infringement and passing off added to it. It held that an expired proprietary right in a design cannot be enforced indirectly, and that a trade mark which requires interpretation cannot be enforced. Injunctions obtained against other private players were held inapplicable on the facts, their products being similar in colour, shape and design to the plaintiff's.
Rectification allowed and KREOFLAT removed from the Register in Class 5, the mark having been registered despite the prior existence of PANKREOFLAT in the same class and without properly considering the earlier mark. The judgment restates the rule that the tests of confusing similarity are modified for medicinal products: confusion between pharmaceutical preparations can produce physically harmful results, so greater protection is required and a lesser quantum of proof of confusing similarity is called for than in an ordinary case.
Appeal allowed and an order dismissing an opposition set aside. Although the goods differed and an earlier Supreme Court decision on the same mark had gone the other way, the Court identified a distinguishing feature: the applicant had adopted the word without any prefix or suffix and had reproduced the appellant's style of writing it, all in small letters. Given the appellant's long-established reputation in the mark, the phonetic identity combined with the imitated styling made the mark deceptively similar, and a customer familiar with the appellant's mark would be misled.
Interim injunction refused and an ex parte order vacated in a dispute over pharmaceutical marks built around two letters of the alphabet. The Court held that the plaintiff cannot claim protection against use of letters of the English language on the strength of a copyright registration in a stylised rendering of them, the letters in the impugned mark being written in a completely different manner. The overall impression of the competing trade dresses differed in font and colour scheme, so neither the marks nor the trade dress were deceptively similar and the plaintiff had no exclusive right in the letters themselves.
Appeals partly allowed and an interim injunction in a passing off counterclaim set aside. The Division Bench held that the Commercial Court had done no more than catalogue the documents and recite sales figures without analysing whether those figures translated into goodwill or reputation in the mark, and without determining whether such goodwill had been acquired before the appellant's adoption. Following Pernod Ricard, that finding is the foundational requirement for passing off, and in its absence the injunction could not stand.
A carefully split outcome on a composite mark. The Court held that the word element was suggestive rather than descriptive but had not acquired distinctiveness, so the plaintiff had no exclusivity in it and the defendant remains free to use the word for its news programme. The device mark was another matter: the defendant's label was deceptively similar, the globe behind the word remaining very similar even in the defendant's revised version, and its use for the same service, class of consumers and trade channels amounted to infringement and passing off.
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.
Petition dismissed. The refusal to include TikTok in the list of well-known marks under Rule 124 of the Trade Marks Rules 2017 was upheld. Section 11(6) permits the Registrar to take into account any fact he considers relevant, and the court held that the ban imposed on the application by the Government of India under the Information Technology Act, on grounds going to the sovereignty and integrity of India, defence and public order, is such a fact. That the ban on certain other applications had since been lifted did not assist the petitioner while this one remained in force. The court was careful to record that the mark remains registered in India and continues to enjoy the statutory protection available under the Act; what was refused was the added protection that inclusion in the list confers.
A refusal on deceptive similarity was quashed as cryptic and non-speaking. The applicant's reply had argued that the two marks move in different trade channels, one a finishing product in the textile industry and the other used in building construction, and had cited the four cardinal factors for deceptive similarity, none of which the order addressed. The mark should have been published and any opposition left to be filed.
Operation of the judgment dismissing the suit stayed pending appeal, and the interim injunction that had run in the trial court since January 2012 continued. The Division Bench held that the trial court's finding that the defendants were the prior user was perverse, the plaintiff's mark having been registered abroad in 1954 and in India on April 25, 1979, against the defendants' adoption in 1992, with no justifiable explanation for that adoption. Questions on whether the person who affirmed the plaint had to enter the witness box, and whether the suit was maintainable for want of filing by an authorised person, were left to the hearing of the appeal.
A refusal was quashed as a non-speaking order passed in breach of natural justice. The Registrar asserted for the first time in the order that the cited marks were in use, without disclosing how he knew and without any opportunity to rebut it, and raised the want of acquired distinctiveness under the proviso to section 9 for the first time there too. The cited registrations were territorially restricted and did not cover the state in which the applicant trades.
The use and registration of a trade mark confer rights only in respect of identical or similar goods or services, unless the mark is declared to be a well known trade mark. All three citations belonged to one fertiliser company and were applied to chemical products, while the applicant's mark was for filters used in purifying air and drinking water.
Documents filed for the first time in the appeal, never produced before the Registry, cannot be considered by the Court. The appellant was left to file a fresh application and put the documents on record there, with the Registry to decide de novo.
Refusal of a device mark set aside and the matter remanded. The show cause hearing notice bore no proper dispatch date and was never served, the appellant learning of it only on the day of the hearing during a routine follow-up, and its letter raising that grievance was not considered before the refusal issued. The Court held that principles of natural justice demand a right of hearing unless excluded by law, and that no person is to be condemned unheard. The respondent fairly agreed that a hearing should be given.
Three applications were refused under sections 9 and 11. The grounds of decision, when sought, merely extracted the statutory wording of sections 9(1)(b) and 11(1)(b). There was no discussion of the documents filed on user rights or on the growth of the events run under the marks.
Appeal dismissed and the interim injunction restraining use of SVT HOTEL SPECIAL for asafoetida confirmed. A registered mark is prima facie valid under section 31, and to displace that at the interlocutory stage the defendant must show that the registration is ex facie impermissible or was granted in gross violation of the Act, a high threshold not met here. Whether HOTEL SPECIAL merely denotes the intended purpose of bulk sale to hoteliers, and so attracts section 30, is a matter of evidence and not a ground to refuse an injunction against a mark registered after ten years of use. The defendant's use of the registered symbol on an unregistered mark supported the restraint against passing off. The trial court's reasoning that a claim of prior use amounted to an admission of distinctiveness was wrong, but did not warrant interference given the limited scope of Order XLIII Rule 1.
A multi-class refusal under sections 9(2)(a), 11(1)(a) and 11(1)(b) was set aside after the applicant converted the word mark into a composite device during the appeal and offered to disclaim the word PATANJALI. The added device and surrounding matter distinguished the mark from the citations, and the marks cited on the section 9(2)(b) objection were owned by the applicant itself, so no question of public deception arose.
Refusal under section 11 set aside after the position on the cited marks changed during the appeal. Proprietors of three cited marks consented to registration subject to restrictions which the appellant accepted, undertaking to amend its description of goods. One cited mark was restricted in use to two states and covered batteries and inverters, and as to another the appellant was the prior user with an entirely different description of goods and a different class of purchasers. Advertisement before acceptance directed under the proviso to section 20(1).
The statement of grounds recorded that the applicant had produced no documentary evidence in support of its user claim. A detailed user affidavit had in fact been filed with a Form TM-M for amendment of the application, and those documents ought to have been taken into consideration. The findings were contrary to the record and vitiated the refusal.
Appeal allowed and the interim injunction set aside. The Commercial Court had held that the word Rose was common and could not be monopolised, yet found SWEET ROSE LOLLIPOP deceptively similar to MADHUR ROSE POP LOLLIPOPS, giving no reason for that conclusion or for its parallel finding on packaging. The Division Bench held that the marks must be seen as a whole: the common elements ROSE and LOLLIPOP are descriptive of the product and cannot be monopolised, the appellant's mark led with its house name UNICON, and section 30(2)(a) protects use indicating the kind or quality of goods. On packaging, the colour schemes and placement differed, and a transparent top panel for displaying the product is common to the trade.
A multi-class application refused under sections 9 and 11 must be dealt with class by class, and the Court disposed of the appeal that way. Taking the citations class by class against their current Registry status, it allowed advertisement in every class where the cited marks had lapsed for non-renewal, been abandoned or refused, or where the applicant agreed to restrict its specification so that the goods no longer overlapped, and refused advertisement only in Class 22, where a live conflicting registration remained. The global registrations of the mark and the status of each citation as on the date of hearing were both treated as material. A restricted specification is the route to advertisement where a citation is live but the goods can be separated.
Refusal under sections 9 and 11 set aside on both citations. As to the first cited mark, its proprietor had consented to registration after the impugned order; the Court held that the consent of the proprietor of a cited mark is not by itself sufficient to preclude an objection by the Registrar, but taken together with the difference in goods, carbon black materials against chemicals used in purification through displacement chromatography, the objection no longer stood. As to the second, a composite label mark of at least three elements, section 17(1) makes clear that registration of a composite mark protects the mark as a whole, and section 17(2), opening with a non obstante clause, that protection does not extend to the individual elements unless the proprietor separately applies for and obtains registration of them. It was not the Registrar's case that the proprietor held any such separate registration for the element relied on, so that objection failed too.
A device mark of three elements was refused as a common surname and geographical name, and over a cited mark in Kannada. Distinctiveness must be judged on the mark as a whole, so the absolute ground failed. The proprietor of the cited mark had sued the applicant, a contempt order in that suit had expressly permitted this very use with the place name in a smaller font, and the suit was later dismissed as withdrawn, so the relative ground failed too.
The Registry objected to a three-word mark by combining one word taken from each of three different cited marks, a fusion unknown to trade mark law. The order itself said only that the mark was objectionable under sections 9 and 11, which is completely devoid of reasons, and the applicant had claimed and evidenced use from 2006.
Refusal under sections 9 and 11 set aside. Only two of the cited marks were registered as on the date of the search report, both had lapsed for want of renewal, and in any event their goods, telecommunication and sound reproduction equipment, were not similar to the solid state power sources claimed. Section 11(1) is to be worked in two stages: first whether identical or similar marks are used on identical or similar goods, and only if that is crossed, whether confusion on the part of the public is likely, including by association.
The refusal rested entirely on two marks thrown up by the search report. Both proprietors were arrayed as respondents and both stated on instructions that they had no objection. With no section 9 objection raised, the refusal was set aside and the mark sent to advertisement.
Two findings, both untenable. The marks were not phonetically and visually identical, each citation carrying only one of the two words in the applicant's device mark. And no reasons preceded the finding of dishonest adoption except that the applicant's mark came later, when a mere perusal of the applicant's corporate name shows the reason for its adoption.
Refusal of a device mark for hand saws set aside and the application directed to be accepted for advertisement. The order referred to both sections 9 and 11 although the examination report had raised only section 11, was completely unreasoned, and the grounds of decision followed about eighteen months later. On the merits, the cited marks were used for sewing and garment industry machines and for soldering and casting machines, which are neither identical nor similar to hand saws, and the appellant had produced invoices evidencing use by its predecessor in interest from October 2008 together with the deed of assignment. The Court held that the finding of mala fide adoption had no basis, and that withholding acceptance so as to avoid opposition or a passing off action is not a relevant consideration on an application for registration.
A refusal bereft of reasons, with grounds of decision issued about a year later recording conclusions that were not preceded by any reasoning. Evidence of use ran from 2010 with invoices, the applicant's contention that the words bore no relation to the goods was never dealt with, and one cited mark had since been refused registration.
A one-line order refused the mark as objectionable under sections 9 and 11, where the examination report had raised only a relative ground under section 11. Two of the three cited marks were abandoned. For the third, counsel offered to delete from the specification the one description of goods the two marks had in common, and the application proceeded for the rest.
A one-sentence refusal, that the mark was objectionable under sections 9 and 11, was set aside. The examination report had raised no section 9 objection at all. The applicant held more than a hundred registrations sharing the same prefix, including the prefix registered as a word mark on its own, and the proprietor of the cited marks had been permanently injuncted by a civil court from using that prefix in any manner.
As is typical with orders of the Registrar, the order was cryptic and gave no reasons, and the grounds of decision did not engage with the applicant's submissions. Even so, the marks being near identical and the goods similar, no purpose would be served by interfering on that ground alone, so the merits were examined and the appeal dismissed.
The grounds of decision concluded that the application was on a proposed-to-be-used basis when it claimed use from a date before filing and evidence of that use was on record. A conclusion that a mark is generic or descriptive cannot be drawn without reference to the goods it is applied to, and each cited mark carried one of the two words, never both.
A refusal consisting of a single sentence, that the mark was objectionable under sections 9 and 11, was held completely bereft of reasons, and the grounds of decision supplied later under Rule 36(1) added only further conclusions. The mark derived from the applicant's corporate name, was not applied to the goods its words name, and had been registered abroad in identical form. Lack of reasons alone was enough to set the order aside.
During the appeal the appellant obtained registration of the corresponding word mark in the same class, without any accompanying disclaimer. That being so, the Registrar could not object to the device mark in that class, and the appeal succeeded on that ground alone, the Court expressly declining to go into whether the mark was otherwise registrable under section 9.
No hearing was given before the application was refused. The Registry disputed that but was content for directions to issue. The applicant was prima facie already using the mark commercially and held a registration for a related device, so refusal without a hearing had substantially affected his rights, and a fresh hearing was directed with the merits untouched.
A mark is descriptive only if the goods are actually marketed in a way that bears out the description: unless the products were sold as preferred or recommended by doctors, the mark was suggestive and not descriptive. The only commonality with the cited marks was a prefix that the Registry had already registered to several others in the same class.
Five identical refusals fell together. A status table showed the citations abandoned or facing removal for non-renewal, and the applicant's mark was a coined phrase presented as a device with distinctive colouring, font and a stylised symbol, while the citations carried one or other of the two words as prefix or suffix. The applicant's own registrations of the identical mark and of its prominent feature in other classes also defeated the objection that the mark was non-distinctive.
A user affidavit and the documents enclosed with it were on the file and were not taken into consideration at all, and the orders contained no discussion whatever of the applicant's reliance on the proviso to section 9. That alone made them unsustainable.
A one-line refusal under sections 9 and 11. The identical mark was already registered to the applicant in three other classes and in use since 1988, two of the three citations belonged to a sister concern in the same group of companies which had no objection, and the third had been abandoned after the applicant opposed it.
A refusal over two cited marks was remanded after it emerged that the agent for those marks had written to the Registry conveying instructions to withdraw them, yet they were registered anyway with no explanation forthcoming, and their specification had since been narrowed. The order recorded objections under both sections 9 and 11 while the statement of grounds gave only the relative ground.
A device mark refused on both absolute and relative grounds was allowed. A nearly identical mark was already registered in two of the classes applied for; use since 2008 was proved by an affidavit of use together with felicitations and coverage in travel and lifestyle press, so the proviso to section 9(1) applied; and a word descriptive of the services in one class has no direct association with the goods in the others. Every citation but one had lapsed or been refused, and the single class in which that one sat was given up.
Refusal under section 11 quashed and the application allowed outright. Section 11(1) requires the cumulative satisfaction of three criteria: that the marks are identical or similar; that the goods or services are identical or similar; and that registration would result in a likelihood of confusion, including association, on the part of the public. Likelihood of confusion is not to be easily presumed, and the nature of the goods and the class of their purchasers must be borne in mind. Here the cited registration was for paper caps used in toy pistols, not for toy pistols at all, while the applicant sought registration for water and colour spray guns, which are guns in form and not in substance and emit not fire but its antithesis. Similarity for the purposes of section 11(1) has to be of the goods or services, not of the occasion of their use, so the fact that both might be used at the same festivals was irrelevant. The Court added that registration of an eligible mark is a valuable commercial right carrying inalienable entitlements, chief among them protection against infringement, so an application can be rejected only if it falls strictly within the periphery of sections 9 and 11. Allegations of mala fide in the impugned order ought not to have been made without adequate evidence.
A mark that this Court had already held, in the applicant's earlier litigation, to have acquired a secondary meaning could not then be refused as devoid of distinctive character. The applicant also held an identical mark registered in the very class applied for, and claimed no exclusive rights over the descriptive part of the phrase.
A refusal under sections 9 and 11 fell on both. The examination report had raised no section 9 objection at all, and a two-word compound run together without a space is a coined term with no direct reference to the goods, suggestive at the highest. Of the four citations one had already been removed from the register before the refusal, two were unrenewed, and the last shared only a single common word, which is not sufficient to establish a likelihood of confusion.
Slogans and taglines are treated like word marks when an application is processed. Three common dictionary words making no reference, direct or indirect, to the services, used together as a tagline, form a creative and distinct expression; a tagline conveys a simple message but can also be abstract to the extent that it indicates commercial origin.
A tweaked place name was registrable. Under the Registry's own Manual the name of a sea, a lake or a mountain is accepted prima facie for goods not associated with that geographical feature, and the mark had no reputation for the class 18 goods applied for. The one device mark cited against it was prima facie dissimilar, and had already been got past in other classes.
Allowed. The mark was held suggestive rather than descriptive of the goods. Several of the cited marks, including FRESH COVER, FRESH MAKE UP, FRESHEE and FRESH MIX, had already lapsed by the date of the impugned order, and the remainder were prima facie dissimilar when the competing marks were compared as wholes following Cadila Healthcare. The appellant's registrations for the identical device in the USA, Canada, Australia, Indonesia, Mexico and Hong Kong, as well as in India in other classes, were relevant and had been left out of account.
