The reasons for refusing registration under Section 9 of the Trademarks Act, 1999 are intended to stop marks from being registered if they are incapable of distinguishing the goods or services of one trader from those of another. While common or dictionary words may not always be inherently distinct, their eligibility for registration finally comes down to the way in which they relate to the relevant goods or services. The Trademarks Registry must therefore examine the distinctiveness in the context of those goods and give detailed reasons when refusing registration.
The Delhi High Court considered these principles in the case of Ads Spirits Pvt. Ltd. v. Registrar of Trademarks, in which the appellant contested the refusal of its application for the word mark “OFFER” in Class 33 for alcoholic beverages. The Court had to decide whether the Registrar had properly applied Section 9(1)(a) in rejecting the mark on the basis that it lacked “uniqueness”.
Background of the Case
The appellant, engaged in the business of manufacturing and marketing alcoholic beverages, applied for registration of the word mark “OFFER” in Class 33 on a proposed-to-be-used basis in respect of alcoholic beverages and alcoholic preparations for making beverages.
The Trademarks Registry issued an Examination Report raising an objection under Section 9(1)(a) of the Trademarks Act, 1999, stating that the mark in question did not have distinctiveness. In response, the appellant filed a detailed reply contending that although “OFFER” is an ordinary English word, it is arbitrary in context to alcoholic beverages and is therefore inherently capable of distinguishing its goods. The appellant also relied on judicial precedents and cited several existing registrations containing the word “OFFER” with prefixes or suffixes.
Despite these submissions, the Registrar refused to grant registration on the grounds that the term ‘OFFER’ is commonly used in commercial speech when asking for discounts on goods or services and thus is not unique. Aggrieved by the refusal, the appellant preferred an appeal before the Delhi High Court.
Issues Before the Court
The principal issues before the Court were:
- Whether the Registrar had correctly applied Section 9(1)(a) while refusing registration of the mark “OFFER”.
- Whether “uniqueness” is a statutory requirement for registration under Section 9(1)(a).
- Whether the distinctiveness of a trademark must be assessed with reference to the goods for which registration is sought.
- Whether the Registrar’s failure to consider the appellant’s submissions rendered the impugned order unsustainable.
Court’s Analysis
The Court observed that Section 9(1)(a) prohibits registration only of marks that are devoid of distinctive character, meaning signs that are unable to distinguish the goods or services of one person from those of another. It was also held that the Registrar replaced this standard with an unacceptable requirement of uniqueness.
The Court found that the Registrar had refused registration on the ground that the mark lacked “uniqueness”, even though the statute does not prescribe uniqueness as a condition for registration. By replacing the statutory requirement of distinctiveness with one of uniqueness, the Registrar had applied a legally incorrect test.
The Court stressed that distinctiveness cannot be established in a general way and must always be evaluated in relation to the goods or services for which registration is being sought.
Even though “OFFER” is a common English word, the question in issue was whether it directly described alcoholic beverages or had a clear connection with them. The Court noted that when consumers see the word on a bottle of liquor, they are more likely to take it to be a trademark or a brand identifier than a promotional message.
The Court also observed that a term might be generic or descriptive regarding one type of product but at the same time remain arbitrary and inherently distinctive in relation to another. Therefore, the Registrar ought to have examined whether the mark functioned as a source identifier in relation to the goods covered by the application instead of rejecting it merely because it is an ordinary dictionary word.
The Court found that the impugned order suffered from complete non-application of mind. The Court also criticised the FER for reproducing different objections without identifying the objection that actually applied to the mark. The Court described this as an indication that there was non-application of mind even at the examination stage. The appellant had filed detailed replies, relied upon judicial precedents and produced examples of previously registered trademarks containing the word “OFFER”. However, none of these submissions found any consideration in the impugned order.
The Court, stressing the quasi-judicial character of the Registrar’s functions, stated that the Trademarks Registry has a duty to consider the material on record and to give reasons for any decisions it reaches. It cannot accept refusals that are mechanically based or on a template and ignore the applicant’s submissions.
The Court also disagreed with the Registrar’s reasoning that the word “OFFER” necessarily denotes a discount.
It observed that an offer is merely a proposal or invitation to enter into a transaction, while a discount involves a reduction in price; it is possible to offer products for sale without attaching any discount, and in standard commercial practice the term “offer” is generally followed by phrases like “special offer”, “limited offer” or “exclusive offer”. On this basis, the Court held that the Registrar’s assumption that the mark would invariably be perceived as promotional was misplaced.
Court’s Decision
The Delhi High Court set aside the impugned order and remanded the matter to the Trademarks Registry for fresh consideration. The Registrar was directed to reconsider the application by applying the correct legal standard under Section 9(1)(a), by assessing the distinctiveness of the mark in relation to alcoholic beverages, taking into account all the replies and documents submitted by the appellant, and providing an opportunity for hearing before issuing a new reasoned decision.
The Court clarified that it had expressed no opinion on the ultimate registrability of the mark.
Conclusion
The ruling stresses that the criterion in Section 9(1)(a) is distinctiveness, not novelty or uniqueness. It also reiterates that common English words are not automatically excluded from being granted trademark protection simply because they are used in everyday language; instead, their eligibility for registration will depend on whether they are able to distinguish the applicant’s goods or services in the appropriate commercial context.
The importance of the Court’s emphasis on procedural fairness is just as great. The ruling improves the quality of trademark examination by requiring the Trademarks Registry to properly take into account the applicants’ submissions and to apply the right statutory standard; the decision strengthens the quality of trademark examination and provides greater certainty to applicants seeking protection for marks that may be ordinary words but function as source identifiers in relation to specific goods or services.
Authors: Manisha Singh and Kratika Patel