Ashim Kumar Ghosh vs. The Registrar of Trade Marks dealt with the refusal of registration for the trademark "SoEasy" in respect of instructional and teaching materials (Class 16) after it had initially been accepted and advertised. The case examines the powers of the Registrar under Section 19 of the Trade Marks Act, 1999 to withdraw acceptance of a trademark application and considers whether "SoEasy" is distinctive or only descriptive and generic, impacting its eligibility for registration.
Brief Introductory Head Note Summary of Case & Factual Background
This case arises out of an appeal under Section 91 of the Trade Marks Act, challenging the refusal of registration of the "SoEasy" trademark. Ashim Kumar Ghosh filed a trademark application for "SoEasy" (No. 5799569), meant for instructional and teaching materials. His application was first accepted and published, but later the Registrar issued notice for withdrawal of acceptance, claiming the mark lacked distinctiveness. Following a hearing, the application was formally refused under Sections 9(1)(a) and 9(1)(b), as the mark was argued to be generic, descriptive, and laudatory.
Procedural Detail
The application was filed on February 2, 2023, on a proposed-to-be-used basis. The Registrar examined it and initially accepted it, subject to use as a whole, publishing it in the Trade Mark Journal in April 2024. No opposition was filed after publication. However, in December 2024, a notice under Section 19 sought to withdraw acceptance, citing that the mark was not distinctive. The appellant responded, but after a hearing in February 2025, the Registrar issued a fresh refusal in May 2025. The applicant then appealed to the High Court of Delhi.
Core Dispute
The central dispute is whether the Registrar could lawfully withdraw the acceptance of "SoEasy" and refuse its registration as a trademark. Secondly, the dispute was whether "SoEasy" is inherently distinctive or merely descriptive or generic in connection to the goods/services, and thus ineligible for protection under Section 9(1) of the Act.
Detailed Reasoning and Discussion by Court, Including Case Law
The Court outlined the relevant statutory scheme. Section 19 allows the Registrar to withdraw acceptance of an application before registration, even if accepted and advertised without opposition. This power, the Court noted, is to preserve the purity of the Register but is not unfettered.
On the argument about procedural fairness, the Court found that the Registrar was indeed within rights to revisit the acceptance, and there was no vested right to registration in the absence of an opposition.
The significant legal debate centered around Section 9(1), which bars registration of marks lacking distinctiveness (Clause (a)), or which consist exclusively of marks that designate the kind, quality, etc., of goods/services (Clause (b)). The Registry's position was that "SoEasy" is laudatory, generic, and merely descriptive.
To interpret distinctiveness, the High Court relied extensively on established legal principles from decisions such as Teleecare Network India Pvt Ltd v. Asus Technology Pvt Ltd (2019 SCC OnLine Del 8739), which, following the US landmark Abercrombie classification, defined categories: generic, descriptive, suggestive, arbitrary, and fanciful. Suggestive, arbitrary, and fanciful marks are considered inherently distinctive.
The Court explained that for a mark to be suggestive, it must require some imagination or thought for a consumer to connect the mark with the goods. A descriptive mark, in contrast, immediately conveys a quality or characteristic of the goods.
Applying this to "SoEasy," especially in the context of learning/educational materials, the Court observed the mark does not directly describe the goods’ kind or quality. Instead, it subtly suggests ease of use, thus needing consumer imagination. Therefore, the mark was classified as "suggestive" rather than descriptive or generic, making it inherently distinctive and entitled to registration.
Therefore, although the Registrar followed proper process and procedure under the Act, on the facts of the case, his reasoning about lack of distinctiveness was incorrect. The Court set aside the refusal, holding the mark to be registrable.
Decision
The High Court allowed the appeal. It set aside the impugned order of the Registrar, directed the Registry to proceed with the registration of "SoEasy," and disposed of pending applications.
Concluding Note
This judgment clarifies that the Registrar can revisit acceptance of trademark applications before registration, but must do so with sound reasoning grounded in statutory and judicial principles. Importantly, it underscores that coined or suggestive marks—even if composed of ordinary words—can be inherently distinctive if they compel consumers to make a mental leap connecting the mark to the goods. The decision strengthens the doctrine protecting inventive and suggestive marks, while restraining the arbitrary rejection of applications based solely on dictionary meanings.
Case Title: Ashim Kumar Ghosh Vs. The Registrar of Trade Marks
Order date: 24 November 2025
Case Number: C.A.(COMM.IPD-TM) 48/2025
Neutral Citation: 2025:DHC:Citation No
Court Name: High Court of Delhi
Name of Hon'ble Judge: Hon'ble Mr. Justice Tejas Karia
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
Suitable Titles for the Legal Analytical Article
"The Distinction between Suggestive and Descriptive Marks: Analytical Review of Ashim Kumar Ghosh v. Registrar of Trade Marks"
"Registrar’s Discretion and the Threshold for Distinctiveness: Lessons from the SoEasy Mark Litigation"
"Unpacking the Boundaries of Trademark Distinctiveness in Indian Law: A Case Analysis"
"Section 19 of the Trade Marks Act: Due Process and Judicial Oversight Revisited"
"Suggestive v. Descriptive Marks in Education: Implications from the SoEasy Trademark Decision"
In Ashim Kumar Ghosh v. The Registrar of Trade Marks, C.A.(COMM.IPD-TM) 48/2025, decided on 24 November 2025 by the High Court of Delhi, Hon’ble Mr. Justice Tejas Karia set aside the Registrar’s refusal of the trademark application for “SoEasy” in Class 16 (instructional and teaching material, printed matter and bookbinding material) and directed that the application proceed to registration. The case arose from an appeal under Section 91 of the Trade Marks Act, 1999, against an order dated 20 May 2025, by which the Registrar had refused registration after initially accepting and advertising the mark and then issuing a notice withdrawing acceptance under Section 19 on the ground that the mark was devoid of distinctiveness.
The appellant had filed the mark “SoEasy” on a proposed-to-be-used basis; the application was examined, objections under Section 9 were initially raised, replied to, and the mark was accepted and advertised with no opposition filed within the statutory period. Subsequently, the Registrar issued a Section 19 notice alleging erroneous acceptance and lack of distinctiveness, conducted a hearing, issued a fresh examination report, and finally refused registration on the basis that “SoEasy” was generic, laudatory, and covered by Sections 9(1)(a) and 9(1)(b). The appellant argued that Section 19 conferred only a limited discretionary power, that earlier acceptance on Section 9 had attained finality, that no vested right could be defeated arbitrarily after publication, and that “SoEasy” was at least a coined, inherently distinctive, or suggestive mark, not a generic or descriptive term for the goods.
The Court held that, procedurally, the Registrar was within his powers under Section 19 to withdraw acceptance any time before registration, even in the absence of opposition, and that there was no vested right in the appellant merely because the mark had been advertised without challenge. However, examining the merits under Section 9(1), and relying on the established classification of marks into generic, descriptive, suggestive, arbitrary, and fanciful (as discussed in Teleecare Network India Pvt. Ltd. v. Asus Technology Pvt. Ltd., 2019 SCC OnLine Del 8739), the Court found that “SoEasy” was a suggestive mark in the context of a learning/teaching platform and not descriptive of the goods’ qualities. The Court reasoned that consumers would need a degree of imagination to connect “SoEasy” with instructional and teaching materials for learning Hindi, and that the expression did not directly name or describe the goods but only suggested ease, thereby making the mark inherently distinctive and entitled to protection.
On this basis, the High Court concluded that while the Registrar had followed the correct procedure in invoking Section 19, the substantive assessment that the mark was non-distinctive was flawed, and the refusal under Sections 9(1)(a) and 9(1)(b) could not be sustained. The impugned order was set aside and the Registrar was directed to proceed with the application for “SoEasy” in accordance with the Trade Marks Act, 1999 and the Trade Marks Rules, 2017.
Disclaimer:This is for general information only and should not be construed as legal advice as it may contain human errors in perception and presentation: Advocate Ajay Amitabh Suman, IP Adjutor (Patent & Trademark Attorney), High Court of Delhi
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