Sudeep Gupta Vs. Registrar of Trademarks

 Bar of Section 9(1)(b) to Composite Trademark

Introductory Note:This case involves a person named Sudeep Gupta who challenged a decision by the government office that handles trademarks in India. The office had rejected his trademark application for a mark called "STORE MY GOODS" along with a logo, which he used for services related to storing and handling goods, like in warehouses or logistics. 

Sudeep Gupta claimed he had been using this mark honestly since July 19, 2020, and even had a registration certificate dated June 15, 2024, that supported his use from that date. He provided proof like affidavits, invoices, and awards he received for his business since 2020. The government office, known as the Registrar of Trademarks, rejected the Trademark on May 22, 2025, saying the mark was too descriptive and shouldn't have been registered in the first place because it directly tells what the service is about—storing goods. Feeling this was unfair, Sudeep Gupta appealed to the High Court of Delhi, asking the court to stop the cancellation while the appeal is decided. The court heard the matter quickly and agreed to pause the cancellation, giving Sudeep Gupta temporary relief. This shows how courts can step in to protect business owners' rights over their brands when they think the government made a mistake.

Procedural Detail:The process started when Sudeep Gupta filed his appeal in the High Court of Delhi under a law called Section 91 of the Trade Marks Act, 1999, combined with Rule 156 of the Trade Marks Rules, 2017. This allows someone unhappy with the Registrar's decision to appeal to the court. Along with the main appeal, he also filed three side applications: one for exemption from certain filing rules (numbered I.A. 28937/2025), another to add extra documents to his case (I.A. 28936/2025), and a third to ask for an immediate stop on the Registrar's cancellation order during the appeal (I.A. 28938/2025). .

For the main appeal, the court issued notice to the Registrar and set a timeline: the Registrar had four weeks to file a reply, and Sudeep Gupta could respond to that reply in two weeks if needed. The full hearing of the appeal was scheduled for March 9, 2026. Meanwhile, the court dealt with the urgent request to stay the rejection order right away.

Core Dispute:At the heart of this case was whether the Registrar was right to reject Sudeep Gupta's trademark under a rule in the law that prevents registration of marks that are purely descriptive. Specifically, the Registrar used Section 9(1)(b) of the Trade Marks Act, 1999, which says trademarks can't be registered if they are made up only of words or signs that directly describe the type, quality, purpose, value, origin, or other features of the goods or services. 

The Registrar thought "STORE MY GOODS" was just a straightforward way to say what the service does—storing goods—so it shouldn't get exclusive rights. Sudeep Gupta argued that the Registrar ignored his evidence of honest use since 2020, including his reply to a notice under Section 57(4) of the Act, which is about correcting  registrations. He said he adopted the mark in good faith, backed it with user affidavits and invoices, and even won awards for his business. More importantly, he claimed his mark wasn't just plain words; it was a composite mark, meaning it combined words with a logo or design, so the strict rule against descriptive marks shouldn't apply. He pointed to a previous court decision to support this. The Registrar, on the other hand, stood by the cancellation, but the court had to decide if there was enough reason to pause it temporarily, looking at whether Sudeep Gupta had a strong initial case, if the balance of harm favored him, and if not stopping the order would cause him permanent damage.

Detailed Reasoning : Appellant explained that the Registrar didn't properly consider the evidence of use since 2020 or the honest adoption of the mark. But the main argument was about Section 9(1)(b) of the Trade Marks Act, 1999. This section blocks registration for marks that are exclusively made of signs or words that could be used in business to point out the kind, quality, quantity, purpose, values, where they come from geographically, when they were made, or other traits of the goods or services. The lawyers said the Registrar wrongly applied this to cancel the mark. 

To back this up, they referred to a earlier ruling by the same court in the case of Abu Dhabi Global Market v. The Registrar of Trademarks, Delhi, with the full citation being Neutral Citation: 2023:DHC:3476. In that case, the court had explained that Section 9(1)(b) doesn't cover composite marks—those that mix words with designs or logos—even if part of them mentions a place or description. The court in that judgment said composite marks are automatically out of this section's reach. They quoted paragraph 30, which says composite marks are excluded from Section 9(1)(b), even if they include parts that indicate geographical origin. Paragraph 31 notes that the mark in that case didn't consist only of geographical indications; it was a mix of words "ABU DHABI GLOBAL MARKET" and a logo, so the section couldn't apply. 

The court rejected the idea that the "dominant part" of the mark matters here, as argued in paragraph 32 and 33, because the law uses the word "exclusively," meaning the whole mark has to be purely descriptive, not just a main part. They explained this "exclusivity" principle doesn't mix with looking at dominant parts, which is more for cases about one mark copying another, not for registration refusals. In paragraph 33, it was clear that for registration under Section 9(1)(b), if the mark isn't entirely exclusive in that way, it can be registered. Applying this to Sudeep Gupta's case, the court saw that his mark "STORE MY GOODS" with its logo was also a composite mark, so Section 9(1)(b) shouldn't have been used to cancel it. The court agreed this made a strong initial case for Sudeep Gupta. They also considered the balance of convenience—who would be hurt more if the order wasn't paused—and found it favored him, as he had been using the mark for years. Finally, they said not granting the stay would cause him irreparable harm.

Decision:The court decided to grant the stay on the Registrar's  order dated May 22, 2025, meaning the order wouldn't take effect while the appeal is ongoing. This keeps Sudeep Gupta's trademark alive for now. The applications for exemption and additional documents were allowed and closed. The main appeal was set for a later hearing, with timelines for replies. Overall, the court sided with Sudeep Gupta on the temporary relief, based on the reasoning from the earlier case.

Concluding Note:This ruling highlights how Indian trademark law protects creative or combined marks from being dismissed as too descriptive, especially when businesses have invested time and effort in using them. It reminds us that laws like Section 9(1)(b) are strict but have limits, and courts can correct government decisions to ensure fairness. For anyone dealing with trademarks, it shows the value of appealing with strong evidence and referencing past judgments. In the end, it balances protecting public use of common words with rewarding honest business branding.

Case Title: Sudeep Gupta vs. Registrar of Trademarks Trademarks Registry New Delhi, Order date: November 20, 2025, 

Case Number: C.A.(COMM.IPD-TM) 78/2025 Name of Court: High Court of Delhi 

Name of Hon'ble Judge: 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

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Delhi High Court Grants Interim Stay on Cancellation of “STORE MY GOODS” Trademark

Sudeep Gupta v. Registrar of Trademarks

Order dated 20 November 2025

Case No. C.A.(COMM.IPD-TM) 78/2025

Hon’ble Mr. Justice Tejas Karia, High Court of Delhi

In a significant relief to the proprietor of the trademark “STORE MY GOODS” (device mark, Registration No. 4684988 in Class 39), the Delhi High Court has stayed the operation of the Registrar of Trademarks’ order dated 22 May 2025 by which the registration was rejected on the ground of being descriptive under Section 9(1)(b) of the Trade Marks Act, 1999.

The Court while granting interim protection, held that a strong prima facie case exists in favour of the appellant because the mark in question is a composite mark consisting of the words “STORE MY GOODS” along with a distinctive house-shaped device/label. Relying upon the Division Bench judgment of the Delhi High Court in Abu Dhabi Global Market v. Registrar of Trademarks (2023:DHC:3476), the Court reiterated that Section 9(1)(b), which bars registration of marks that “consist exclusively” of descriptive indications, has no application to composite marks. The Court emphasised that the principle of “dominant part” is alien to Section 9(1)(b) because the provision operates only when the mark is exclusively descriptive, and not when it contains additional distinctive elements.

The appellant had placed on record evidence of continuous use since 19 July 2020, user affidavits, invoices and several awards and recognitions received by the brand. Finding that the balance of convenience lies in favour of the appellant and that irreparable injury would be caused if the cancellation order is not stayed, the Court directed that the impugned cancellation order shall remain stayed during the pendency of the appeal.

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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