Delhi High Court Sets Aside Rejection Order of Registrar of Trade Marks for Applying Misconceived Parameter of Uniqueness Under Section 9(1)(a)
ADS Spirits Pvt. Ltd. Vs. The Registrar of Trade Marks:21.07.2026:C.A.(COMM.IPD-TM) 8/2026:2026:DHC:5783:Hon'ble Ms. Justice Jyoti Singh
Factual and Procedural Background
The appellant, an established liquor manufacturer with substantial market presence, applied for registration of the word mark OFFER under Class 33 for alcoholic beverages on a proposed to be used basis. The Registrar of Trade Marks issued an examination report raising objections under Section 9(1)(a) of the Trade Marks Act, 1999, describing the mark using standard pre-drafted language. Despite detailed responses and additional submissions citing earlier registered composite marks containing the word offer and relevant judicial precedents, the Registrar passed an order rejecting the application on the ground that the word offer in common parlance signifies a discount and lacks uniqueness. The appellant challenged this rejection before the High Court of Delhi under Section 91 of the Trade Marks Act, 1999.
Dispute before Court
The core dispute was whether the Registrar of Trade Marks applied the correct legal standard under Section 9(1)(a) of the Trade Marks Act, 1999, in refusing the registration of the mark OFFER for alcoholic beverages. The court had to determine whether uniqueness is a statutory requirement for trademark registration and whether an unreasoned order that ignores written submissions and prior precedents can be sustained.
Reasoning of Judge
The court observed that Section 9(1)(a) of the Trade Marks Act, 1999, bars registration if a mark is devoid of distinctive character, meaning it cannot distinguish the goods of one person from those of another, but does not impose any requirement of uniqueness, novelty, or inventiveness. The Registrar wrongly evaluated the mark on an unknown parameter of uniqueness rather than assessing its inherent distinctiveness relative to the specific goods. Distinctiveness must be evaluated in relation to the relevant product category; a ordinary English word may be arbitrary and distinctive when applied to goods with which it has no direct connection. Furthermore, the court held that as a quasi-judicial authority, the Registrar is legally obligated to pass a reasoned, speaking order addressing the specific responses and authorities submitted by the applicant. Passing cryptic and stereotyped rejection orders without applying mind to the record constitutes a complete failure of quasi-judicial functions.
Decision
The High Court allowed the appeal, set aside the impugned rejection order dated 30.10.2025, and remanded the trade mark application back to the Registrar of Trade Marks for fresh consideration in accordance with the parameters of Section 9(1)(a) within four months, after providing an opportunity of hearing to the appellant.
One Important legal principle held in the case
Section 9(1)(a) of the Trade Marks Act, 1999, requires a mark to possess distinctive character relative to the applied goods and does not mandate uniqueness as a test for registration, and quasi-judicial orders rejecting registration must be speaking orders that explicitly address the submissions and precedents placed on record.
[Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation ]
Introduction:
The High Court of Delhi recently delivered a significant judgment concerning the standards applied by the Trade Marks Registry when examining trademark applications for registration. The decision clarifies the distinct boundary between the statutory requirement of distinctive character under Section 9(1)(a) of the Trade Marks Act, 1999, and the non-statutory concept of uniqueness. The ruling reinforces the imperative that quasi-judicial authorities like the Registrar of Trade Marks must issue well-reasoned, speaking orders that actively consider the material and precedents submitted by applicants rather than issuing standardized rejection templates.
Factual and Procedural Background:
The appellant company, incorporated in 2010 as part of a prominent Indian alcoholic beverage group, had achieved total liquor sales exceeding 7,500 crore rupees by March 2025 across its various established brand lines. Seeking statutory rights over a new mark, the appellant filed Trade Mark Application No. 5514779 on July 3, 2022, seeking registration of the word mark OFFER in Class 33 for alcoholic beverages (except beers) and alcoholic preparations for making beverages, on a proposed to be used basis.
The Trade Marks Registry issued an Examination Report on November 18, 2022, raising absolute grounds of refusal under Section 9(1)(a) of the Trade Marks Act, 1999. The objection was communicated through a pre-formulated template stating that the mark was a common surname, personal name, geographical name, ornamental, or non-distinctive geometrical figure. The applicant filed its formal reply on December 26, 2022, explaining that the mark was arbitrary and inherently distinctive in respect of alcoholic beverages. Ahead of scheduled hearings, the applicant submitted an additional reply on June 24, 2024, listing over thirty previously registered marks in various classes incorporating the word OFFER along with relevant case laws establishing that an ordinary word can be arbitrary when applied to unrelated goods.
Without addressing these detailed submissions or the cited precedents, the Registrar issued an order on October 30, 2025, refusing registration under Section 9(1)(a). The order concluded that in general usage, the word offer refers to demanding a discount when purchasing goods or services and, being devoid of uniqueness, could not be registered. The applicant subsequently filed an appeal under Section 91 of the Trade Marks Act, 1999, before the High Court of Delhi.
Dispute Before the Court
The primary legal issue requiring adjudication was whether the Registrar of Trade Marks applied the correct legal standard under Section 9(1)(a) of the Trade Marks Act, 1999, when assessing the registrability of the mark OFFER for Class 33 goods.
The appellant contended that the Registrar applied an incorrect legal test by insisting on uniqueness, a concept foreign to trademark law, instead of assessing capability to distinguish goods. The appellant argued that while offer is an ordinary English word, it is completely arbitrary when applied to alcoholic beverages, as it carries no direct descriptive connection to liquor products. It was further argued that the Registrar failed to act as a proper quasi-judicial authority by issuing a cryptic order that totally ignored the applicant's written replies, lists of registered composite marks, and binding judicial precedents.
Conversely, the respondent maintained that the word offer is commonly used in everyday trade to denote discounts or promotional schemes. The respondent argued that granting exclusive rights over such a common word would impede ordinary commercial communication and that the refusal order was sufficiently reasoned under Section 9(1)(a).
Reasoning and Analysis of the Court
The Court examined the statutory language of Section 9(1)(a) of the Trade Marks Act, 1999, which prohibits registration of marks that are devoid of any distinctive character—defined statutorily as being incapable of distinguishing the goods or services of one person from those of another. The Court observed that the statute nowhere mentions or requires uniqueness, novelty, or inventiveness as a prerequisite for registration. By evaluating the mark on the test of uniqueness, the Registrar introduced an unauthorized standard not supported by law.
Analyzing the spectrum of distinctiveness, the Court reiterated that marks fall into arbitrary, suggestive, descriptive, and generic categories. Distinctiveness cannot be determined in isolation; it must always be evaluated relative to the specific goods or services involved. An ordinary English word may be generic or descriptive for one category of goods but entirely arbitrary and distinctive for another. To illustrate this principle, the Court referred to well-established judicial precedents where common or non-descriptive words were protected because they lacked a direct connection to the underlying products:
In Oswaal Books and Learnings Private Limited v. Registrar of Trade Marks (2026 SCC OnLine Del 2362), a Division Bench held that the phrase ONE FOR ALL was registrable for educational books in Class 16 because the mark did not describe or directly connect to tangible paper products.
In Teleecare Network India Pvt. Ltd. v. Asus Technology Pvt. Ltd. (2019 SCC OnLine Del 8739), the court observed that while ZEN is a generic term in the context of Buddhism, it is arbitrary and fully protectable when used for mobile phones.In Mohd. Rafiq v. Modi Sugar Mills Ltd. (1971 SCC OnLine Del 190), the word SUN was held capable of acquiring distinctiveness for lanterns because any connection between the sun and lanterns was remote rather than direct or descriptive.In Disruptive Health Solutions Private Limited v. Registrar of Trade Marks (2022 SCC OnLine Del 2002), the court affirmed that arbitrary or suggestive marks possess in
herent distinctiveness and do not require proof of secondary meaning to achieve registration.
The Court also observed that the Registrar conflated the terms offer and discount. An offer is an invitation to transact, whereas a discount is a price reduction; the word offer alone is not a standard standalone term for price reductions without qualifying words like special or limited.
Additionally, the Court severely criticized the administrative manner in which the Trade Marks Registry processed the application. The initial examination report contained a mechanical checklist of contradictory objections, showing lack of application of mind at the outset. Furthermore, the final rejection order failed to discuss the applicant's responses, the thirty-one registered composite marks cited, or the binding decisions presented. Citing I Am the Ocean, LLC v. Registrar of Trade Marks (2023 SCC OnLine Bom 3341) and Psychotropic India Limited v. Registrar of Trade Marks (2026 SCC OnLine Del 446), the Court reiterated that passing unreasoned and cryptic orders without considering material on record represents an abdication of quasi-judicial duties.
Final Decision of the Court
The Court set aside and quashed the impugned order dated October 30, 2025. The trade mark application was remanded back to the Registrar of Trade Marks for fresh consideration strictly under the statutory parameters of Section 9(1)(a) of the Trade Marks Act, 1999. The Registrar was directed to issue a reasoned decision within four months after granting a hearing to the appellant and reviewing all written submissions and cited materials on record.
Point of Law Settled
This judgment reaffirms that uniqueness is not a statutory condition for trademark registration in India. The test under Section 9(1)(a) of the Trade Marks Act, 1999, is limited to distinctiveness specifically whether a mark can distinguish the applicant's goods from those of others when viewed in direct relation to the specific goods involved. The decision also reaffirms that the Registrar of Trade Marks, operating as a quasi-judicial authority, cannot issue mechanical, unreasoned, or standardized rejection orders that ignore written replies and precedents submitted by applicants.
Title of the Case: ADS Spirits Pvt. Ltd. v. The Registrar of Trade Marks
Date of Judgment: 21.07.2026
Case Number: C.A.(COMM.IPD-TM) 8/2026
Neutral Citation: 2026:DHC:5783
Name of Court: High Court of Delhi at New Delhi
Name of Hon'ble Judge: Hon'ble Ms. Justice Jyoti Singh
Written By:Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation .
Headnote of the Judgment:
ADS Spirits Pvt. Ltd. v. The Registrar of Trade Marks, High Court of Delhi at New Delhi, C.A.(COMM.IPD-TM) 8/2026 (Neutral Citation: 2026:DHC:5783). The appellant challenged the rejection of its trademark application for the mark OFFER in Class 33 for alcoholic beverages under Section 9(1)(a) of the Trade Marks Act, 1999. The High Court held that the Registrar applied an incorrect legal test by evaluating the mark on the parameter of uniqueness rather than statutory distinctiveness relative to the goods. The Court further ruled that the Registrar failed to perform quasi-judicial duties by issuing a non-speaking order that ignored written replies and cited precedents. The appeal was allowed, the rejection order was quashed, and the matter was remanded for fresh adjudication within four months.
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