This case study delves into the trademark registration dispute between Goodview Fashion Private Limited (Appellant) and the Registrar of Trade Marks (Respondent). The core issue revolves around the distinctiveness and eligibility of a particular trademark design known as the ‘Pi logo’, and its registration under the Trade Marks Act, 1999.
Goodview Fashion Private Limited, a well-established fashion label operating designer stores in major Indian metros, owns the brand identity associated with Tarun Tahiliani, a distinguished fashion designer. The company adopted an artistic trademark called the ‘Tarun Tahiliani logo’ since 2018, which carries significant goodwill and reputation. Subsequently, the Appellant developed a variant of this logo known as the ‘Pi logo’ and sought registration under Class 42 on a 'proposed to be used' basis. The ‘Pi logo’ is an artistic stylization of the mathematical symbol π, associated with the Appellant’s brand identity.
The Appellant filed trademark Application No. 5292417 for the Pi logo, which was objected to by the Registrar under Section 9(1)(a) of the Trade Marks Act, stating the mark was devoid of any distinctive character and was a common personal/surname. Following this, the Appellant submitted responses to request a waiver of this objection. The Registrar conducted a hearing and ultimately passed an order dated 31.12.2024 refusing the application. This led the Appellant to file an appeal under Section 91 of the Trade Marks Act, 1999, challenging the decision.
The principal legal dispute hinges on the statutory distinctiveness of the Pi logo. The Appellant argued that the Pi logo is a distinctive mark, a creative variation of their already registered trademark, and not a common surname or personal name as alleged. The Registrar contended the mark lacked distinctiveness and thus fell under Section 9(1)(a) prohibiting registration of marks incapable of distinguishing goods or services in the trade.
The Court referred to multiple significant precedents to analyze the issue of distinctiveness:
1. **Abu Dhabi Global Market v. Registrar of Trademarks, 2023 SCC OnLine Del 2947**: The Court emphasized that a mark can only be found lacking in distinctiveness if it is incapable of distinguishing goods or services. The judgment clarified that marks exclusively used by one entity without similar marks being used by others are inherently distinctive. The case illustrated that familiar or simple symbols, when exclusively associated with one user, do not lose their distinctiveness.
2. **Muneer Ahmad v. Registrar of Trade Marks, 2023 SCC OnLine Del 7345**: This decision highlighted two categories under Section 9(1)(a)—either a mark inherently lacks distinctiveness or it is a commonly used mark in the trade. Importantly, the Registrar must point out specific similar marks used by others to deny registration on grounds of non-distinctiveness.
The Appellant invoked these precedents to argue that their Pi logo is unique, closely tied to their brand, and not replicated by others. The Registrar’s order lacked any reference to other similar marks in use, rendering their rejection unsubstantiated within this legal framework.
## Reasoning and Analysis of the Judge
Justice Tejas Karia carefully assessed the Registrar’s refusal. The judgment noted that the Impugned Order did not specify any other trademark identical or similar to the Pi logo that could negate its distinctiveness. The logo’s artistic representation of the mathematical symbol π with unique graphical lines, combined with its link to the Tarun Tahiliani brand, was sufficient to establish it as a distinct source identifier.
The Court held that a mark cannot be declared non-distinctive solely on the basis that it resembles a surname or personal name without evidence of others using a similar mark in the relevant class. The reasoning drew substantially from the abovementioned precedents, concluding that the opposition under Section 9(1)(a) was misplaced in the absence of demonstrated common use by third parties.
The Court set aside the Registrar’s order dated 31.12.2024 and directed that the Appellant’s trademark Application No. 5292417 be advertised and proceed as per the statutory procedure under the Trade Marks Act, 1999 and the Trade Marks Rules, 2017. The appeal was allowed and the pending applications disposed of with the direction for further processing rather than outright refusal.
This case reaffirms that under Section 9(1)(a) of the Trade Marks Act, a mark cannot be refused registration for lack of distinctiveness if no other similar marks are used in the trade, even if the mark resembles a common surname or personal name. The burden is on the Registrar to demonstrate that a mark is either inherently non-distinctive or commonly used by others in the relevant field. Creativity and exclusive association with a brand lend sufficient distinctiveness even to marks consisting of common symbols or personal names when appropriately stylized.
Goodview Fashion Private Limited vs The Registrar of Trade Marks :August 22, 2025 :C.A.(COMM.IPD-TM) 18/2025:2025:DHC:7166: Justice Tejas Karia
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.
