The case involved an appeal filed by Grey Swift Private Limited under Section 91 of the Trade Marks Act, 1999, read with Rule 156 of the Trade Marks Rules, 2017, challenging the rejection of its application for the trademark “BharatStamp” in Class 9 by the Senior Examiner of Trade Marks, vide order dated January 2, 2024.
Grey Swift applied for registration of the word mark “BharatStamp” on February 20, 2021, on a ‘proposed to be used’ basis. The mark faced objection under Section 9(1)(a) of the Act, which bars registration of marks devoid of distinctive character. The Examiner, after reviewing the evidence and submissions, concluded that the mark lacked distinctiveness and was common in use, and therefore unregistrable.
Aggrieved, the appellant contended that “BharatStamp” is a novel and arbitrary juxtaposition of two unrelated terms: “Bharat,” a Sanskrit-origin proper noun, and “Stamp,” an English word with multiple meanings. The appellant argued that the term, when taken as a whole, has no direct reference to digital stamping or the product itself and thus qualifies as suggestive. Consequently, it was inherently distinctive and registrable.
The appellant emphasized the anti-dissection rule, asserting that trademarks must be evaluated as a whole. They relied on decisions such as Global Super Parts v. Blue Super Flame Industries, Ticona Polymers, Inc. v. Registrar of Trade Marks, and T.V. Venugopal v. Ushodaya Enterprises Ltd. to assert that distinctiveness cannot be determined by dissecting the mark into its parts. Moreover, the mark was claimed to have acquired secondary meaning through prolonged and consistent use, with the product used across 20 states, catering to over 300 clients and receiving public recognition, awards, and government empanelments.
Conversely, the respondent argued that the mark lacked distinctiveness and could not be associated with the appellant's goods. It was also asserted that since the application was filed on a ‘proposed to be used’ basis, the appellant could not claim acquired distinctiveness or secondary meaning. Further, the evidence supporting secondary meaning post-dated the impugned order and therefore could not be considered.
In its analysis, the Court reiterated that under Section 9(1)(a), a trademark must have the capacity to distinguish the goods or services of one party from another. The Court held that “BharatStamp” is not a dictionary term nor a colloquial phrase. Instead, it is a coined, arbitrary, and fanciful term with no immediate reference to the appellant’s services. Citing the Supreme Court in F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd., the Court emphasized that invented words, even if derived from known terms, are registrable if the resulting expression is novel and requires thought to interpret.
The Court further cited McCarthy on Trademarks and Unfair Competition to affirm that a combination of generic words could result in a distinctive composite mark. It upheld the principle that such composite marks must be evaluated as a whole (anti-dissection), a view echoed in Ticona Polymers and affirmed by a Division Bench in Marico Ltd. v. Agro Tech Foods Ltd.
On the issue of secondary meaning, the Court agreed with the precedent in Zydus Wellness Products Ltd. and Marico Ltd., clarifying that distinctiveness may be assessed up to the date of registration and not just the date of application.
Lastly, the Court acknowledged that the Registrar had allowed other marks with similar structural elements (“Bharat” and “Stamp”) or closely related word marks across various classes. While each application must be assessed independently, inconsistency in the Registrar’s approach, especially given the allowance of “BharatSign” to the same applicant, was noted.
Decision:
The Court allowed the appeal, set aside the impugned order dated January 2, 2024, and directed that the mark “BharatStamp” (Application No. 4872027) be processed for registration. However, the Court clarified that registration of the composite mark does not grant exclusive rights over its individual components, i.e., “Bharat” or “Stamp.”
Case Title: Grey Swift Pvt. Ltd. Vs. Registrar of Trade Marks
Neutral Citation: 2025:DHC:2609
Court: High Court of Delhi
Coram: Hon’ble Mr. Justice Saurabh Banerjee
Case No.: C.A.(COMM.IPD-TM) 18/2024
Date of Judgment: April 16, 2025
