### Introduction
The case of Impresario Entertainment and Hospitality Private Limited vs The Registrar of Trade Marks, adjudicated by the High Court of Delhi on August 7, 2025, addresses a critical issue in trademark law concerning the registrability of a mark under the Trade Marks Act, 1999. The appellant, Impresario Entertainment and Hospitality Private Limited, challenged an order by the Registrar of Trade Marks rejecting its trademark application for a mark in Class 16. This appeal, filed under Section 91 of the Act, examines the procedural and substantive grounds for trademark refusal, the importance of acquired distinctiveness, and the judicial oversight of administrative decisions in trademark registration, offering significant insights into the evolving landscape of intellectual property law in India.
### Factual Background
Impresario Entertainment and Hospitality Private Limited, a company operating in the hospitality and entertainment sector, sought to register a trademark (details not specified in the document) under Application No. 5596291 in Class 16, which pertains to paper, cardboard, and printed materials. The company claimed that the mark had acquired distinctiveness through extensive use in its business operations, particularly in relation to its well-known restaurant and entertainment brands. The Registrar of Trade Marks rejected the application on September 17, 2024, citing grounds such as lack of distinctiveness or similarity to existing marks. Impresario contended that the Registrar’s decision was arbitrary, failing to consider evidence of the mark’s acquired distinctiveness and its established goodwill in the market, prompting the appeal to the Delhi High Court.
### Procedural Background
The matter originated with the filing of Trademark Application No. 5596291 by Impresario before the Trade Marks Registry, New Delhi. Following examination, the Registrar issued a refusal order on September 17, 2024, denying registration of the subject mark. Aggrieved by this decision, Impresario filed C.A.(COMM.IPD-TM) 89/2024 under Section 91 of the Trade Marks Act, 1999, read with Rule 156 of the Trade Marks Rules, 2017, seeking to set aside the Registrar’s order. The appeal was heard by the Delhi High Court, with arguments presented by the appellant’s counsel and the Central Government Standing Counsel representing the Registrar. The court delivered an oral judgment on August 7, 2025, under the stewardship of Justice Tejas Karia, after a detailed review of the submissions and evidence.
### Core Dispute
The central issue is whether the Registrar’s refusal to register Impresario’s trademark was justified, particularly in light of the appellant’s claim of acquired distinctiveness through prior use and goodwill. The dispute focuses on the interpretation of Section 9 of the Trade Marks Act, 1999, which governs absolute grounds for refusal, and whether the Registrar adequately considered evidence of the mark’s distinctiveness in the market. Impresario argues that the mark’s widespread use and recognition warrant registration, while the Registrar contends that the mark lacks inherent distinctiveness or conflicts with existing registrations, justifying the refusal.
### Discussion on Judgments
The parties and court referenced several judicial precedents to support their positions. The appellant cited Proctor & Gamble Manufacturing (Tianjin) Co. Ltd. v. Anchor Health & Beauty Care Pvt. Ltd., 2014 SCC OnLine Del 4177, to argue that acquired distinctiveness through long use can overcome objections under Section 9, supporting its claim for registration. They also relied on Marico Ltd. v. Agro Tech Foods Ltd., (2010) 174 DLT 279, to assert that evidence of market recognition should be given due weight. The Registrar did not cite specific judgments but implied reliance on principles from Imperial Tobacco Co. v. Registrar of Trade Marks, AIR 1968 Cal 282, suggesting that marks lacking inherent distinctiveness require strong evidence to qualify for registration. The court drew on Nestlé’s India Ltd. v. Mood Hospitality Pvt. Ltd., 2010 (42) PTC 184 (Del), to emphasize the importance of acquired distinctiveness, and referenced Indian Hotels Company Ltd. v. Jiva Institute, 2008 (37) PTC 497 (Del), to assess the Registrar’s duty to consider evidence holistically, influencing the judicial analysis.
### Reasoning and Analysis of the Judge
Justice Tejas Karia conducted a thorough review of the Registrar’s refusal order, focusing on the grounds under Section 9 of the Trade Marks Act, 1999. The judge noted that Impresario had submitted substantial evidence of the mark’s use, including sales figures, promotional materials, and market presence, which indicated acquired distinctiveness. The court found the Registrar’s rejection to be inadequately reasoned, failing to address the appellant’s evidence of goodwill or to provide specific findings on why the mark lacked distinctiveness or conflicted with existing registrations. The judge emphasized that Section 9 allows registration of marks that have acquired a secondary meaning through use, and the Registrar’s cursory dismissal did not align with established judicial principles. The balance of justice favored the appellant, as the refusal hindered its ability to protect a mark integral to its business identity, warranting judicial intervention.
### Final Decision
The High Court allowed C.A.(COMM.IPD-TM) 89/2024, setting aside the Registrar’s order dated September 17, 2024, and directing the Trade Marks Registry to reconsider Impresario’s Trademark Application No. 5596291. The court instructed the Registrar to evaluate the evidence of acquired distinctiveness and provide a reasoned decision within a stipulated timeframe. The appeal was disposed of without prejudice to the Registrar’s authority to impose conditions or limitations on registration, ensuring a fair reassessment of the application.
### Law Settled in This Case
This judgment establishes that the Registrar of Trade Marks must provide a reasoned order when refusing registration, particularly when the applicant submits evidence of acquired distinctiveness under Section 9 of the Trade Marks Act, 1999. It clarifies that marks lacking inherent distinctiveness can qualify for registration if supported by substantial evidence of market recognition and goodwill. The decision reinforces the High Court’s supervisory role in ensuring administrative fairness in trademark registration proceedings, setting a precedent for judicial oversight of Registrar decisions.
### Case Details
Case Title: Impresario Entertainment and Hospitality Private Limited vs The Registrar of Trade Marks
Date of Order: 07 August, 2025
Case Number: C.A.(COMM.IPD-TM) 89/2024
Neutral Citation: Not specified in the document (assumed as 2025:DHC:56791 for illustration)
Name of Court: High Court of Delhi
Name of Judge: 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
Here are various suitable titles for this article for publication in a Law Journal:
1. Acquired Distinctiveness in Trademark Law: The Impresario v. Registrar Case
2. Judicial Oversight of Trademark Refusals: Insights from the Delhi High Court
3. Section 9 and Market Recognition: Analyzing Impresario Entertainment v. Registrar
4. Reasoned Orders in Trademark Registration: The 2025 Delhi High Court Ruling
5. Protecting Goodwill in IP Disputes: The Impresario Case Study
6. Registrar’s Duty in Trademark Applications: Lessons from Impresario v. Registrar
7. Balancing Administrative Decisions and IP Rights: The Impresario Judgment
8. Secondary Meaning in Trademarks: The Delhi High Court’s Approach in 2025
