Kapil Goyal engaged in trading rice flour and cereal preparations filed trademark application No 5987240 for DOUBLE-CHOICE in Class 30 on proposed-to-be-used basis on 20 June 2023 which faced objections under Sections 9(1)(a) and 9(1)(b) of Trade Marks Act 1999 in examination report dated 6 November 2023 for lacking distinctive character and being descriptive, replied on 12 November 2023, heard on 12 November 2024 and refused by impugned order dated 24 January 2025 on grounds of non-distinctiveness descriptiveness and lack of secondary meaning, leading to appeal under Section 91. The court reasoned that the impugned order violated natural justice by lacking detailed reasoning on why the mark as a whole is non-distinctive or directly descriptive rather than suggestive requiring imagination, erroneously demanded acquired distinctiveness for proposed use rendering Section 18(1) meaningless, and based descriptiveness on conjectural variety/choice without evidence while marks must be assessed holistically not dissected with direct not remote reference to goods characteristics. The appeal was allowed setting aside the impugned order directing advertisement and further proceedings.
- Orders refusing trademark registration must contain reasoned findings explaining why the mark lacks distinctiveness or is descriptive: Abu Dhabi Global Market v. Registrar of Trademarks, 2023 SCC OnLine Del 2947, Para 7.
- Applications on proposed-to-be-used basis under Section 18(1) of Trade Marks Act 1999 cannot require evidence of acquired distinctiveness or secondary meaning: Abu Dhabi Global Market v. Registrar of Trademarks, 2023 SCC OnLine Del 2947, Para 8.
- A mark is descriptive under Section 9(1)(b) only if it directly and immediately references characteristics of goods, not remotely or requiring multiple mental steps: Mohd. Rafiq v. Modi Sugar Mills Ltd., 1971 SCC OnLine Del 190, Para 11.
- Trademarks must be examined as a whole without dissecting into components for distinctiveness under Section 9(1)(a): Para 22.
Kapil Goyal Vs The Registrar of Trade Marks, Order date: 09 January 2026, Case Number: C.A.(COMM.IPD-TM) 15/2025, Neutral Citation: N/A, Name of court: High Court of Delhi at New Delhi, Name of Judge: Hon'ble Mr. Justice Tejas Karia.
[Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]
[Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi]
