Introduction
This legal case study examines the Delhi High Court’s decision in Mensa Brand Technologies Private Limited v. Registrar of Trade Marks, delivered on August 22, 2025, concerning the registrability of the trademark “PRO.FITNESS” in Class 30. The dispute centered on whether the mark lacked distinctiveness under Section 9(1)(a) of the Trade Marks Act, 1999, and touched upon broader principles relating to coined marks, the anti-dissection rule, consistency in trademark examination, and the burden of proof in the application process.
Factual Background
Mensa Brand Technologies Private Limited is a company engaged in selling rice-based snack foods, rice cakes, crackers, cookies, filled cookies, chocolate products, frosting mixes, oats, and processed cereals for human consumption. On November 8, 2024, the company’s predecessor-in-interest filed application number 6701235 for registration of the trademark “PRO.FITNESS” in Class 30 on a ‘proposed to be used’ basis. An expedited request was filed shortly after to streamline the registration process.
The Applicant highlighted that “PRO.FITNESS” was not a commonly used phrase, nor listed in the dictionary, and claimed that its stylized presentation, especially the dot between “PRO” and “FITNESS”, rendered the mark visually and phonetically distinctive.
Procedural Background
The Trade Mark Registry issued a First Examination Report (FER) on November 12, 2024, objecting under Section 9(1)(a) of the Act, which requires that a trademark be capable of distinguishing the goods or services of one person from those of others. The FER asserted “PRO.FITNESS” lacked distinctiveness and could not act as a source identifier. The Applicant filed a detailed reply with supporting case law on December 12, 2024.
A hearing notice was issued for January 16, 2025, and the Applicant’s counsel appeared to argue in support of registration. Nonetheless, the application was rejected the next day, January 17, 2025, through an impugned order on the same ground of lacking distinctiveness. Mensa Brand Technologies appealed the rejection, contending that the impugned order was legally flawed and contrary to the settled principles of trademark examination.
Core Dispute
The core dispute was whether “PRO.FITNESS,” as stylized and used by the Applicant, meets the standard of distinctiveness under Section 9(1)(a) of the Trade Marks Act, 1999. The Applicant argued that the mark is unique and non-descriptive, and that the Registry had applied an incorrect legal standard by dissecting the mark into its components. Additionally, the Applicant highlighted the inconsistency exhibited by the Registry, which had accepted 15 other applications for similar or identical “PRO.FITNESS” and “PROFITNESS” marks for related goods. The Respondent maintained that the phrase consisted solely of generic elements incapable of functioning as a trademark.
Discussion on Judgments
The Applicant relied on a range of judgments to assert the mark’s distinctiveness and registrability:
Ticona Polymers Inc. v. Registrar of Trade Marks, 2023 SCC OnLine Del 1234: The Delhi High Court in this case affirmed that a composite trademark must be assessed in its entirety, rather than by separating its constituent elements—a principle often referred to as the anti-dissection rule, also statutorily recognized under Section 17(1) of the Act.
Muneer Ahmad v. Registrar of Trade Marks, 2023 SCC OnLine Del 7345: The Court reiterated that the Registrar cannot mechanistically dissect composite marks into generic parts when the whole exhibits distinctiveness.
Grey Matters Educational Trust v. Examiner of Trade Marks, 2024 SCC OnLine Del 7390: This case reaffirmed the anti-dissection principle and held that the Registrar must recognize distinctiveness when the combined mark as a whole is novel or arbitrary.
Under Armour Inc. v. Anish Agarawal & Another, 2025 SCC OnLine Del 3784: The Court underscored that the similarity between competing marks should not be decided by dissecting and comparing their parts, but by looking at the totality of the mark.
Sky Enterprise Pvt. Ltd. v. Abaad Masala & Co., 2020 SCC OnLine Bom 750: The Bombay High Court held that phonetic and visual distinctiveness may render a mark registrable even if its components are otherwise descriptive.
Hindustan Unilever Ltd. v. Registrar of Trade Marks, 2020 SCC OnLine IPAB 69: The Intellectual Property Appellate Board emphasized the importance of consistency and non-arbitrariness in trademark examination by the Registry.
Griffiths Hughes Ltd. v. Vick Chemical Co., AIR 1951 Cal 386 and A.R. Khaleel and Sons v. Registrar of Trade Marks, AIR 1960 Mad 251: These cases recognized that coined marks or invented combinations, even of common elements, can function as distinctive badges of origin.
F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd., (1969) 2 SCC 716: The Supreme Court affirmed the principle that invented marks can acquire distinctiveness and be registered, even if comprised of familiar words.
Disruptive Health Solutions Pvt. Ltd. v. Registrar of Trade Marks, 2022 SCC OnLine Del 2002 and Abu Dhabi Global Market v. Registrar of Trademarks, 2023 SCC OnLine Del 2947: The Delhi High Court affirmed that arbitrary or structurally novel marks can function as source identifiers and qualify for registration.
The judgments were cited in support of the proposition that PRO.FITNESS is an invented and distinctive mark, not a generic or descriptive term.
Reasoning and Analysis of the Judge
Justice Tejas Karia carefully analyzed whether the impugned order was based on a proper application of Section 9(1)(a) and the established jurisprudence. The Court held that the Registry erred by dissecting “PRO.FITNESS” into “PRO” and “FITNESS” and treating each as generic, rather than evaluating the full mark in line with the anti-dissection rule found in both legislation and precedent, as reiterated in Under Armour Inc. v. Anish Agarawal & Another and Ticona Polymers Inc. v. Registrar of Trade Marks.
The Court also emphasized the novel configuration and stylization of the mark, particularly the use of the dot, which added visual and phonetic distinctiveness and differentiated the mark from both dictionary terms and trade expressions. Importantly, the Registry failed to demonstrate that “PRO.FITNESS” is a commonly used phrase in the relevant trade or lacks sourcing identity.
Justice Karia noted the inconsistency of the Registry’s actions in refusing the subject mark while granting acceptance and advertisement to 15 similar or identical applications from the same Applicant for the same types of goods. The Judge clarified that there is no statutory duty on the Applicant to alert the Registry about related pending applications; instead, the responsibility for fair and thorough examination rests squarely with the Registry itself.
The Court found the impugned order to be devoid of sound reasoning, failing to address substantive contentions and neglecting a meaningful analysis of distinctiveness. The Registrar’s power under Section 9(1)(a) cannot be exercised mechanically, especially when the mark, taken as a whole, is arbitrary or coined and capable of functioning as a source identifier.
Final Decision
In conclusion, the High Court set aside the impugned order of January 17, 2025, and directed the Registrar of Trade Marks to advertise “PRO.FITNESS” under Application No. 6701235 in the Trade Marks Journal within two months, allowing the registration process to continue in accordance with law. The appeal was allowed and the pending application ordered to be disposed of.
Law Settled in This Case
The Judgment solidifies several important legal principles in Indian trademark law:
Composite marks must be assessed in their entirety (anti-dissection rule), not by mechanically separating elements and evaluating genericity or descriptiveness. Invented and arbitrary combinations, even of familiar words, can acquire distinctiveness and be registrable. Stylization, configuration, and punctuation in a mark can contribute to its distinctiveness. There is no statutory duty on an applicant to inform the Registry of related applications; the onus of fair examination is solely on the Registry. Reasoned decision-making and consistency are mandated in trademark administration, and arbitrary refusals contravene the settled judicial position.
Case Details
Case Title: Mensa Brand Technologies Private Limited Vs. Registrar of Trade Marks
Date of Order: August 22, 2025
Case Number: C.A.(COMM.IPD-TM) 17/2025 & Ι.Α. 8861/2025
Neutral Citation: 2025:DHC:7143
Name of Court: High Court of Delhi
Name of Judge: Hon’ble Mr. Justice 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
Suggested Titles for Publication in Law Journal
Novelty and Distinctiveness in Composite Trade Marks: Lessons from “PRO.FITNESS”
The Anti-Dissection Principle Revisited: Delhi High Court’s Approach to Trademark Distinctiveness
Invented Marks and Arbitrary Combinations: Jurisprudence on Registration Standards
Trademark Examination and Consistency in Registry Practice: A Critical Judicial Review
Distinctive Identity through Stylization: The Evolving Standards of Trademark Registration
