Court rules that Trademark Office cannot demand proof of market use or fame for marks filed on "proposed to be used" basis. Rejection orders must explain reasoning clearly.

The Hon'ble High Court of Delhi in Kapil Goyal vs. The Registrar of Trade Marks [C.A.(COMM.IPD-TM) 15/2025] dated January 9, 2026 held that the Registrar of Trade Marks erred in refusing registration of the trademark "DOUBLE-CHOICE" for rice, flour and preparations made from cereals in Class 30. The Court held that for trademark applications filed on a proposed-to-be-used basis under Section 18(1) of the Trade Marks Act, 1999, evidence of acquired distinctiveness or secondary meaning cannot be demanded as such requirement would render the statutory recognition of proposed-to-be-used applications meaningless. The Court further held that a trademark cannot be dissected into its individual component words while examining its registrability - the mark must be considered as a whole. An order refusing registration on grounds of lack of distinctiveness under Section 9(1)(a) must contain reasoned findings demonstrating why the mark is incapable of distinguishing goods/services, and cannot merely state conclusions. For a mark to be considered descriptive under Section 9(1)(b), the reference to character or quality must be direct, plain and immediately apparent, and not remote or requiring multiple steps of reasoning. Findings based on conjecture and imagination without factual material are impermissible. The Court set aside the refusal order and directed the Registrar to advertise the mark and proceed with the application.

FACTS OF THE CASE

The Appellant, Kapil Goyal, was engaged in the business of trading of rice, flour and preparations made from cereals.

On June 20, 2023, the Appellant filed an Application bearing No. 5987240 for registration of the trademark "DOUBLE-CHOICE" (the "Appellant's Mark") on a proposed-to-be-used basis in Class 30 covering rice, flour and preparations made from cereals.

Vide Examination Report dated November 6, 2023, the Senior Examiner of Trade Marks raised objections under:

• Section 9(1)(a) of the Trade Marks Act, 1999 - claiming that the Appellant's Mark is devoid of distinctive character

• Section 9(1)(b) of the Act - claiming that the Appellant's Mark consists exclusively of words or indications which may serve in trade to designate the characteristics of the goods

  
  

In response to the Examination Report, the Appellant filed a detailed reply dated November 12, 2023 addressing the objections raised.

The matter was heard by the Senior Examiner on November 12, 2024. Vide order dated January 24, 2025 (the "Impugned Order"), the Senior Examiner refused the Appellant's application for registration of the Appellant's Mark.

Reasoning in the Impugned Order:

The Impugned Order held:

On Section 9(1)(a) - Lack of Distinctiveness:

1. The Appellant's Mark is devoid of any distinctive character

2. It is a combination of non-distinctive words "DOUBLE" and "CHOICE"

3. The mark is not capable of distinguishing goods or services of one person from those of another person

   
   

On Section 9(1)(b) - Descriptive Nature:

1. The mark is descriptive in nature and shows the kind and intended purpose in relation to the goods applied

2. The mark "DOUBLE-CHOICE" for goods "rice, flour and preparations made from cereals" is highly descriptive

3. Meaning of "DOUBLE-CHOICE" is "A double choice is a situation where there are two options to choose from"

4. The mark signifies variety of goods to be sold and choice available to consumers

On Proposed-to-be-Used Application:

1. The mark was filed on proposed-to-be-used basis

2. For the same reason, it is not fit within the proviso attached with Section 9

3. Mark has not acquired secondary meaning due to non-use in the market

Conclusion:

1. Application lacks on all counts

2. Objection under Section 9(1)(a) and (b) sustained

3. Trademark application refused under Section 18(4) of the Trade Marks Act, 1999

   
   

Aggrieved by the Impugned Order, the Appellant filed the present Appeal under Section 91 of the Trade Marks Act, 1999 and Rule 156 of the Trade Marks Rules, 2017 read with the Delhi High Court Intellectual Property Rights Division Rules, 2022.

ISSUE

Whether the Registrar of Trade Marks erred in refusing registration of the trademark "DOUBLE-CHOICE" on grounds that:

(i) The mark is devoid of distinctive character under Section 9(1)(a) of the Trade Marks Act, 1999, being a combination of non-distinctive words, without providing reasoned findings demonstrating why the mark is incapable of distinguishing the Appellant's goods from those of others, thereby violating principles of natural justice;

(ii) Evidence of acquired distinctiveness and secondary meaning can be demanded for a trademark application filed on a proposed-to-be-used basis under Section 18(1) of the Act, when the statutory recognition of such applications would be rendered meaningless if evidence of market use is required;

(iii) The mark is descriptive under Section 9(1)(b) of the Act on the basis of imaginary and conjectural findings that the mark signifies "variety" and "choice" available to consumers, when the application was filed on proposed-to-be-used basis with no products sold under the mark and no factual material to support such conclusions; and

(iv) Having a dictionary meaning automatically renders a mark descriptive, without examining whether the mark directly, plainly and immediately describes the characteristics of the specific goods?

HELD BY THE COURT

The Hon'ble High Court of Delhi in C.A.(COMM.IPD-TM) 15/2025 held that:

On Violation of Natural Justice - Lack of Reasoned Order:

The Court observed that the Respondent rejected the application for registration on the ground that the mark was non-distinctive in nature without providing any reasoning for the said finding. The Impugned Order merely stated the conclusion that the Appellant's Mark is non-distinctive without explaining why it cannot distinguish the Appellant's goods from those of others.

The Court held that the Impugned Order is in violation of principles of natural justice for failing to provide reasoned findings.

On Demanding Acquired Distinctiveness for Proposed-to-be-Used Applications:

The Court held that the Respondent erroneously demanded proof of 'acquired distinctiveness' and 'secondary meaning' for the Appellant's application even when it was explicitly filed on a proposed-to-be-used basis, which is a paradoxical requirement.

The Court relied on its earlier decision in Abu Dhabi Global Market v. Registrar of Trademarks, 2023 SCC OnLine Del 2947 and held: "For an application filed on a proposed-to-be-used basis, evidence of acquired distinctiveness or secondary meaning cannot be demanded as the statutory recognition of proposed-to-be-used applications under Section 18(1) of the Act would be rendered meaningless if the evidence of market use is required."

The Court further held: "At the outset, the factum of non-use of a Mark that is sought to be registered on a proposed-to-be-used basis is irrelevant in determining whether such Mark can be granted registration. As such Mark has not been used, there is no question of it acquiring secondary meaning."

On Section 9(1)(a) - Distinctiveness Requirement:

The Court held that it is well-settled that a Mark cannot be dissected into its individual parts while examining its entitlement to registration. Section 9(1)(a) applies only when a mark is so common and lacking in distinction that it would not be possible to distinguish the goods of the person using such mark with the goods of others. Words and phrases used in common parlance would fall within this category and cannot be registered unless covered by the proviso to Section 9(1).

The Court observed: "In the present case, there is no cavil that the Appellant's Mark consists of two commonly used words 'DOUBLE' and 'CHOICE', which are used in conjunction with each other to formulate the Appellant's Mark. However, when the Appellant's Mark 'DOUBLE-CHOICE' is considered as a whole, it cannot be said to be a word or phrase of such common usage that is so lacking in distinction, although it has some etymological significance in English language when both the words formulating the Appellant's Mark are used together, so as to render it incapable of distinguishing the goods of the Appellant with those of others, when it is used as a Trade Mark."

The Court held that the Impugned Order does not cite any other Mark which is either identical or similar to the Appellant's Mark and fails to provide any reason as to why the use of the Appellant's Mark would make it impossible to distinguish the goods of the Appellant from those of others.

On Section 9(1)(b) - Descriptive Nature:

The Court held that the Impugned Order held that the Appellant's Mark is descriptive in nature and shows the kind and intended purpose of the goods, concluding that the mark signifies "variety" of goods and "choice" available to consumers.

However, the Court held: "This argument of the Respondent is not convincing. It is not clarified in the Impugned Order as to which of the products the consumers are required to choose from. There is no basis to arrive at a conclusion that the Appellant's Mark denotes the variety of the goods sold under it and that there is a choice that the consumers enjoy with respect to the said goods in absence of factual material available before the Respondent. Hence, such findings are imaginary and based on conjecture."

The Court emphasized: "There are no two varieties of products from which the consumers can choose from while purchasing the Appellant's goods. Hence, the reasoning of the Impugned Order cannot be sustained."

The Court further held: "In any event, the Application for the registration of the Appellant's Mark has been filed by the Appellant on a proposed-to-be-used basis and, therefore, there was no prior use to arrive at a conclusion about the options available to the consumers when there were no products that were sold under the Appellant's Mark. Given that the Appellant's Application for the registration of the Appellant's Mark was filed on a proposed-to-be-used basis, it cannot be said that the Appellant had two varieties of goods offered under the Appellant's Mark. The Impugned Order is completely silent on this aspect and the conclusion reached based on this reasoning is unfounded."

The Court concluded: "Therefore, Impugned Order has erred in holding that the Appellant's Mark is descriptive in nature."

On Dictionary Meaning and Descriptiveness:

The Court held that the Appellant correctly submitted that the Impugned Order incorrectly assumes that having a dictionary meaning automatically renders a mark descriptive. The Court agreed that in order to be descriptive in nature, a Mark should directly describe characteristics of specific goods and not merely possess some general meaning.

The Court applied the principle from Mohd. Rafiq v. Modi Sugar Mills Ltd., 1971 SCC OnLine Del 190 that for a mark to be considered descriptive, the reference to character or quality must be direct, plain and immediately apparent, and should not be remote or require multiple steps of reasoning.

Final Directions:

The Court held: "In view of the above analysis, the present Appeal is allowed and the Impugned Order dated 24.01.2025 refusing registration of the Appellant's Mark bearing Application No. 5987240 in Class 30, is set aside."

The Court directed: "The Respondent is directed to advertise the Appellant's Mark 'DOUBLE-CHOICE', and, thereafter, proceed with the Appellant's Application No. 5987240 in Class 30, in accordance with the provisions of the Trade Marks Act, 1999 and the Trade Marks Rules, 2017."

RELEVANT SECTIONS

Section 9(1)(a) of the Trade Marks Act, 1999 - "Absolute grounds for refusal of registration"

"(1) The trade marks— (a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person; ...shall not be registered: Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark."

Section 9(1)(b) of the Trade Marks Act, 1999

"(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;"

Section 18(1) of the Trade Marks Act, 1999 - "Application for registration"

"(1) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark."

This provision explicitly recognizes and permits applications for marks proposed to be used, not just marks already in use.

Section 18(4) of the Trade Marks Act, 1999 - "Power to refuse registration"

"(4) When the Registrar refuses to accept an application for registration or to register a trade mark, he shall record in writing the reasons for such refusal and shall serve a copy thereof on the applicant."

Section 91 of the Trade Marks Act, 1999 - "Appeal to High Court"

"An appeal shall lie to a High Court from any decision of the Registrar under this Act or the rules made thereunder, except any decision made by the Registrar before the commencement of the Trade Marks (Amendment) Act, 2010, in any proceeding under section 47 or section 57 as it stood before its amendment in 2010."

Rule 156 of the Trade Marks Rules, 2017 - Provides for procedure for filing appeals under Section 91.

PARI MATERIA / CASES REFERRED

1. Abu Dhabi Global Market v. Registrar of Trademarks - 2023 SCC OnLine Del 2947

• Delhi High Court

• Key Principle Applied: An order refusing registration on grounds of lack of distinctiveness must contain reasoned finding demonstrating why the mark is incapable of distinguishing goods/services for which it is used

• Critical Holding: For applications filed on proposed-to-be-used basis, evidence of acquired distinctiveness or secondary meaning cannot be demanded as statutory recognition of such applications under Section 18(1) would be rendered meaningless if evidence of market use is required

• Relied upon extensively by present judgment

2. Mohd. Rafiq v. Modi Sugar Mills Ltd. - 1971 SCC OnLine Del 190

• Delhi High Court

• Key Principle: For a mark to be considered descriptive under Section 9(1)(b), the reference to character or quality must be direct, plain and immediately apparent

• Should not be remote or require multiple steps of reasoning

• Applied by Court to reject Registrar's finding of descriptiveness

Date of Judgment: January 9, 2026

Bench: Hon'ble Mr. Justice Tejas Karia (Single Judge)

Counsel for Appellant: Mr. Sandeep Narula, Mr. Rehan Narula & Mr. Deepanshu Singh, Advocates

REHAN NARULA HC JUDGMENT - KAPIL GOYAL VS REGISTRAR OF TRADEMARK.pdf

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