Delhi High Court Directs Registrar to Proceed with Trademark Registration for "DOUBLE-CHOICE" Court overturns previous refusal, emphasizing the need for comprehensive assessment of trademark distinctiveness and descriptiveness.
The Delhi High Court has overturned a decision by the Registrar of Trade Marks that refused the registration of the trademark "DOUBLE-CHOICE," filed by Kapil Goyal, an appellant engaged in trading rice, flour, and cereal preparations. The court ordered the Registrar to proceed with the advertisement and further processing of the trademark application, emphasizing the need to evaluate trademarks as a whole rather than dissecting them into individual parts.
The appellant, represented by advocates Mr. Sandeep Narula, Mr. Rehan Narula, and Mr. Deepanshu Singh, challenged the impugned order dated January 24, 2025, which rejected the application on grounds of non-distinctiveness and descriptiveness under Sections 9(1)(a) and 9(1)(b) of the Trade Marks Act, 1999. The order also erroneously demanded proof of acquired distinctiveness for a proposed-to-be-used trademark.
The High Court, presided over by Mr. Justice Tejas Karia, agreed with the appellant's arguments, citing the lack of cogent reasoning in the Registrar's decision. The court highlighted that the impugned order failed to explain why the mark "DOUBLE-CHOICE" could not distinguish the appellant's goods from others. It also noted that the Registrar's assessment was based on conjecture without factual material to support claims of descriptiveness.
In its analysis, the court emphasized that the distinctiveness of a trademark should be evaluated as a whole, and not by dissecting the mark into its constituent words. The court also clarified that a proposed-to-be-used trademark cannot be refused registration on the grounds of non-use or lack of secondary meaning, as such a requirement contradicts statutory provisions for proposed-to-be-used applications.
The court further rejected the Registrar's argument that the mark was descriptive of the goods, stating that the reasoning was imaginary and unsupported by evidence. The decision cited previous judgments, including Abu Dhabi Global Market v. Registrar of Trademarks and Mohd. Rafiq v. Modi Sugar Mills Ltd., to underscore the necessity of direct and immediate descriptiveness rather than remote connections.
In conclusion, the court set aside the impugned order and directed the Registrar to advertise the "DOUBLE-CHOICE" mark and proceed with the application in accordance with the Trade Marks Act and Rules.
Bottom Line:
Trade Marks Act, 1999 - A proposed-to-be-used trademark cannot be refused registration on the ground of non-use or lack of acquired distinctiveness. A trademark must be evaluated as a whole, and a conclusion of descriptiveness or non-distinctiveness should not be based on conjecture or dissected parts of the mark.
Statutory provision(s): Trade Marks Act, 1999 Sections 9(1)(a), 9(1)(b), 18(4)
Kapil Goyal v. Registrar of Trade Marks, (Delhi) : Law Finder Doc Id # 2835385
