Delhi High Court
Grey Swift Private Limited Through Mr. … vs The Registrar Of Trade Marks on 16 April, 2025
* I N T H E H I G H CO U RT O F DE L H I AT NE W DE L H I
Reserved on: April 07, 2025
% Pronounced on: April 16, 2025
+ C.A.(COMM.IPD-TM) 18/2024
GREY SWIFT PRIVATE LIMITED THROUGH MR. SHIVAM
SINGLA .....Petitioner
Through: Mr. Siddharth Nath, Mr. Asjad
Hussain and Mr. Anunay Chowdhary,
Advs
versus
THE REGISTRAR OF TRADE MARKS .....Respondent
Through: Ms. Rukhmini Bobde, CGSC with Mr.
Jatin Dhamija, Mr. Amlaan Kumar and
Mr. Vinayak Aren, Advs
CORAM:
HON'BLE MR. JUSTICE SAURABH BANERJEE
JUDGMENT
Preface:
1. By way of the present appeal under Section 91 of the Trade Marks Act,
1999 1 read with Rule 156 of the Trade Marks Rules, 2017 2, the appellant
seeks to assail the impugned order dated 02.01.2024 passed by learned Senior1
Hereinafter referred as “the Act”
2
Hereinafter referred as “the Rules”
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Examiner of Trade Marks, Trade Mark Registry, New Delhi 3, whereby its
application no.4872027 for registration of the mark “BharatStamp” in Class
9 of the Act has been rejected.
Brief Factual Matrix:
2. The appellant, on 20.02.2021, applied for registration of the mark
“BharatStamp” (word) in Class 9 of the Act on a ‘proposed to be used’ basis.
The respondent, on 20.03.2021, issued an Examination Report raising an
objection under Section 9(1)(a) of the Act stating that “the mark is a non-
distinctive and as such it is not capable of distinguishing the goods of one
person from the others”.
3. Thereafter, the respondent passed the impugned order dated
02.01.2024, relevant portions thereof are as reproduced as under:-
“…The mark applied for registration is objectionable under S 9(1)(a) of the
Trade Marks Act 1999, as it is 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.
Ld. Advocate submitted various documents in support of distinctiveness of
the subject mark. The said documents have been perused thoroughly.
However, it has been observed that the mark is well-within the public
domain and common in use. The subject mark has lack of distinctive
feature and not able to differentiate the goods/ services of applicant from
others. Hence the objection raised u/s 9(1)(a) in examination report is
maintained.
After perusal of all the documents on record and submission made by the
applicant/ authorised agent, it is concluded that applied mark is not
registrable because of the reason stated as above. Hence application no
4872027 cannot be accepted and refused accordingly.”
3
Hereinafter referred as “impugned order”
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4. Aggrieved thereby, the appellant has preferred the present appeal.
Submissions of the Appellant:
5. Based on the pleadings as also the arguments advanced in support
thereof by Mr. Siddharth Nath, learned counsel for appellant before this
Court, as per the case set out, the respondent has adopted an inconsistent
approach by refusing registration of the mark “BharatStamp” to the appellant
in as much as the respondent has on the one hand granted registration to
trademarks incorporating the term ‘Bharat’ like ‘Bharat Bijlee’, ‘Bharat
Sangeeth’, and ‘BharatMatrimony.com’ as also to those trademarks
containing the word ‘Stamp’ like ‘StampXpress’, ‘MatrimonyStamp’, and
‘StampTac’ to multiple entities, but on the other hand has refused
registration of the mark “BharatStamp” to the appellant, even though it has
granted registration of the mark ‘BharatSign’ in Class 42 of the Act to
appellant herein.
6. Learned counsel submitted that the mark “BharatStamp” of the
appellant is a novel and unusual juxtaposition of two terms: “Bharat”, a
proper noun of Sanskrit origin, and “Stamp”, an English word with varied
meanings. He submitted that the word “Stamp” is polysemous and does not
exclusively mean legal stamp papers to any average person and hence, the
word does not directly veer attention of a person to the concept of digital
stamping which is the core nature of appellant’s product.
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7. He further submitted that the mark “BharatStamp” of the appellant
being distinctive, has to be taken as a whole and is capable of registration and
the two words cannot be dissected in its individual components ‘Bharat’ and
‘Stamp’ and it is a settled principle of law that registrability of a trademark
must be assessed in its entirety. For the aforesaid, he placed reliance Global
Super Parts v. Blue Super Flame Industries4, Ticona Polymers, Inc. v.
Registrar of Trade Marks5, Muneer Ahmad v. Registrar of Trade Marks6
and Mikko Vault LLC v. Registrar of Trade Marks 7,wherein it has been held
that a mark has to be seen as a whole while considering it for eligibility for
registration.
8. Learned counsel for the appellant placing reliance upon T.V.
Venugopal v. Ushodaya Enterprise Ltd. & Anr. 8, M/s Telecare Network
India Pvt. Ltd. v. M/s Asus Technology Pvt. Ltd. & Ors. 9and Evergreen
Sweet House v. Ever Green & Ors. 10, submitted that trademarks are
categorized based on distinctiveness, in five categories:(1) generic; (2)
descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful, with generic being
the least distinctive and fanciful being the most distinctive. As per him, since
the mark “BharatStamp” of the appellant falls under the ‘suggestive’ category
since, it requires some degree of imagination, thought and perception to reach
4
1985 SCC OnLine Del 373
5
2023 SCC OnLine Del 1234
6
2023 SCC OnLine Del 7345
7
2022 SCC OnLine Del 3506
8
(2011) 4 SCC 85
9
2019 SCC OnLine Del 8739
10
2008 SCC OnLine Del 1665
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a conclusion as to the nature of goods, thereby making it inherently
distinctive, as such the said mark of the appellant can proceed for
registration.
9. Learned counsel for the appellant then submitted that the mark
“BharatStamp” of the appellant has also, since acquired a ‘secondary
meaning’ in terms of the proviso to Section 9(1) of the Act, by virtue of the
novelty associated with the product and for the nature of the product
involved, as it provides a platform for customers to procure stamp papers
from over twenty States, it has been in continuous use for over six years and
has garnered a marquee clientele comprising more than 300 prominent
institutions and companies and it has gained recognition, as evidenced by
several awards and nominations received by the appellant for the product,
including empanelment by the State of Rajasthan. For the aforesaid, reliance
was placed upon Ishi Khosla v. Anil Aggarwal &Anr. 11, Info Edge (India)
Pvt. Ltd. & Anr. v. Shailesh Gupta &Anr. 12and Zydus Wellness Products
Limited v. Cipla Health Ltd. & Anr.13 to substantiate that a mark can acquire
‘secondary meaning’ through prior and consistent commercial use, even
within a short period.
Submissions of the Respondent:
10. Per Contra, Ms. Rukhmini Bobde, learned counsel for the respondent
submitted that the mark “BharatStamp” of the appellant is not distinctive, to
11
2007 SCC OnLine Del 126
12
2002 SCC OnLine Del 239
13
2023 DHC 4344
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enable consumers to associate it with appellant’s company or to its product,
and it fails to distinguish itself from similar good and services offered by
others. For the aforesaid, she placed reliance upon M/s Telecare Network
India Pvt. Ltd. v. M/s Asus Technology Pvt. Ltd. & Ors. (Supra) and Ilu a
Sole Proprietorship Concern v. Asian Hobby Crafts LLP14 wherein, it has
been held that a trademark should be capable of enabling people to identify
its source and that monopoly over descriptive marks cannot be granted.
11. She further submitted that the reliance upon Muneer Ahmad (supra)
by the learned counsel for the appellant, wherein similarly situated
trademarks were granted registration, is misplaced as the said decision is
pertaining to a ‘device’ mark whereas in the present case the mark
“BharatStamp” of the appellant is a ‘word’ mark.
12. She then submitted that since the appellant applied for the mark
“BharatStamp” on a ‘proposed to be used’ basis, it cannot be contended that
it has a ‘secondary meaning’. In any event, the correctness of the impugned
order cannot be assessed on the basis of (fresh) materials qua the mark
“BharatStamp” of the appellant having acquired a ‘secondary meaning’ since
they, pertaining to a subsequent period after the same was passed, were not a
part of the record before the respondent.
13. In light of aforesaid submissions, she urges for dismissal of the present
appeal.
14
2024 SCC OnLine Del 8299
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Rejoinder submissions of the Appellant:
14. In rejoinder arguments, learned counsel for the appellant reiterated his
submissions made hereinbefore, and captured hereinabove.
Analysis and Reasoning:
15. This Court has heard Mr. Siddharth Nath, learned counsel appearing
on behalf of appellant as also Ms. Rukhmini Bobde, learned senior counsel
appearing on behalf of respondent and have also gone through the relevant
documents on record along with the relevant judgments cited by the parties
during the course of arguments.
16. Before proceeding to adjudicate the above on merits, as specified in
Section 9(1)(a) of the Act which is pertaining to “Absolute grounds for
refusal of registration”, a trademark is not registrable if it is “devoid of any
distinctive character”, i.e. a trademark has to be capable of distinguishing the
goods or services of one person from those of another person. The trademark
applied for registration has to have the ability to act as a source identifier.
17. In the present scenario, though the “BharatStamp” of the appellant is a
combination of two words, ‘Bharat’ and ‘Stamp’ but they cannot be dissected
and read/ taken separately. More so, since the mark “BharatStamp” of the
appellant is, admittedly, a composite singular mark it has to be taken/ read as
a whole. The said “BharatStamp” of the appellant is also neither a colloquial
term nor which is/ can be found in the Dictionary. When read/ taken as it is,
as a whole it has no meaning. It is, in fact, purely a self-created, arbitrary and
fanciful word coined by the appellant. The said mark “BharatStamp” of the
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appellant does not convey any connection with the goods and/ or services for
which it is sought to be granted registration to anyone, much less, the average
consumer. It is non-existent for all practical and theoretical purposes. What is
not there cannot be given any shape and/ or configuration and/ or denotation
and/ or significance.
18. While dealing with the similar issue, the Hon’ble Supreme Court is F.
Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd. 15 held
as under:-
“13. … … It is true that the word “Dropovit” is coined out of words
commonly used by and known to ordinary person knowing English. But the
resulting combination produces a new word, a newly coined word which
does not remind an ordinary person knowing English of the original words
out of which it is coined unless he is so told or unless at least he devotes
some thought to it. It follows that the word “Dropovit” being an invented
word was entitled to be registered as a trade mark and is not liable to be
removed from the Register on which it already exists.”
[Emphasis Supplied]
19. In fact the aforesaid issue also finds mention in McCarthy on
Trademarks and Unfair Competition that:-
“a combination of generic terms may result in a composite mark that itself
is not generic name of the goods and services in issue. The whole
composite may create a distinct commercial impression that is more than
just the sum of its parts.”16
20. Moreover, the mark “BharatStamp” of the appellant has to be read/
taken as a whole and when read/ taken as a whole, it is not open to dissection.
In fact, the principle of anti-dissection is now well-settled with a consistent
15
(1969) 2 SCC 716
16
McCarthy, J. T. (2004). McCarthy on Trademarks and Unfair Competition (4th ed., Vol. 2). Thomson West.
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line of judgments passed by Court(s) from time to time. Lately, a Co-ordinate
Bench of this Court in Ticona Polymers, Inc. v. Registrar of Trade Marks17,
while dealing with a similar issue has reiterated the same principle while by
holding as under:-
“12. It is well settled that a mark cannot be dissected into its individual
parts while examining its entitlement to registration. Though Section 17(1)
of the Trademarks Act statutory embodies this anti-dissection principle in
the context of infringement proceedings, the principle would apply, mutatis
mutandis, even at the stage when the mark is examined for its entitlement
for registration as it is only the factum of registration which brings, in its
wake, the privileges that follow, including protection against
infringement.”
[Emphasis Supplied]
21. In view of the aforesaid, the said mark “BharatStamp” of the appellant
does not convey any connection with the goods and/ or services for which it
is sought to be granted registration to anyone, much less, the average
consumer. It would require a higher degree of imagination for the average
consumer to come to that conclusion. The said mark “BharatStamp” of the
appellant is, thus, inherently distinctive. Even though the present mark
“BharatStamp” of the appellant was filed on a ‘proposed to be used’ basis,
however, the same can acquire distinctiveness on or before it is granted
registration subsequently. The same view has been expressed by a Co-
ordinate Bench of this Court in Zydus Wellness Products Limited (supra),
which was following an earlier decision by the Division Bench of this Court
17
2023 SCC OnLine Del 1234
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in Marico Limited v. Agro Tech Foods Limited 18, wherein it has held as
under:-
“55.5. In Marico, the Division Bench of this Court held that the terminus
ad quem fixed by the proviso to Section 9(1), of the date of application for
registration, stands statutorily extended by Section 31(2) to the date of
registration of the mark. In other words, if the mark, for which an
application has been submitted for registration, has acquired
distinctiveness or is recognised as a well-known trade mark on or before
the date when the mark was registered, it would be entitled to registration,
even if it otherwise infracted any of the clauses of Section 9(1).”
22. Lastly, based on what was argued by the learned counsel for the
appellant, this Court finds that the very same respondent has also been
granted registration to ‘word’ mark(s) like BharatPe, Bharat ScanPay,
ibharath, BHARAT VISION, among others, in various Classes of the Act as
well as ‘device’ marks like B BHARAT BIJLEE, BHARATH SANGEETH,
BHARAT ELECTRONICS, among others, also in various Classes of the Act.
Conclusion:
23. Accordingly, in view of the above the appeal is allowed and the
impugned order dated 02.01.2024 passed by learned Senior Examiner of
Trade Marks, Trade Mark Registry, New Delhi, is set aside.
24. Resultantly, the mark “BharatStamp” applied for registration vide
trademark application no.4872027 by the appellant is liable to proceed for
registration.
25. Needless to say, the registration of the composite mark “BharatStamp”
18
2010:DHC:5337-DB
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shall not confer any exclusive right over any individual component/ part of
the mark i.e., ‘Bharat’ or ‘Stamp’ upon the appellant herein.
26. A copy of this judgment be forwarded to the Registrar of Trade Marks
for compliance.
SAURABH BANERJEE, J
APRIL 16, 2025/Ab
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By:BABLOO SHAH
Signing Date:16.04.2025
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