Graviss Foods Private Limited vs The Registrar Of Trade Marks
- Court
- Bombay High Court
CNR No : HCBM020102432026
J-F-2-COMMP-20-2026+.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
COMMERCIAL MISCELLANEOUS PETITION NO. 20 OF 2026
AND
COMMERCIAL MISCELLANEOUS PETITION (L) NO. 10288 OF 2026
Graviss Foods Private Limited …Petitioner
Versus
The Registrar of Trade Marks …Respondent
Mr. Anand Mohan a/w Mr. Kaivalya Shetye & Ms. Kalyani Paunikar, i/b
Mr. Mahesh Mahadgut Advocates, for Petitioner.
Mr. Yashodeep Deshmukh a/w Mr. Ashutosh Misra, Ms. Vaideshi
Deshmukh, Mr. Rutvik Rao & Ms. Pratisha Shukla, for Respondent
No.1.
Digitally
signed by
ASHWINI
JANARDAN
VALLAKATI
Date:
2026.09.16
16:39:38
+0530
ASHWINI
JANARDAN
VALLAKATI
CORAM: SOMASEKHAR SUNDARESAN, J.
DATE: SEPTEMBER 16, 2026
JUDGEMENT :
Context and Factual Background:
1. Commercial Miscellaneous Petition (L) No. 10288 of 2026 (“ Petition
10288 ”) and Commercial Miscellaneous Petition No. 20 of 2026 (“ Petition
20 ”) challenge the rejection of two applications for registration of a trade mark
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1
ICE CREAM ROCKS (“ Subject Mark ”), a mark attested to have been in use
from June 10, 2023, made by Graviss Foods Pvt. Ltd. (“ Petitioner ”). The
product in relation to which the mark is actually used is described as a ‘bite-
sized, coated ice cream treat with a flavoured ice cream centre in a choco-dip
with brownie crumbles, hazelnut pieces or rice crispies, sold in flavours such
as Mississippi Mud, Caramel Biscuit and Hazelnut’.
2. Both applications were made on January 17, 2024. The Registrar of
Trade Marks (“ Registrar ”) refused each application for registration in separate
orders passed on December 23, 2025 (collectively, “ Impugned Orders ”).
3. The Examination Report in the Class 29 Application raised two
objections: first , under Section 9(1)(a) of the Trade Marks Act, 1999 (“ the Act ”)
that the Subject Mark, ‘ICE CREAM ROCKS’ is devoid of any distinctive
character; and second , under Section 11(1) of the Act, citing ‘ICE CREAM
2
WORKS’ (“ Existing Marks ”) that had four registrations , all standing in the
name of a single proprietor, Prince Creamery Private Limited. The
Examination Report in the Class 35 Application raised objections under
1 Application No. 6263527 is for registration in Class 29 for, among others, milk and milk
products, dairy-based desserts, meat, fish, poultry and game, and vegetables, jellies, jams,
and edible oils. Application No. 6263529 is for registration in Class 35 for services of
marketing, sales promotion, wholesaling, retailing and distribution services of the aforesaid
goods.
2 The existing registered marks bear numbers 2043077, 3616359, 3988910 and 6189813
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Sections 9(1)(a) and 9(1)(b) of the Act, with no registered mark being cited
against it.
4. The Impugned Order passed in the Class 29 Application, after reciting
the facts of filing, examination and hearings conducted, holds in a single
operative paragraph that: -
A] The Subject Mark is not inherently distinctive, as it comprises
laudatory and descriptive terms for the applied goods;
B] The Subject Mark has a direct reference to the character, quality
and intended purpose of the applied goods, and is therefore incapable of
distinguishing the goods of one person from those of another;
C] No exclusive right can be claimed in laudatory and descriptive
terms unless distinctiveness has been acquired before the date of
application by long, continuous and extensive commercial use – the
Subject Mark not having had long and continuous use, the question of
acquired distinctiveness does not arise;
D] The Subject Mark is phonetically, visually and structurally similar
to the Existing Marks registered under the four cited numbers in Class
29, giving rise to a likelihood of confusion and a likelihood of
association, and the Existing Marks are prior in adoption and
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registration;
E] The Petitioner has failed to show any plausible reason for the
adoption of the Subject Mark;
F] Therefore, registration is objectionable under Section 9(1) and
Section 11(1) of the Act.
5. The Impugned Order rejecting the Class 35 Application is in the same
form and holds that:
A] The Subject Mark is not inherently distinctive, being generic,
common to trade, laudatory and descriptive, and has direct reference to
the character, quality and intended purpose of the services applied for,
and that acquired distinctiveness is not established for want of long,
continuous, uninterrupted and extensive use supported by clear and
cogent evidence;
B] A mere combination of two known words is not an invented word
where the same idea is conveyed to the eye or the ear as by those words
in their ordinary form;
C] The Subject Mark would be seen in the relevant market sector as
an advertising expression or purely informational statement ;
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D] The relevant public would perceive in it no indication of
commercial origin beyond the promotional information it conveys;
E] The objection raised under Section 9(1)(a) and Section 9(1)(b) of
the Act is held to be maintainable and in the interest of purity of the
Register, the application deserves to be rejected.
6. The Impugned Orders reject both the applications without the Registrar
exercising the discretion to advertise them.
Contentions of Parties:
7. By consent of the parties, both Petitions were taken up for final hearing.
I have heard Mr. Anand Mohan, Learned Advocate on behalf of the Petitioner,
and Mr. Yashodeep Deshmukh, Learned Advocate on behalf of the Registrar.
With their assistance, I have examined the material on record. The Learned
Advocates agreed that a decision in Petition 10288 would, for all practical
purposes be dispositive of the issues arising in Petition 20 as well, since the
application in Class 29 was for goods while the application in Class 35 was for
services related and incidental to such goods.
8. Mr. Mohan’s challenge to the Impugned Orders is principally on the
ground that they contain conclusions but no reasons. He would submit that
the whole of the findings under Section 9 are contained in two sentences
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which do no more than recite the language of the statute. The Impugned
Orders do not say what the mark is said to describe, or which characteristic,
quality, or intended purpose of these goods and services it is said to refer to.
They do not so much as identify the goods and services, which alone would
have supplied the context in which the Subject Mark is to be judged.
3 4
9. Mr. Mohan would rely on Gurdial Singh and on Kranti Associates for
the settled position that the recording of reasons is a facet of natural justice
and one cannot conflate conclusions with reasons. He would cite Huhtamaki
5
Oyj for the standard of assessment expected of authorities; and Bidisha
6
Ghoshal to submit that a refusal couched in the very same boilerplate,
including the identical concluding formula, must be set aside as cryptic and
bereft of reasons.
10. Mr. Mohan would submit that the Impugned Orders do not contain the
basis on which the Registrar has drawn the conclusions made in them, and
therefore are devoid of reasons. He would also submit that at the least, the
applications ought to have been advertised, instead of the Registrar himself
speaking for the Existing Marks without having even considered if the
registrant of the Existing Marks, or anyone else in the market, truly had any
3 Gurdial Singh Fijji v. State of Punjab, (1979) 2 SCC 368
4 Kranti Associates Pvt. Ltd. and Anr. v. Masood Ahmed Khan and Ors, (2010) 9 SCC 496
5 Huhtamaki Oyj and Anr. v. Controller of Patents, 2023 (96) PTC 198
6 Bidisha Ghoshal v. Registrar of Trade Marks, TMA No. 4 of 2023, decided by the Calcutta
High Court on October 18, 2023
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objection to the registration. Such an approach would have enabled validation
of the concerns expressed upon examination, which has been avoided by not
advertising the applications.
11. In contrast, Mr. Deshmukh would submit that the Impugned Orders
indeed contain reasons adequate enough to deal with the ex-facie untenable
applications, which in his view, are evidently for words that are not amenable
to registration as trade marks. According to Mr. Deshmukh, the Impugned
Orders identify the statutory objections, the nature of the Subject Mark, the
reasons why inherent distinctiveness is lacking, the reasons for rejecting the
plea of acquired distinctiveness and the basis upon which registration stands
refused. Therefore, he would submit that the decision demonstrates due
application of mind to the material placed before the Registrar and cannot be
characterised as arbitrary merely because the reasoning is concise.
12. Mr. Deshmukh would submit that the appellate jurisdiction under
Section 91 is not intended to substitute the opinion of the Court merely
because another view is possible, interference being unwarranted unless the
exercise of statutory discretion is shown to be arbitrary, perverse or contrary
to law.
13. He would submit that remand would serve no useful purpose since on
the face of the record, the Subject Mark is not amenable to registration, being
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barred by Section 9, which has been noticed in the examination and put to the
Petitioner, and dealt with in the Impugned Orders.
Analysis and Findings:
14. The Petitioner is essentially a licensee of the “Baskin Robbins” ice-
cream brand and variously describes itself as a licensee and as the owner (in
the SAARC region) of the “Baskin Robbins” brand. The Petitioner is said to
operate India’s largest ice-cream store chain, with over 800 parlours across
230 cities and over 5000 retail units, and has coined and invented various
trade marks which are the names of the flavours and products of ice cream
used as sub-brands sold under the umbrella house mark “Baskin Robbins”.
15. However, the Subject Mark has no reference to “Baskin Robbins” or
“BR” in it. The actual use of the Subject Mark in the market, as is seen from
the material brought on record by the Petitioner is “BR Ice Cream Rocks” but
what is sought to be registered to get a monopoly over, is the phrase “ICE
CREAM ROCKS” as a word mark.
16. It is true that neither Impugned Order cites any dictionary, lexicon or
trade publication to support the finding that the mark is merely descriptive or
laudatory. They hold that the usage of the Subject Mark has not been for long
enough to give it an aura of acquired distinctiveness. It is also contended that
the Affidavit of User filed by Mr. Mohit Khattar dated January 16, 2024
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(“ Affidavit of User ”) on behalf of the Petitioner has not been squarely
addressed in the Impugned Orders. These submissions make the Impugned
Orders appear vulnerable when seen from the perspective of the prayer for a
remand with a direction to advertise the applications, however, considering
the nature of the Subject Mark (a simple combination of generic words i.e.
“ICE CREAM ROCKS”) and considering that the appellate jurisdiction under
Section 91 of the Act is co-extensive with the powers of the Registrar, it is felt
appropriate to assess if the observations in the Examination Report and the
submissions of the Petitioner in that regard, make out a case for remanding
the applications to the Registrar as prayed.
17. Therefore, the provisions of law cited by the Registrar to resist
processing the applications any further, are extracted below and the
submissions of the parties are dealt with.
Section 9:
Section 9 of the Act reads thus:
9. 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;
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(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;
(c) *
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.
[Emphasis Supplied]
18. Section 9(1)(a) of the Act sets out a positive statutory prohibition on
registering any trade mark that is devoid of any distinctive character. The
features of such a mark are articulated in the provision itself as a mark not
capable of distinguishing the goods or services of one person from the goods
or services of another. Section 9(1)(b) of the Act sets out a positive statutory
prohibition on the registration of any trade mark which consists exclusively of
indications that may serve in trade to designate the kind, quality, purpose or
other characteristics of the goods or services.
19. Mr. Deshmukh is right in his submission that Sections 9(1)(a) and
9(1)(b) embody the legislative policy that expressions incapable of
distinguishing one trader’s goods or services from those of another, and
expressions which designate the nature, quality, or intended purpose of goods
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or services, must remain available for bona fide use by all traders, without
allowing anyone to monopolise them. What is sought to be registered by the
Petitioner is the expression “ICE CREAM ROCKS” and not something like “BR
ICE CREAM ROCKS” or “BASKIN ROBBINS ICE CREAM ROCKS”. With that
handicap in the Subject Mark, one has to examine whether the Subject Mark is
capable of distinguishing the goods of the Petitioner from the goods of
another.
20. Indeed, the Petitioner has relied on about 130 instances of registered
marks with “ICE CREAM” in them, but almost all of them have as their
primary element, the brand name of ice cream – for example “Amul” or
“Arun” as a prefix or fuller names such as “METRO THE DAIRY ICECREAM”
or “HOKEY POKEY ICE CREAM PARLOUR”. There is also a registration of
“ICE CREAM WORKS”, which is an ice cream parlour in Mumbai and that is
discussed when dealing with Section 11 of the Act later in this judgement.
21. The Senior Examiner has recorded a categorical finding that ‘ICE
CREAM ROCKS’ is descriptive, common to trade and laudatory in relation to
the goods and services for which registration has been applied, and is
therefore incapable of functioning as a legitimate mark. These views are
upheld in the Impugned Orders.
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22. Mr. Mohan would submit that no monopoly can be, or is being claimed
on “ICE CREAM”, which by itself is a matter of public right. The real
differentiator, he would submit is in the addition of “ROCKS” which makes the
Subject Mark distinctive. He would contend that the Subject Mark is neither
descriptive nor laudatory of the goods. The expression has no dictionary
meaning and is not a phrase known to the language, to the trade, or to the
consumer. He would contend that the Subject Mark is an ungrammatical
combination of words put together to invent a new expression, and it must be
judged as a whole, without being dissected. ‘ROCKS’ bears no meaning in
relation to these goods. Mr. Mohan would submit that the meanings it bears
i.e. a stone or minerals forming the earth’s crust, to shake or move back and
forth, and, colloquially, to be excellent or to perform very well, is suggestive at
the highest, and the consumer would need a mental leap to associate it with a
dairy product. Therefore, it is not, on the face of it, incapable of registration.
Rocks having no fixed shape, size, colour or composition, the word cannot
describe the shape or appearance of anything.
23. Indeed, neither the phrase ‘ICE CREAM’ nor the word ‘ROCKS’ by itself
would be capable of acquiring a distinguishing feature making them amenable
to registration, and indeed, one cannot dissect a mark into its parts to examine
their merits for registration. Whether in the combination used, the mark
taken as a whole becomes ineligible for registration owing to the prohibition
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under Section 9 is the issue to be examined. Having contended that the
phrase must be seen as a whole, and having disclaimed any monopoly of ‘ICE
CREAM’ the Petitioner’s submission boils down to analysing the meaning of
‘ROCKS’ and argumentation on what that particular word could mean –
ranging from a piece of earth (as a noun) to excelling in performance (as a
verb). In my view, seen in a combined fashion, it is difficult to see how the
Subject Mark is capable of distinguishing the goods of the Petitioner from the
goods of others in the market.
24. It must be remembered that heavy reliance is placed on the “Baskin
Robbins” lineage and umbrella in the pleadings but the Subject Mark sought
to be registered in order to claim a monopoly against the world at large has no
whisper of this lineage to seek distinguishment from others. The Subject Mark
speaks for itself ( res ipsa loquitur ) in how it is indistinctive to differentiate
between the goods or services of the Petitioner from the goods or services of
any other person. This is not a case of “Baskin Robbins Ice Cream Rocks” as
would be the case with, for example, ‘METRO THE DAIRY ICE CREAM’.
Merely adding ‘ROCKS’ to ‘ICE CREAM’ does not turn the needle in favour of
making the Subject Mark capable of acquiring a distinctive character enabling
grant of a monopoly to the Petitioner.
25. In this sense, Mr. Deshmukh is right in contending that merely because
no one else has used a coinage that is incapable of overcoming the bar under
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Section 9, it would not follow that the first person to use such an unregistrable
coinage can get registration. Indeed, the actual usage by the Petitioner is of
“BR ICE CREAM ROCKS” with the “Baskin Robbins” prefix, which is what
provides the distinguishment in the actual usage in the real market. However,
what is sought to be done in the applications is to take over a statutory
monopoly over a part of what is actually being used, which part, on the face of
it contains nothing distinctive about it within the meaning of Section 9(1)(a) of
the Act.
26. As regards Section 9(1)(b), the Subject Mark, even taken as a whole (in
itself, a part of the real whole actually put to use in the market) comprises
exclusively of marks or indications to designate the kind of goods (ice cream)
or the quality or other characteristics of the goods (‘ROCKS’ as in shape or
‘ROCKS’ as an adjective for quality and excellence). Therefore, on the face of
it, even under Section 9(1)(b) of the Act, there is an evident lack of anything
beyond the generic and bare description of the product or its quality. Indeed,
the contentions by the Petitioner call for an etymological comparative analysis
of ‘ROCKS’ and ‘WORKS’, particularly in the context of Section 11 in view of
the Existing Mark cited in the Impugned Order. While Section 11 is discussed
separately below, the mere addition of ‘ROCKS’ to ‘ICE CREAM’ does not
result in the ingredients of Section 9(1)(b) of the Act being overcome. The
Subject Mark (‘ICE CREAM ROCKS’) still comprises exclusively the kind of
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goods and the projected quality of the goods with no other element brought to
bear, to take it out of the prohibitive jurisdiction of Section 9(1)(b) of the Act.
The goods in question are essentially ice-cream encapsulated in forms that are
intended to suggest they are rocks. This is merely an indication of the
characteristic of shape of the goods and does not overcome Section 9(1)(b) of
the Act.
27. Generic, descriptive or laudatory terms, particularly those commonly
used in a given trade, cannot be monopolised and the protection by
registration does not extend to such elements per se unless it is affirmatively
shown that they have acquired secondary meaning or distinctiveness. Mr.
7
Deshmukh’s reliance on Pernod Ricard is appropriate in this context. The
following extract is noteworthy:
34. It is a well-established principle of trademark law that generic, descriptive, or
laudatory terms – particularly those commonly used in a given trade – cannot be
monopolized by any one proprietor. Even where such terms form part of a registered
trademark, protection does not extend to those elements per se unless it is
affirmatively shown that they have acquired secondary meaning – i.e., that the term
has come to be exclusively and distinctively associated with the plaintiff’s goods in
.
the perception of the consuming public
[Emphasis Supplied]
28. The proviso to Section 9 too does not assist the Petitioner. Whether at
the time of the application for registration, the Subject Mark had acquired a
7 Pernod Ricard India Pvt. Ltd. & Anr. v. Karanveer Singh Chhabra, 2025 INSC 981
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distinctive character as a result of use is the question to be asked. The
Affidavit of User claims acquisition of such distinctive character since June 10,
2023, relying on an online-aggregator invoice dated 10/06/2023 (Exhibit “C”).
The applications were made on January 17, 2024 – a mere seven months since
the attested commencement of use, and on the very same day as the
registration of the Affidavit of User. I have already set out that the actual use
is not of just the Subject Mark but the wider mark that includes the
differentiator Baskin Robbins. What is sought in the applications is to take a
part of it comprising generic and non-distinctive and descriptive elements and
secure a monopoly over them. When assessing the Impugned Orders, one
must examine the factual position obtaining at the time of the application, and
use of a wider mark over such a short period of time would not confer
distinctiveness over a part of the wider mark that is sought to be registered.
29. The result of such use and whether it has led to acquisition of
distinctiveness is a question of fact. Since a grievance is made about the
Affidavit of User not having been dealt with, I have examined the same. The
affidavit is simply an attempt to demonstrate the use, which is but of a seven-
month period. It is the annexures to the affidavit that show the use of the
Subject Mark. Indeed, the Petitioner claims that such use, and that too with
the ‘BR’ or ‘Baskin Robbins’ differentiator gives distinctiveness, but what is
sought to be registered is only ‘ICE CREAM ROCKS’. Indeed, the numerous
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registrations pressed into service by Mr. Mohan entail registrations that
include a differentiator umbrella element such as “Amul”, “Arun” etc.
30. Mr. Mohan would submit that the two limbs of the findings cannot
stand together, since if ‘ROCKS’ is read in the sense of a stone, the mark is not
laudatory, and if it is read in the colloquial sense, the Subject Mark is not
descriptive of the character, quality or intended purpose of dairy goods. The
Impugned Orders, not having disclosed which of the two they base the
rejection on, it cannot be said that the preliminary and minimal threshold
under Section 9 is adequate to reject the applications. This is why the material
on record has been examined in the co-extensive appellate jurisdiction and the
submissions of both parties on the merits have been heard. Having examined
the material on record and the affidavit of the Petitioner, I am afraid, for the
reasons set out above, the bar under Section 9 cannot be overcome by the
Subject Mark.
31. The contention that Google search results throw up only the Petitioner’s
product too does not turn the needle for acquisition of distinctiveness. It is
true that there is no specific metric for efflux of time for distinctiveness to have
been obtained , but there is nothing to show that the Subject Mark is a
household name or that it is associated so distinctively with the Petitioner, and
that too in the manner sought to be registered without the brand distinction of
Baskin Robbins. Thus, in my view, such grant of registration would militate
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against the wider legislative objective of not permitting a registrant to squat
over generic non-distinctive words through a registration.
32. It is correct to state that the burden of proving acquisition of
distinctiveness is to be shouldered by the Petitioner and all that is available on
record is assertions of reputation, internet search results and evidence
contained in the Affidavit of User. Accepting the date of acquisition of
distinctive character claimed in the Affidavit of User, I am afraid no
reasonable case is made out from the material on record to demonstrate that
usage has led to the public recognising and associating the Subject Mark
exclusively with the Petitioner.
Section 11(1):
Section 11 of the Act, reads thus:
11. Relative grounds for refusal of registration.—
(1) Save as provided in section 12, a trade mark shall not be registered if, because
of—
(a) its identity with an earlier trade mark and similarity of goods or
services covered by the trade mark; or
(b) its similarity to an earlier trade mark and the identity or similarity of
the goods or services covered by the trade mark,
there exists a likelihood of confusion on the part of the public, which includes the
likelihood of association with the earlier trade mark.
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[Emphasis Supplied]
33. While the prohibition on registration under Section 9 of the Act is
absolute, the restrictions under Section 11 are relative to marks registered
earlier. If the mark sought to be registered is identical to a mark already
registered and the goods and services covered by the mark are similar with
those covered by such mark, it must not be registered. Likewise, if there is a
likelihood of confusion on the part of the public because of the similarity of the
mark for which registration is sought with an earlier mark, the goods or
services covered being identical or similar, such mark must not be registered.
34. Section 11(1) has found mention on the part of the Registrar only in the
rejection that is covered by Petition 10288. Mr. Mohan would assail the
finding of likelihood of confusion being contained in a single sentence and
contend that similarity is asserted and nowhere shown, and that the order
describes no feature of the applied mark or of any cited mark and does not
identify what is said to be similar to what. Mr. Mohan would submit that the
Existing Marks being ‘ICE CREAM WORKS’, would indicate that the only
common element is ‘ICE CREAM’, which is the name of the goods themselves
and over which monopoly has been expressly disclaimed by the Petitioner.
Therefore, he would submit, the real comparison is between ‘ROCKS’ and
‘WORKS’, words different in sound, in appearance and in idea, which could
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lead to no confusion.
35. The Existing Marks are used as a trading style or signage for ice cream
parlours, while the Petitioner’s mark is used upon the product itself and that
too beneath the umbrella house mark BASKIN ROBBINS. The Impugned
Order, in any case, does not say anything about the goods, trade, customers or
channels of trade relating to the Existing Marks. Further, Mr. Mohan would
submit that the Registrar himself has permitted the four Existing Marks, and
upwards of 130 further marks incorporating the expression ‘ICE CREAM’, to
be registered, and that too in Class 29. Therefore, it is submitted that this was
a fit case to exercise the power to advertise the applications, so that the
proprietor of the Existing Marks or indeed any other proprietor of any other
mark with ‘ICE CREAM’ in it could have made their opposition known.
8
Reliance was placed on the decision of this Court in Kleo Consumer .
36. Mr. Deshmukh would submit that every application must be examined
independently on its own merits and the registration of another mark neither
creates a precedent nor confers a right upon a later applicant to demand
similar treatment. He would also point to the jurisdiction to pursue
rectification after registration to contend that registration does not constitute
an inexorable conclusive legitimacy of the monopoly conferred. However, he
8 Kleo Consumer Brands Private Limited v. Jeevan Kumar, Senior Examiner of Trade Marks
and Anr., COMMP No. 39 of 2025
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would also candidly submit that while the Petitioner may indeed have a point
to make in relation to the invocation of Section 11 of the Act by the Registrar,
that would be rendered irrelevant since the Subject Mark simply cannot be
registered by reason of Section 9 of the Act. In this context he would submit
that even if after advertisement and opposition, an opponent and the
Petitioner were to settle their differences under Section 11, it would still not be
open to the Registrar to register the Subject Mark in view of the clear
prohibition under Section 9 of the Act.
37. In my opinion, there is far greater subjectivity in the element of Section
11 of the Act and its application to the facts of the case. It is not clear how the
Registrar cites the Existing Marks and Section 11 because there is no analysis
benchmarking the Subject Mark with the Existing Marks in terms of the goods
and services covered by them respectively, and the similarity or identity
between them within the mischief of Section 11 of the Act. However, analysis
of the invocation of Section 11 and the infirmity of the Impugned Order that
deals with Section 11 is moot inasmuch as, for the reasons set out above, in my
opinion, the Subject Mark is not amenable to registration as applied for, in
view of Section 9 of the Act. Therefore, in the interest of avoiding prolixity, I
am not analysing or commenting further on this facet of the case.
Summary of Conclusions
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To summarise my findings and conclusions:
A] The Impugned Orders are indeed not articulately reasoned and
come close to being vulnerable on this count. However, the scope of this
Court’s appellate jurisdiction is co-extensive with the scope of
jurisdiction of the Registrar. It is appropriate for the Section 91 Court to
examine if the core and substance of the Registrar’s reasoning under
Section 9 passes muster, and whether based on the same material as
was available before the Registrar, the same outcome is reached with
obvious reasons. Upon such examination, if it is found that there is no
basis to permit registration under Section 9 of the Act, there is little
point in directing a remand with a direction to advertise the
applications;
B] The Registrar was not wrong in rejecting the registration of the
Subject Mark under Section 9 of the Act for lack of distinctiveness,
whether inherent or acquired. A prohibition on registration under
Section 9 has to be adjudicated on the facts of the case. No degree of
ventilation in opposition proceedings or even the complete lack of
opposition from any member of society, can overcome what is clearly
prohibited from registration under Section 9 of the Act;
C] Going by the plain English meaning of the Subject Mark, which
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too is only a part of the mark actually used, in my view, compels the
conclusion that registering the Subject Mark would result in very
generic and descriptive words being monopolised, when even
commercially, the Petitioner uses the Subject Mark along with ‘Baskin
Robbins’ or ‘BR’ to establish distinctiveness. Registering just ‘ICE
CREAM ROCKS’ would give the Petitioner a wider protection for just
the integers of the Subject Mark, which by themselves only describe the
products and their characteristics – be it of shape (ice cream embedded
in rock-like structure), or of quality (‘ROCKS’ as an indicator of
excellence in performance);
D] The Subject Mark is hit not only by Section 9(1)(a) of the Act but
also by Section 9(1)(b). Taken as a whole, it consists exclusively of
indications which serve in trade to designate the kind of goods (ice
cream) and their quality or other characteristics – whether the shape in
which the goods are presented, or the excellence conveyed by ‘ROCKS’
read as a verb. There is no further element in the Subject Mark to take it
outside that prohibition;
E] The reliance placed on about 130 registrations containing ‘ICE
CREAM’ does not assist the Petitioner. Almost every one of them
carries the distinguishing element of a brand name (such as ‘Amul’ or
‘Arun’), which is precisely the element that the Subject Mark, as applied
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for, lacks. In any event, the registration of another mark neither creates
a precedent nor confers a right upon a later applicant to demand similar
treatment;
F] The length of usage of the Subject Mark at the time of the
applications does not inspire confidence in the claim of acquired
distinctiveness. The applications have been filed within seven months of
the commencement of claimed usage. The proviso to Section 9 is not
attracted in the facts of the case, to warrant registration. The Subject
Mark cannot claim to be a household name, and no inference on the
ground of the Subject Mark having acquired distinctiveness is
warranted;
G] Since the Subject Mark trips on the hurdle of Section 9, whether it
successfully crosses the hurdle under Section 11 is irrelevant. Reliance
on Section 11 by the Registrar, and the manner in which the Registrar
has dealt with Section 11 and its ingredients, does not turn the needle
either way in the peculiar circumstances of the case. It is true that the
Impugned Order in Petition 10288 records no analysis benchmarking
the Subject Mark and the goods it covers against the Existing Marks and
the goods they cover, but that infirmity stands rendered academic by the
conclusion under Section 9. The fact that Subject Mark is not registrable
by reason of Section 9 would render the invocation of Section 11 and
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further examination of reactions from society to the perceived
objections under Section 11 irrelevant;
H] The reasoning set out above governs both Petitions. The
application in Class 35 is for services relating to the very goods covered
by the application in Class 29, and thus the Subject Mark falls foul of
Section 9 in relation to those services in the same manner and for the
same reasons. It is therefore unnecessary to examine separately the
additional findings in the Impugned Order rejecting the Class 35
Application.
38. For the aforesaid reasons, the Petitions do not inspire any appellate
intervention and they are finally disposed of without any interference with the
Impugned Orders.
39. Before parting with the matter, it would be appropriate to direct a
serious consideration on the quality of the articulation in orders passed by the
Registrar and indeed other similarly-placed authorities administering
intellectual property laws. Orders impugned in statutory appeals are often
found to have been passed without even proper formatting, paragraph-
numbering and without readable standard font sizes. It is often a challenge to
decipher the orders impugned. In statutory appeals involving cases where the
matter has turned on the basis of the conflict between private parties and one
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does not even have to hear the Registrar, whose orders must speak for
themselves. The lack of precision , at the least in the form in which the
decisions are presented, poses a serious challenge to the administration of the
appellate review. Advocates for the Registrar are requested to have these
views placed before the leadership involved in governance of the Registrar’s
offices to ensure that these shortcomings are addressed.
40. All actions required to be taken pursuant to this order shall be taken
upon receipt of a downloaded copy as available on this Court’s website.
[ SOMASEKHAR SUNDARESAN, J.]
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