Renee Cosmetics Private Limited, vs Ms. Rupali Sharma & Anr.
- Court
- Delhi High Court
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment reserved on: 20.05.2026
Judgment delivered on: 05.06.2026
+ C.O. (COMM.IPD-TM) 107/2025 & I.A. 11431/2025
RENEE COSMETICS PRIVATE LIMITED .....Petitioner
versus
MS. RUPALI SHARMA & ANR. .....Respondents
Advocates who appeared in this case:
For the Petitioners : Mr. Aditya Gupta and Ms. Aakriti Bansal, Advocates.
For the Respondents : Mr. Rajal Rai Dua, Ms. Divyangana, Mr. Rohan
Sharma and Mr. Nishant Chopra, Advocates.
Ms. Arunima Dwivedi, CGSC with Ms. Himanshi
Singh and Ms. Monalisha Pradhan, Advocates for R-2.
+ CS(COMM) 888/2025, I.A. 20783/2025 & I.A. 7448/2026
RENEE COSMETICS PRIVATE LIMITED .....Plaintiff
versus
MS. RUPALI SHARMA & ANR. .....Defendants
Advocates who appeared in this case:
For the Plaintiff : Mr. Aditya Gupta and Ms. Aakriti Bansal, Advocates.
For the Defendants : Mr. Rajal Rai Dua, Ms. Divyangana, Mr. Rohan
Sharma and Mr. Nishant Chopra, Advocates.
Ms. Arunima Dwivedi, CGSC with Ms. Himanshi
Singh and Ms. Monalisha Pradhan, Advocates for R-2
Signature Not Verified
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By:YASHRAJ
Signing Date:05.06.2026
17:19:39
CO(COMM.IPD-TM) 107/2025 & CS(COMM) 888/2025 Page 1 of 25
CORAM:
HON’BLE MR. JUSTICE TUSHAR RAO GEDELA
J U D G M E N T
TUSHAR RAO GEDELA, J.
C.O. (COMM.IPD-TM) 107/2025 & I.A. 11431/2025
1. Present petition has been filed under Sections 47 and 57 of the Trade
Marks Act, 1999 (hereinafter referred to as “the Act” ) seeking
removal/cancellation of the entry in Trade Marks Register with respect to the
word mark ‘GLASS SKIN’ bearing trademark registration no.4164051 in Class-
03 for “Non-medicated cosmetics and toiletry preparations; Non-medicated
dentifrices; Perfumery, essential oils; Bleaching preparations and other
substances for laundry use; Cleaning, polishing, scouring and abrasive
preparations” , registered in the name of respondent no.1.
BRIEF BACKGROUND FACTS:
2. The petitioner company namely, Renee Cosmetics Private Limited was
incorporated on 18.10.2019, and had adopted and launched its brand “RENEE
Cosmetics”. It is stated that the respondent no.1 had filed a Trade Mark
Application bearing no.4164051 seeking registration of the mark ‘GLASS
SKIN’ in Class-03 on 02.05.2019 on a “proposed to be used basis”.
3. The respondent no.1 was granted a registration certificate bearing
no.2825917 in respect of mark ‘GLASS SKIN’ in Class-03 on 02.05.2019. On
28.01.2025, the petitioner filed an application for registration of its mark
‘RENEE GLASS SKIN SPF 50’ in Class-03.
4. On 20.03.2025, the respondent no.1 issued a legal notice to the petitioner
alleging infringement of its mark ‘GLASS SKIN’. In response thereto, the
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petitioner vide the communication dated 07.04.2025 denied all the allegations of
infringement of the trademark of respondent no.1, and simultaneously, contested
the same by contending that the term ‘GLASS SKIN’ is descriptive, and
therefore, non registrable.
5. On 03.10.2025, the petitioner claims to have received a communication
from the e-commerce website namely Amazon informing the petitioner of the
removal of its listing from the platform on account of infringement of respondent
no.1’s registration in the mark ‘GLASS SKIN’.
6. Aggrieved by the above, the present petition for rectification has been
filed.
CONTENTIONS OF THE PETITIONER:
7. Appearing for the petitioner, Mr. Aditya Gupta, learned counsel contended
that the term ‘GLASS SKIN’ is generic and descriptive of the goods, and
therefore, the said term cannot be monopolized by any party, and thus, cannot
function as a trademark. He would contend that respondent no.1 is a trademark
squatter, and seeks to capitalize on a trend in the cosmetics industry by seeking
exclusive right on such non-registrable marks. He would also contend that the
registration of the said mark is completely unsustainable in view of provisions of
Sections 9(1)(a), 9(1)(b) and Section 30(2)(a) of the Act.
8. He would contend that the term ‘GLASS SKIN’ ordinarily refers to a
particular type of look of the skin and originated as a popular trend in the Korean
Beauty Industry sometime in the year 2017. He stated that the term ‘GLASS
SKIN’ is now common to the entire world. In order to substantiate the
worldwide trend, and the usage of the said term as a generic and descriptive
word, learned counsel drew attention to documents placed on record of
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prominent players in the beauty industry who have used the term as descriptive
of the goods sold by them. As an example, he referred to manufacturers like
Lakme, Nivea, Garnier, Vaseline, L’oreal, Body Shop, etc., to name a few.
9. He would contend that the manufacturers of the products claim that on use
of such products, the skin of the user would appear luminous and clear like glass
with a lustrous tone. Thus, according to him, the end result of a usage of a
product is clearly descriptive of the nature of the goods, and thus, generic and
incapable of registration.
10. Learned counsel also contended that even the respondent no.1 in its own
promotional material including its own website and product description admitted
to the descriptive meaning of the term ‘Glass Skin’. He would contend that the
description of the term ‘GLASS SKIN’ as stated by the respondent no.1 in its
blogs and website is a common feature appearing in the articles or blogs, etc., all
over the world of most of the manufacturers of similar/identical products.
11. He next contended that the respondent no.1 has not been using the term
‘GLASS SKIN’ as a source identifier as is clear from a description on its own
website for the product. He also stated that, since the respondent no.1 has failed
to show substantial sales and promotion of the mark ‘GLASS SKIN’ in the last
many years, there is no proof of the mark having achieved a status of secondary
meaning so as to confer upon it the stamp of registrability even if it is a
descriptive term. In that context, he relies upon the judgment of the Supreme
Court in Pernod Ricard India Private Limited & Anr. vs. Karanveer Singh
Chhabra, (2025) SCC OnLine SC 1701, and the judgment of the learned
Division Bench of this Court in Marico Limited vs. Agro Tech Foods Limited,
(2010) SCC OnLine Del 3806.
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12. Mr. Gupta also stoutly argued that the Trade Mark Application submitted
by the respondent no.1 seeking registration of the mark ‘GLASS SKIN’ in Class-
03 was on a “proposed to be used basis”. However, the respondent no.1 has not
been able to demonstrate or place on record any proof to show genuine
commercial use or consumer recognition or even distinctiveness associated with
the mark. Despite this, the respondent no.1 seeks monopoly over a descriptive
industry term.
13. Learned counsel would contend that the term ‘GLASS SKIN’ is neither a
coined word nor a phrase, and consists of two commonly used English words,
which on account of their common usage, do not signify the source of any one
person’s product. Thus, the registration of the said word mark is contrary to
Section 9(1)(a) of the Act.
14. He forcefully contended that the term ‘GLASS SKIN’, which is claimed to
have been adopted by the respondent no.1 in the year 2019, is also not bona fide
for the reason that the said term was already publicly known, and available, not
only in Korea, but also in India. In support of such contention, he referred to the
Article published on 24.09.2017 in The Hindustan Times placed on record.
Similarly, he alluded to many other Articles on ‘GLASS SKIN’ and the beauty
trend started in Korea of the year 2017, and the subsequent years to contend that
all over the world including Korea, the term ‘GLASS SKIN’ only describes the
nature of skin or the condition of skin, which would be achieved by following
the certain procedure including by using products manufactured by companies
all over the world. Thus, he would forcefully contend that the terms ‘GLASS
SKIN’ being descriptive of the goods manufactured or the end result of the use
of such goods is merely descriptive, and cannot become registrable.
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15. On the interpretation, learned counsel submitted that the term ‘GLASS
SKIN’ is descriptive, and not suggestive, and he relied upon McCarthy On
Trademarks and Unfair Competition to contend that the author prescribed
determination of the distinction between “suggestive” and “descriptive” terms by
relying on the manner and extent to which the other sellers in the industries have
used for designation of such similar goods and services. He also relied upon para
11.16 of the said book, which describes a descriptive mark as one which conveys
the intended purpose, function or use of the goods. He argued that the term
‘GLASS SKIN’ is the result of the function and use of the goods manufactured
or atleast of its intended purpose, and therefore, clearly falls within the term
“descriptive mark”. Thus, the registration of ‘GLASS SKIN’ in favour of
respondent no.l is erroneous, and ought to be cancelled in a direction for its
removal from the Register of Trade Marks be passed.
CONTENTIONS OF THE RESPONDENT NO.1:
16. Per Contra , Mr. Rajal Rai Dua, learned counsel appearing for respondent
no.1 submitted that while the petitioner was launched in the year 2019,
respondent no.1 had already applied for registration of its trademark ‘GLASS
SKIN’ in the year 2019 on a “proposed to be used basis”. He would submit that
though the application was indeed filed on a “proposed to be used basis”,
however, the respondent no.1 has in its possession invoices from the year 2019
onwards, and has continued to use the said mark on the products manufactured
by it till date. He submitted that on 10.05.2019, the mark ‘GLASS SKIN’ was
registered.
17. Learned counsel submitted that since the launch and registration of the
mark ‘GLASS SKIN’ in the year 2019, the respondent no.1 has been
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continuously manufacturing and offering for sale the products bearing the mark
‘GLASS SKIN’, however, the petitioner while having full knowledge of the
same did not challenge such registration. He stated that it was only when the
petitioner was proposing to register its mark by incorporating the mark ‘GLASS
SKIN’, that the respondent no.1 filed its opposition, and as a knee-jerk reaction,
the petitioner has filed the present petition after about six (6) years of the
registration of the respondent’s mark, malafidely .
18. Learned counsel forcefully contended that the only issue which needs
consideration by this Court is as to whether the mark ‘GLASS SKIN’ is
“descriptive” or “suggestive”. In the opinion of the learned counsel, the mark
‘GLASS SKIN’ is suggestive, and not descriptive. According to him, the term
‘GLASS SKIN’ raises a conceptual thought rather than the end result. In other
words, according to him, the term ‘GLASS SKIN’ would require the consumer
to apply his mind as to for what purpose the said product is intended to be used,
and not what it would achieve per se . Thus, all such terms where a consumer is
required to apply his mind or imagination would fall within the purview of a
mark which is “suggestive” and not “descriptive”. Therefore, according to the
learned counsel, these marks would be ‘distinctive’, and not “descriptive”, and
clearly render them registrable.
19. Applying the aforesaid submission to the product in question, and the
trademark ‘GLASS SKIN’, he would contend that the said term is only
“suggestive”, and does not fall within the parameters described in para 11.16 of
McCarthy Book on Trademarks and Unfair Competition. He would clarify that
the mark ‘GLASS SKIN’ does not describe any ingredient, formulation, method
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or essential characteristics, and thus, would be “suggestive”, and inherently
‘distinctive’.
20. Learned counsel would suggest that it would not lie in the mouth of the
petitioner to challenge or question the mark ‘GLASS SKIN’ of the respondent
no.1 inasmuch as the petitioner itself has applied for registration of the mark
“RENEE GLASS SKIN SPF 50”, and thus, cannot contend that the term
‘GLASS SKIN’ is “descriptive”. He would in fact, contend that the mark for
which registration is sought by the petitioner itself incorporates and subsumes
the registered mark ‘GLASS SKIN’ of the respondent no.1, and thus, the
petitioner cannot be permitted to approbate or reprobate.
21. So far as the reliance of the petitioner on Fashion Magazines is concerned,
learned counsel would contend that those are articles and opinions of the persons
in trade, and are not based on the legal understanding on what a “suggestive”
mark would convey. He would contend that once it is demonstrated that the said
mark is a “suggestive” term, then it enjoys a protection which is only second to
the protection enjoyed by “arbitrary” or “invented” words, and thus, at a much
higher degree or pedestal in the hierarchy. Thus, according to him, opinions or
articles of persons in the fashion industry would clearly not be a benchmark to
decide whether the mark is “suggestive” or “descriptive”.
22. He relies upon the judgment of the Supreme Court in Civil Appeal
Nos.6314-15 of 2001 titled T.V. Venugopal vs. Ushodaya Enterprises Ltd. &
Anr., decided on 03.03.2011, and the judgments of the Coordinate Bench of this
Court in C.A.(COMM.IPD-TM) 133/2022 titled Descriptive Health Solutions
Private Limited vs. Registrar of Trade Marks, dated 08.07.2022, and
C.A.(COMM.IPD-TM) 88/2022 titled Shivani Vig Kapoor and Rushi Tiwari
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Makker vs. Registrar of Trademarks, dated 12.12.2023. He also relies upon the
judgments of the U.S. Courts of Appeals in Xtreme Lashes, LLC vs. Xtended
Beauty, Inc bearing No.08-20578 and OBX-Stock, Inc vs. Bicast, Inc bearing
nos.06-1769 and 06-1887.
23. In rejoinder, Mr. Gupta, learned counsel for the petitioner reiterated and
reaffirmed the earlier arguments.
ANALYSIS AND CONCLUSIONS:
24. This Court has heard the arguments of Mr. Aditya Gupta, learned counsel
for the petitioner, and Mr. Rajal Rai Dua, learned counsel for the respondent, and
examined the documents available on record.
25. As the controversy involved in the present case, revolves around the
aspect as to whether the mark ‘GLASS SKIN’ registered in favour of respondent
no.1 in Class-03 in relation to manufacture of goods falling within Class-03, is
“descriptive” or “suggestive”, it would be pertinent to consider the treatises like
McCarthy on Trademarks and Unfair Competition, and the relevant law as laid
down by various Courts in India.
26. At the outset, it may be noted that in the hierarchy of marks which require
highest protection in the descending order, invariably the “arbitrary/invented”
marks are at the top, followed by “suggestive” marks, and decreasing in the level
of protection at the third stage would be “descriptive” marks, and at the very end
with little or no protection would be “generic” marks. In the said context, it
would be worthwhile to extract relevant paragraphs from McCarthy’s, which are
as under:
“11.16 What is a “descriptive mark”?
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Types of Description. A "descriptive" term is one that directly and
immediately conveys some knowledge of the characteristics of a product or
service.
A mark is “descriptive” if it is descriptive of:
● the intended purpose, function or use of the goods.
● the size of the goods.
● the provider of the goods or services.
● the class of users of the goods or services. Thus, the term
PHILADELPHIA CARD was found to be descriptive of credit card
services for cards depicting Philadelphia targeting customers in
Philadelphia.
● a desirable characteristics of the goods or services. Thus, the term
OATNUT for bread immediately tells that the bread contains oats and
nuts. The word ERGONOMIC immediately informs potential buyers of
a ceiling fan that the fan is designed to interact efficiently and safely
with the user.
● a desirable ingredient in the goods.
● the sound made by an important feature of the goods.
● the nature of the goods or services. Thus, the term E-FASHION
immediately and directly says that the Internet service provides
information about fashions.
● the end effect upon the user.
● a common serving size or unit of measurement in which the product is
sold.
Descriptive of Some of the Goods or Services or Some of Their
Aspects. That the term asserted to be non-descriptive may not be descriptive of
all of the goods or services with which it is used does not mean that it is not
“merely descriptive.” A term is “descriptive” if it directly describes any of the
goods or services with which it is used. Similarly, a term that describes some,
but not all, of the aspects of the goods or services is still “descriptive.” To be
found “descriptive,” a term need only describe a single, significant quality or
feature of the goods or services.”
Retail Sales Services. A term can be descriptive of retail sales services
if it is the generic name of a product sold at that outlet. For example, a mark
for restaurant services which comprises the generic name of a food that is the
speciality of the house can be merely descriptive of restau-rant services, be it in
English or in a foreign language. LE CROISSANT SHOP was held descriptive
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of restaurant services, since prospective customers would immediately know
that croissants could be purchased. Similarly, the word PENCILS was held to
be descriptive of “retail stationery and office supply services” because it
describes an item that is sold in stationery and office supply stores even though
it is not the main item sold in such stores.
Evaluate the Term in Relation to These Goods and Services.
Descriptiveness cannot be determined as an abstraction. The possible
descriptiveness of a designation is highly dependent on the goods or services in
connection with which the designation is used. A term can be descriptive of one
product and nondescriptive of another. As the Trademark Board observed:
§11:69 Tests for determining descriptive- suggestive distinction-Use by
competitors, the media and dictionaries
Descriptive Use by the Proponent and Others. A use-ful way to test whether a
designation is descriptive or suggestive is to determine the extent to which
other sellers have used the designation on similar goods and services. If others
are in fact using the term to describe their goods or services, an inference of
descriptiveness can be drawn. For example, in finding QUIK-PRINT to be
descriptive of copying and printing services, the Trademark Board said that:
"[T]he widespread use of the term “QUIK-PRINT” throughout the United
States by others…….tends to establish that the term has lost whatever
suggestiveness it may have possessed and has taken on and projects a
descriptive significance of quick or fast printing services to the general public.
Proliferation of use of a term can often lead to a diminution of its ability to
identify and distinguish the services or goods of any one user thereof.”
Extensive descriptive use indicates that both sellers and buyers view the
designation as descriptive:
In determining whether a word or syllable has a descriptive or
suggestive significance as applied to merchandise it is proper to take
notice of the extent to which it has been used in trademarks by others on
such merchandise. If it has been frequently so used, the inference is
warranted that it is not purely arbitrary; that it would be likely to be
understood by purchasers as identifying or describing the merchandise
itself, rather than the source thereof and hence as having little or no
trademark significance.”
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On the other hand, if both plaintiff and defendant use the same term but in
connection with two very different kinds of goods or services, this tends to
negate the claim that the term is merely descriptive.
It is also relevant that the proponent of trademark status itself used the
term in a descriptive sense. After the designa-tion has been found descriptive,
evidence of extensive third party use can prevent a finding of secondary
meaning.
Third Party Registrations. Third-party registrations are probative
evidence of the meaning of a word, in the same way that a dictionary can be
used. Similarly, third-party registrations of composite marks including an
allegedly descriptive term can be used to help prove the descriptive nature of
that term. For example, introduction of many third-party registrations for
electronic products of marks with a -TRONICS or -TRONIX suffix could be
evidence that those third parties and the public consider such a suffix descrip-
tive, such that there would be no likely confusion between DAKTRONICS and
TEKTRONIX.
However, third party mark registrations may in some cases support the
argument that a designation is not descriptive. The fact that the U.S.P.T.O.
registered a number of marks containing the same designation without
requiring proof of secondary meaning is some evidence that the PTO considers
the designation not descriptive.
Trade Publications. Articles from trade publications evidencing use by
others of the term in a descriptive manner are competent to prove
descriptiveness and are not hearsay because they are not introduced to prove
the truth of the statements, but only that they were made.
Dictionaries. The Trademark Board will take judicial no-tice of a
dictionary definition to help determine if a term has an accepted descriptive
meaning." However, the fact that a certain word does not appear in any
dictionary is not determinative if other evidence shows that the word clearly
conveys a descriptive meaning.
But dictionary definitions can help shed light on whether a designation is
likely to be perceived as directly descriptive of the goods or services. As the
Seventh Circuit remarked: “[T]here is no prohibition on using dictionaries as
a piece of the puzzle.”
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27. So far as the present petition is concerned, the contention of the petitioner
was predicated on the meaning ascribed to the “descriptive” marks to the extent
of the intended purpose, function or use of the goods and the end effect upon the
user leaving the other features as described by McCarthy. The petitioner had
contended that the word ‘GLASS SKIN’ clearly is “descriptive”, since it not
only describes the intended purpose, the function or the use of the goods, but
also the end effect upon the user. This submission was sought to be substantiated
and corroborated by placing reliance on various articles in the fashion industry
commencing from the year 2017 till date as also by relying upon the manner in
which the manufacturers and the trade circles conceive and use the term ‘GLASS
SKIN’.
28. Various articles commencing from the articles published in the Hindustan
Times on 24.09.2017, have given vivid details of what would constitute and
convey by the term ‘GLASS SKIN’. As an example, the description used in the
article published in the Hindustan Times had mentioned by reference to Korea
that “ Glass Skin is this idea of transparent and translucent skin ”. The article also
referred to certain manufacturers who alluded to the trend stating that by
“ layering different moisturizing products onto the skin will result in deep sheen
synonymous with ‘glass skin ’”.
29. Similarly, the petitioner has also placed on record the website of the
respondent no.1 of the year 2019, which itself quotes “ Glass Skin is the most
popular Korean beauty technique to get illuminating, flawless and transparent
skin like glass ”. The website also demonstrates that the respondent no.1 itself has
used the term ‘GLASS SKIN’ alongwith the name of its products in a
“descriptive” manner. Similarly, there are other articles of many known
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manufacturers like Nykaa, Garnier, Nivea, Lakme, L’Oreal, Mamaearth all of
which use the term ‘GLASS SKIN’ in a “descriptive” manner to indicate to the
general public that the usage of the products manufactured would result in a
‘skin like glass’. Some of such articles including the website of the petitioner is
reproduced hereunder:
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30. The aforesaid analysis and observations are reiterated and reaffirmed in
para 11.69 of McCarthy’s, which is reproduced in para 25 above, and are not
repeated here for the sake of brevity.
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31. The tests as envisaged by McCarthy to determine the difference between
“descriptive” and “suggestive” marks are fully applicable to the present case
when viewed in terms of the aforesaid extracts of the description and usage of
the products. It can be discerned from McCarthy that the manner in which the
goods and services are described by other stakeholders in the same trade, shall be
taken to be a relevant fact to prove descriptiveness.
32. Apart from the fact that other major stakeholders are using the term
GLASS SKIN in a descriptive manner, what is essential to consider is that the
respondent no.1 itself in its own website has used the said term to describe its
qualities, intended purpose and the end result. Thus, on both the accounts i.e. in
terms of para 11.16 and para 11.69 of McCarthy’s apart from the manner in
which the said term is being used by the stakeholders in the same business or
trade that this Court is of the opinion that the mark is “descriptive”.
33. Learned counsel for the respondent no.1 in contradistinction had
emphasized that the mark ‘GLASS SKIN’ is “suggestive” and not “descriptive”.
His contention was that the mark ‘GLASS SKIN’ raises a conceptual thought
rather than disclosing the function or use of the goods or even the end effect
upon the user. According to learned counsel, the mark does not describe any
ingredient, any formulation, any method or essential characteristic, and as such
the mark is and would remain inherently distinctive. He had contended that the
mark would evoke an aspirational quality, needing consumer imagination which
are recognized hallmarks of a “suggestive” mark.
34. This Court is unable to appreciate the aforesaid argument. This is for the
reason that as observed above, the mark ‘GLASS SKIN’ read in conjunction
with all the aforesaid articles and the manner in which the other manufacturers
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and stakeholders in the fashion industry aligns with the description provided in
para 11.16 as also para 11.69 of the McCarthy.
35. Learned counsel for the respondent no.1 had articulated his contentions by
referring to what he termed as “Imaginary Test”, to submit that a consumer when
confronted with the mark ‘GLASS SKIN’ would have to apply his mind or
imagine as to for what purpose the product containing the mark ‘GLASS SKIN’
intended to achieve. Merely by reading the said mark, in the opinion of the
learned counsel, the consumer would not be able to conclude the intended
purpose or the end result of the product.
36. No doubt that the aforesaid argument appears to be attractive at the first
blush, however, is unpersuasive and unmerited. This is for the reason that the
products which are manufactured by both the parties and offered for sale fall
within Class-03, and are cosmetics relatable to Skin Care, etc. It would be absurd
to propound that the term ‘GLASS SKIN’ for a product which is a cosmetic for
the purpose of skin care, would not be a “descriptive” term or would convey
anything other than the intended purpose or the end result. In such a factual
situation, the question of “imagination test” does not arise at all. If a consumer is
confronted with the product related to cosmetics, which uses the terms ‘GLASS
SKIN’, and also having regard to the fact that it is a worldwide fashion trend, in
the opinion of this Court, it would be quite obvious as to what is the intended
purpose and end result that the product would achieve. Thus, this contention too,
is unmerited.
37. Another relevant aspect which may need consideration of this Court is the
fact that nothing has been placed on record by the respondent no.1 to
demonstrate or establish that the mark ‘GLASS SKIN’ has achieved secondary
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significance so as to enable a “descriptive” word to be registrable. In the lack of
such documentary evidence, it is well nigh impossible for this Court to uphold
the registration of the mark ‘GLASS SKIN’ in favour of the respondent no.1.
38. Learned counsel had also contended that the petitioner having himself
applied for registration of the mark “RENEE GLASS SKIN SPF 50” cannot term
the mark ‘GLASS SKIN’ of the respondent no.1 as “descriptive” since it would
amount to approbation and reprobation, which is impermissible in law. This
contention too cannot be acceded to. This is for the reason that the petitioner,
like other stakeholders, is using the term ‘GLASS SKIN’, apparently, not as a
‘distinctive’ mark, but only as a part of the entire word mark “RENEE GLASS
SKIN SPF 50”. Though, it is correct that the petitioner too cannot urge that the
term ‘GLASS SKIN’ is either arbitrary or a coined word nor can it contend that
the said term is “suggestive” either. Thus, the use of the word ‘GLASS SKIN’
alongwith the entire word mark may be permissible without the term “GLASS
SKIN” having special protection.
39. Petitioner relied upon Section 9 of the Act, which are absolute grounds for
refusal of registration for the relief sought in the present petition. In the opinion
of this Court sub-section (1)(b) of Section 9 of the Act proscribes registration of
a mark 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 services.
Out of the aforesaid particulars, this case concerns itself with the ‘kind’ and
‘intended purpose’ of the goods manufactured by both the parties.
40. Having regard to the aforesaid analysis, it is crystal clear that not only
does the mark ‘GLASS SKIN’ clearly describe the kind of goods, but also the
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CO(COMM.IPD-TM) 107/2025 & CS(COMM) 888/2025 Page 23 of 25
intended purpose which would be achieved by use of the goods manufactured
under the said mark. Thus, the proscription under Section 9(1)(b) of Act is
clearly attracted.
41. The present petition was filed under Sections 47 and 57 of the Act. In the
opinion of this Court, the rigors provided in Section 47(1) and (2) does not arise
in the present case as the respondent no.1 has placed on record certain invoices
in relation to the products manufactured and sold under the mark ‘GLASS
SKIN’ for certain years. This leaves the relief sought to be directed under the
provisions of Section 57 of the Act, particularly, sub-section (2) of Section 57 of
the Act. In the opinion of this Court, the entry made in the Register of Trade
Marks of the mark ‘GLASS SKIN’ of the respondent no.1 is without sufficient
cause, and is an entry wrongly remaining on the Register.
42. Since, the aforesaid analysis are purely fact based, and on the basis of the
material on record, the ratios laid down by the judgments relied upon by the
parties, in the context of legal interpretations may not be required to be gone
into, and are therefore, not considered.
43. In view of the above, the petition is allowed and the respondent
no.2/Registrar of Trade Marks is directed to cancel the registration of the mark
‘GLASS SKIN’ granted in favour of respondent no.1 vide certificate no.2825917
dated 02.05.2019 under Class-03. The Registrar of Trade Marks is further
directed to remove/rectify the registration of the mark ‘GLASS SKIN’ granted in
favour of respondent no.1 vide certificate no. 2825917 dated 02.05.2019 under
Class-03 from the Register of Trade Marks within four weeks from date of
receipt of this Order.
44. No order as to costs.
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Digitally Signed
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45. The petition alongwith pending applications, if any, stand disposed of in
above terms.
CS(COMM) 888/2025, I.A. 20783/2025 & I.A. 7448/2026
46. In view of the judgment passed by this Court in C.O.(COMM.IPD-TM)
107/2025 titled “Renee Cosmetics Private Limited vs. Ms. Rupali Sharma &
Anr.” list the matter before the Joint Registrar on the date already fixed i.e.
13.10.2026.
TUSHAR RAO GEDELA
(JUDGE)
yrj/rl
JUNE 05, 2026
Signature Not Verified
Digitally Signed
By:YASHRAJ
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