A mark combining generic and descriptive terms is unregistrable absent proven acquired distinctiveness.

Graviss Foods Private Limited applied on 17 January 2024 for registration of the word mark “ICE CREAM ROCKS”, claiming use from 10 June 2023. Application No. 6263527 was filed in Class 29 for, inter alia, milk and milk products and dairy-based desserts, while Application No. 6263529 was filed in Class 35 for marketing, retailing, wholesaling and distribution services relating to those goods.

The mark was commercially used as part of the wider expression “BR ICE CREAM ROCKS” or with the “Baskin Robbins” house mark.

The Registrar’s Examination Reports raised objections under Sections 9(1)(a) and 9(1)(b) of the Trade Marks Act, 1999. In relation to the Class 29 application, an additional objection was raised under Section 11(1), based on four registrations for “ICE CREAM WORKS” standing in the name of Prince Creamery Private Limited.

The Registrar rejected both applications by separate orders dated 23 December 2025, holding that “ICE CREAM ROCKS” was descriptive, laudatory, non-distinctive and liable to cause confusion with the cited marks. The applications were rejected without being advertised. Graviss Foods challenged the orders under Section 91 of the Act.

Whether the Registrar’s orders rejecting the applications under Sections 9(1)(a) and 9(1)(b) were legally sustainable, notwithstanding their brief and inadequately articulated reasoning?

Whether the mark “ICE CREAM ROCKS”, considered as a whole, was inherently distinctive or had acquired distinctiveness through use before the application date?

Whether the Registrar was justified in invoking Section 11(1) on the basis of the earlier “ICE CREAM WORKS” registrations?

Whether the applications ought to have been advertised to permit opposition before being rejected?

Section 9(1)(a) of the Trade Marks Act, 1999 prohibits registration of marks devoid of distinctive character, while Section 9(1)(b) prohibits marks consisting exclusively of indications designating the kind, quality, intended purpose or other characteristics of goods or services; the proviso permits registration where distinctiveness has been acquired through use before the application date.

Section 11(1) bars registration where similarity between the applied-for mark and an earlier mark, together with identity or similarity of goods or services, creates a likelihood of confusion or association.

The Court applied the principle that generic, descriptive and laudatory expressions cannot ordinarily be monopolised unless they have acquired secondary meaning, relying on Pernod Ricard India Pvt. Ltd. v. Karanveer Singh Chhabra, 2025 INSC 981.

It also recognised that reasons are an essential component of natural justice and that conclusions cannot be conflated with reasons, referring to Gurdial Singh Fijji v. State of Punjab, (1979) 2 SCC 368, Kranti Associates Pvt. Ltd. v. Masood Ahmed Khan, (2010) 9 SCC 496, Huhtamaki Oyj v. Controller of Patents, 2023 (96) PTC 198, and Bidisha Ghoshal v. Registrar of Trade Marks.

The Court further held that its appellate jurisdiction under Section 91 was co-extensive with that of the Registrar.

The Court accepted that the Registrar’s orders were inadequately reasoned and came close to being vulnerable for want of proper articulation, particularly because they did not sufficiently explain the factual basis for the conclusions under Sections 9 and 11.

However, exercising its co-extensive appellate jurisdiction, the Court examined the merits on the existing record rather than remanding the matters.

It held that “ICE CREAM ROCKS”, viewed as a whole, remained a combination of generic or descriptive elements: “ICE CREAM” identified the kind of goods, while “ROCKS” could indicate the rock-like shape or convey quality or excellence.

The mark therefore lacked inherent distinctiveness under Sections 9(1)(a) and 9(1)(b).

The Petitioner’s actual use of the wider mark “BR ICE CREAM ROCKS” did not establish distinctiveness in the standalone phrase sought to be registered, particularly as the claimed use had commenced only about seven months before the applications and the evidence did not show exclusive public association with “ICE CREAM ROCKS” alone.

The Court also held that the existence of other registrations containing “ICE CREAM” did not create a right to registration, especially since those marks generally contained additional distinguishing brand elements.

Although the Registrar’s Section 11 analysis was deficient because it did not adequately compare the marks, goods, services, customers or trade channels, that issue became academic because the mark was independently barred under Section 9.

Consequently, advertisement and opposition proceedings could not cure the absolute statutory prohibition under Section 9.

It held that “ICE CREAM ROCKS” was neither inherently distinctive nor shown to have acquired distinctiveness before the application date, and was prohibited from registration under Sections 9(1)(a) and 9(1)(b) of the Trade Marks Act, 1999.

The Section 11 objection was found inadequately analysed but was rendered immaterial by the Section 9 bar; accordingly, no direction was issued to advertise the applications.

The Court also directed that its observations concerning the poor quality and inadequate formatting of orders passed by the Trade Marks Registry be placed before the relevant administrative leadership for corrective action.