Registrability of Arbitrary Marks Under Section 9(1)(a) Requires Assessment of Distinctiveness Relative to Goods, Not Novelty or Uniqueness

The Appellant, a major liquor conglomerate, filed Trade Mark Application No. 5514779 on July 3, 2022, for the mark "OFFER" in Class 33 (alcoholic beverages) on a 'proposed to be used' basis

The Respondent issued an Examination Report raising a standard objection under Section 9(1)(a) of the Trade Marks Act, 1999, claiming the mark was a common name or non-distinctive figure

Despite the Appellant’s detailed replies and citations of previously registered composite marks containing "OFFER," the Respondent issued an order on October 30, 2025, refusing registration

The Respondent's reasoning was that the word "OFFER" lacks "uniqueness" as it is commonly used to demand discounts in general parlance

1. Whether the Respondent’s order was legally tenable despite being non-speaking and failing to consider the Appellant’s submissions and precedents

2. Whether "uniqueness" is a valid statutory parameter for refusing registration under Section 9(1)(a) of the Trade Marks Act, 1999

3. Whether the mark "OFFER" is inherently distinctive and capable of distinguishing the goods (alcoholic beverages) of the Appellant from others

Section 9(1)(a) of the Trade Marks Act, 1999, which prohibits registration of marks "devoid of any distinctive character," defined as being "not capable of distinguishing" goods/services

A finding of non-distinctiveness is difficult to sustain if no similar mark is in use (Abu Dhabi Global Market v. Registrar of Trademarks)

Principles used to differentiate between generic, descriptive, suggestive, and arbitrary marks, emphasizing that distinctiveness must be judged in relation to the specific goods (Oswaal Books and Learnings Pvt. Ltd. v. Registrar of Trade Marks and Teleecare Network India Pvt. Ltd. v. Asus Technology Pvt. Ltd.)

The Court found the Respondent’s order to be "wholly non-speaking, unreasoned and cryptic," as it ignored 31 registered marks cited by the Appellant and failed to address legal precedents

Crucially, the Court determined the Respondent applied a "wrong test" by using "uniqueness" as a criterion for refusal, noting that Section 9(1)(a) only requires "distinctive character"

The Court reasoned that a mark's distinctiveness must be assessed relative to the category of goods; while "OFFER" is a common English word, it may be arbitrary in the context of alcoholic beverages as it does not directly describe the product's character or quality

The Court rejected the Respondent’s equate of "offer" with "discount," noting they are not synonymous and that "offer" is rarely used as a standalone promotional term

The High Court quashed and set aside the impugned order dated October 30, 2025. The Respondent was directed to reconsider Application No. 5514779 within four months, specifically testing the distinctiveness of "OFFER" relative to alcoholic beverages in Class 33 and providing the Appellant an opportunity for a hearing