Delhi High Court Sets Aside Trademark Refusal: Composite Marks Containing Geographical Names Are Not Automatically Barred from Registration

Aadrikaa Legal Services (ALS)- Law I Litigation I Arbitration

Date: 09.09.2026

Delhi High Court Sets Aside Trademark Refusal: Composite Marks Containing Geographical Names Are Not Automatically Barred from Registration

The Delhi High Court in Abu Dhabi Global Market v. Registrar of Trade Marks, Delhi delivered an important ruling on the registrability of composite trademarks containing geographical names, while also strongly criticising the manner in which the Trade Marks Registry had dealt with the applicant’s response to the examination objections.

Justice C. Hari Shankar set aside the order of the Assistant Registrar refusing registration of the appellant’s device mark and remanded the application to the Trade Marks Registry for advertisement and further proceedings in accordance with law.

The judgment is especially significant for three propositions: a trademark need not be “coined” or “inventive” to qualify for registration; evidence of prior use is not necessary to establish distinctiveness where an application is filed on a “proposed to be used” basis; and Section 9(1)(b) does not automatically prohibit registration of a composite mark merely because one element of the mark contains a geographical name.

Background of the Case

Abu Dhabi Global Market had filed Application No. 3184380 seeking registration of a composite device mark incorporating its logo together with the words “ABU DHABI GLOBAL MARKET.”

The Assistant Registrar of Trade Marks rejected the application by order dated 9 December 2022.

The refusal was broadly based on three objections:

1. the mark was allegedly neither “coined” nor “invented”;
2. the applicant had not established distinctiveness by filing an affidavit evidencing use of the mark; and
3. “Abu Dhabi” was a geographical name and the mark as a whole was allegedly non-distinctive and incapable of monopolisation.

The appellant challenged these findings before the Delhi High Court.

Appellant’s Case

Counsel for Abu Dhabi Global Market argued that none of the grounds relied upon by the Trade Marks Registry could survive either on facts or in law.

One important submission was that the appellant’s logo already stood registered in its favour. According to the appellant, this demonstrated that the Registry had itself recognised the distinctiveness of the device element.

The appellant argued that the mark could not suddenly lose its distinctiveness merely because the words “ABU DHABI GLOBAL MARKET” were placed beneath the logo.

The appellant also explained that the trading name “Abu Dhabi Global Market” was not an arbitrary descriptive expression. It had been adopted under Federal Decree No. 15 of 2013 dated 11 February 2013, issued in the name of the President of the United Arab Emirates, which provided for establishment of a financial free zone under the name “Abu Dhabi Global Market.”

Can a Trademark Be Refused Merely Because It Is Not “Coined” or “Inventive”?

The Delhi High Court emphatically answered this question in the negative.

The Court observed that the grounds for refusal of registration are contained in Sections 9 and 11 of the Trade Marks Act, 1999, and these provisions are comprehensive in that regard.

The Court found no statutory requirement that a trademark must necessarily be “coined” or “inventive” in order to qualify for registration.

Justice Hari Shankar drew an important conceptual distinction:

Distinctiveness is required for trademark registration; inventiveness is not.

Inventiveness is a concept associated with patent and design law, whereas trademark law focuses upon whether a mark is capable of distinguishing the goods or services of one person from those of another.

The Court therefore held that the Assistant Registrar could not lawfully refuse registration simply because the mark was allegedly not coined or inventive.

Trademark Law Is About Distinctiveness, Not Inventiveness

This aspect of the judgment is commercially important.

A business does not need to create a completely new word in order to obtain trademark protection.

Many trademarks are made up of ordinary words, surnames, geographical references, symbols, logos or combinations of these elements.

What matters under Section 9(1)(a) is whether the mark is capable of functioning as a badge of origin — that is, whether it can distinguish the applicant’s goods or services from those of other traders.

The Court therefore rejected an approach that imported patent-law concepts of novelty or inventiveness into trademark examination.

Trade Name Was Backed by UAE Federal Decree

The Court additionally found that even factually the objection regarding the name being neither coined nor invented was unjustified.

The appellant had specifically explained that the name “ABU DHABI GLOBAL MARKET” had been adopted pursuant to Federal Decree No. 15/2013.

The Court noted that this explanation had already been placed before the Trade Marks Registry in the appellant’s reply to the First Examination Report, but the impugned order made no reference to it.

This omission later became part of the Court’s wider criticism concerning non-application of mind by the Registry.

No Affidavit of Use Required for a “Proposed to Be Used” Application

The second major ground of refusal was the absence of an affidavit establishing use of the mark.

The Delhi High Court rejected this objection as well.

The appellant’s application had been filed on a “proposed to be used” basis.

The Court observed that there was no lawful basis for linking distinctiveness with evidence of actual prior use in such circumstances.

Justice Hari Shankar stated that the Assistant Registrar had confused distinctiveness with actual user of the mark.

The Court went further and explained that if evidence of use were always required to establish distinctiveness, it would become impossible to register any trademark on a proposed-to-be-used basis.

Such an interpretation would directly conflict with the statutory scheme.

What Does “Distinctiveness” Mean Under Section 9(1)(a)?

Section 9(1)(a) concerns marks which are devoid of distinctive character, namely marks that are not capable of distinguishing the goods or services of one person from those of another.

The High Court stressed that the proper legal inquiry is therefore:

Is the mark capable of distinguishing the applicant’s goods or services from those of another person?

It is not enough merely to say that a mark has not yet been used.

The Court found that the impugned order contained no finding that the Abu Dhabi Global Market mark was actually incapable of performing this distinguishing function.

Existing Registration of the Logo Was Relevant

The Court also noted that the logo forming part of the composite mark already stood registered in favour of the appellant.

This meant that the Registry had already recognised the distinctiveness of the logo.

The Court accepted the appellant’s contention that adding the words “ABU DHABI GLOBAL MARKET” beneath an already distinctive logo did not, by itself, destroy the distinctiveness of the mark.

Geographical Names and Section 9(1)(b)

The third major issue concerned the presence of the words “Abu Dhabi”.

The Trade Marks Registry had treated the expression as problematic because Abu Dhabi is the capital of the United Arab Emirates and therefore a geographical name.

The Delhi High Court closely analysed Section 9(1)(b) of the Trade Marks Act.

The provision bars registration of marks which consist exclusively of signs or indications which may serve in trade to designate, among other things, the geographical origin of goods or services.

The word “exclusively” became decisive.

Composite Marks Are Outside the Automatic Bar of Section 9(1)(b)

The Court held that Section 9(1)(b) does not automatically prohibit every mark containing a geographical reference.

The statutory prohibition applies where the mark consists exclusively of matter indicating geographical origin.

A composite mark incorporating other elements stands on a different footing.

The Court held that:

Composite marks are ipso facto outside the scope of Section 9(1)(b) merely on the basis that one component may refer to geographical origin.

In the present case, the mark was not simply the geographical expression “Abu Dhabi.”

It consisted of the words “ABU DHABI GLOBAL MARKET” together with a distinctive logo.

The Court therefore concluded that Section 9(1)(b), by its very terms, could not automatically apply to such a composite mark.

“Dominant Part” Test Has No Role Under Section 9(1)(b)

The Registrar attempted to argue that “Abu Dhabi” was the dominant part of the mark, and therefore the Section 9 objection should still survive.

The Court rejected this argument in categorical terms.

Justice Hari Shankar held that the “dominant part” principle is alien to Section 9(1)(b).

That doctrine may be relevant in infringement litigation when courts compare competing trademarks and determine whether the dominant components are deceptively similar.

But Section 9(1)(b) contains the statutory word “exclusively.”

Accordingly, the Court held that the dominant-part doctrine could not override the express statutory requirement of exclusivity.

This is one of the strongest doctrinal aspects of the ruling.

Registration Proceedings and Infringement Proceedings Are Different

The judgment usefully distinguishes between two trademark-law exercises:

Registration analysis under Section 9, and
infringement analysis involving comparison of rival marks.

In infringement cases, courts may examine dominant or essential features of rival marks.

But while applying Section 9(1)(b), the focus is on whether the mark as a whole consists exclusively of prohibited descriptive or geographical matter.

The two tests cannot be indiscriminately mixed.

Court Criticises the Trade Marks Registry for Non-Application of Mind

The judgment also contains unusually strong observations regarding administrative decision-making by the Trade Marks Registry.

The Court first referred to one sentence in the refusal order stating:

“The attorney failed to establish the Identity of the mark in applied class.”

Justice Hari Shankar observed that the sentence was incomprehensible and that even counsel appearing for the Registrar was unable to explain what it meant.

The Court therefore held that an incomprehensible sentence could obviously not constitute a lawful ground for rejecting a trademark application.

Detailed FER Replies Cannot Simply Be Ignored

The Court noted that after issuance of the First Examination Report dated 16 September 2016, the appellant had filed an extensive response consisting of 11 pages and 23 paragraphs, which together with accompanying documents ran into more than 100 pages.

Yet the impugned order appeared not to have considered that response meaningfully.

Justice Hari Shankar strongly observed that applicants do not file detailed responses to examination reports “for the sake of fun.”

The Court stated that the least expected from the quasi-judicial officer deciding the application is to read the response and apply their mind to the submissions.

Trade Marks Registrar Exercises Quasi-Judicial Functions

The Court characterised the manner in which the application had been decided as a complete abdication of quasi-judicial functions vested under the Trade Marks Act and Rules.

It further observed that the impugned decision effectively reduced Section 18(5) of the Trade Marks Act to redundancy.

This aspect of the judgment has significance beyond the particular mark involved.

Trademark examination and hearing orders must be:

• reasoned;
• intelligible;
• responsive to the applicant’s submissions; and
• based on the statutory grounds actually available under the Trade Marks Act.

A formulaic refusal unsupported by reasoning is vulnerable to challenge.

Delhi High Court’s Final Order

The High Court ultimately held that none of the grounds relied upon by the Assistant Registrar could survive.

The order dated 9 December 2022 was consequently quashed and set aside.

The Court remanded Application No. 3184380 dated 11 February 2016 to the Trade Marks Registry with a direction that it proceed to advertisement and subsequent proceedings in accordance with the Trade Marks Act and the Trade Marks Rules.

Importantly, therefore, the High Court did not itself finally register the mark. It removed the unlawful refusal and directed the application to proceed through the statutory registration process.

Key Legal Principles Emerging from the Judgment

Issue	Delhi High Court’s Finding
Must a trademark be “coined”?	No
Must a trademark be “inventive”?	No
Relevant trademark requirement	Distinctiveness, not inventiveness
Proposed-to-be-used application	Prior-use affidavit is not necessary merely to establish distinctiveness
Meaning of distinctiveness	Capability of distinguishing one person’s goods/services from another’s
Geographical name in a mark	Does not automatically bar registration
Section 9(1)(b)	Applies to marks consisting exclusively of prohibited descriptive/geographical indications
Composite geographical mark	Not automatically barred merely because one part is geographic
Dominant-part doctrine	Not applicable to overcome the word “exclusively” in Section 9(1)(b)
Registry’s duty	Must meaningfully consider replies and give reasoned decisions
Final result	Refusal quashed; application remanded for advertisement and further proceedings

Why This Judgment Matters for Trademark Applicants

The ruling is particularly useful for businesses seeking protection for marks containing:

• city names;
• country names;
• regional names;
• geographical references;
• institutional names; or
• combinations of geographical words with logos or other distinctive elements.

The mere presence of a geographical expression does not necessarily make a mark unregistrable.

The correct analysis must examine the mark as a whole and the exact language of Section 9(1)(b).

Importance for International Businesses Entering India

The judgment is also relevant for foreign governmental bodies, free zones, financial centres, international institutions and multinational enterprises seeking trademark protection in India.

Names of foreign institutions frequently incorporate geographical identifiers.

If every composite institutional mark containing a city or country name were automatically rejected, many established global trade names would face unnecessary barriers in India.

The decision confirms that Indian trademark law requires a more nuanced statutory analysis.

Important Distinction: “Abu Dhabi” Versus “Abu Dhabi Global Market + Logo”

The judgment can be understood through a simple distinction.

A mark consisting solely of a geographical expression such as “ABU DHABI” may raise a different Section 9(1)(b) analysis.

But the application before the Court was for a composite device mark, consisting of:

a logo + the words “ABU DHABI GLOBAL MARKET.”

The Court was therefore required to examine the entire composite mark rather than isolate one component and treat that isolated component as determinative.

This is why the statutory word “exclusively” assumed such importance.

Practical Takeaways for Trademark Practitioners

For trademark attorneys and applicants, the judgment offers several useful lessons.

When responding to an examination report involving Section 9 objections, the response should clearly demonstrate:

• the composite nature of the mark;
• the distinctive graphical or device elements;
• whether any existing registrations already recognise distinctiveness;
• the factual origin of the trade name;
• whether the application is on a proposed-to-be-used basis;
• why proof of prior use is therefore unnecessary;
• why the mark does not consist exclusively of geographical or descriptive matter; and
• why the mark as a whole is capable of distinguishing the applicant’s goods or services.

The decision also provides a strong basis for challenging refusals that mechanically invoke Section 9 without examining the statutory wording.

Administrative Law Significance of the Judgment

Beyond trademark law, the decision reflects fundamental principles of administrative and quasi-judicial decision-making.

Where a statutory authority receives a detailed reply, it must meaningfully engage with the response.

A decision should demonstrate:

application of mind, intelligible reasoning, consideration of relevant material and reliance upon legally recognised grounds.

An authority cannot simply reproduce objections from an examination report and reject an application without addressing the applicant’s answers.

This aspect of the judgment strengthens procedural fairness in intellectual-property administration.

Broader Impact on Section 9 Jurisprudence

The ruling provides useful clarity on the relationship between Sections 9(1)(a) and 9(1)(b).

Section 9(1)(a) deals with lack of distinctive character.

Section 9(1)(b) addresses marks consisting exclusively of descriptive or geographical indications.

The two provisions should not be conflated.

A geographical component does not automatically establish lack of distinctiveness, particularly where the mark contains other distinctive features.

Similarly, absence of prior use does not establish non-distinctiveness in a proposed-to-be-used application.

Conclusion

The Delhi High Court’s judgment in Abu Dhabi Global Market v. Registrar of Trade Marks, Delhi is an important authority on the registration of composite trademarks under the Trade Marks Act, 1999.

The Court clarified that trademarks need not be coined or inventive, that actual use is not a prerequisite to distinctiveness in a proposed-to-be-used application, and that a composite mark containing a geographical name is not automatically barred under Section 9(1)(b).

Connected Matter

Delhi HC Ruled “ONE FOR ALL” Trademark Registrable for Books; Common Words Can Be Distinctive When Unconnected with the Goods

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Source: Delhi High Court

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Ravi Shekhar Jha – Advocate, Bar Council of Delhi