Delhi High Court Sets Aside Refusal of ‘HEALTHSKOOL’ Trademark; Holds Suggestive Marks Are Inherently Distinctive and Registrable

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

Date: 11.09.2026

Delhi High Court Sets Aside Refusal of ‘HEALTHSKOOL’ Trademark; Holds Suggestive Marks Are Inherently Distinctive and Registrable

The Delhi High Court has set aside an order of the Trade Marks Registry refusing registration of the mark “HEALTHSKOOL” for medical and allied products in Class 10, holding that the Senior Examiner had applied an incorrect legal standard while examining the distinctiveness of the mark.

Justice Prathiba M. Singh allowed the appeal filed by Disruptive Health Solutions Private Limited under Section 91 of the Trade Marks Act, 1999 and directed the Registrar of Trade Marks to proceed with advertisement of the mark, subject to a disclaimer that the proprietor would have no exclusive rights over the word “Health” independently.

Trademark Registry Refused “HEALTHSKOOL” as Descriptive

• The dispute arose from Trade Mark Application No. 3942420, filed for the word mark “HEALTHSKOOL” on a “proposed to be used” basis in Class 10.
• The application covered products including bandages, condoms, surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, orthopaedic articles, suture materials and other medical products.
• The Senior Examiner rejected the application under Section 9(1)(b) of the Trade Marks Act, reasoning that “HEALTHSKOOL” indicated the purpose or use of the goods and was therefore descriptive.

Appellant Already Held “HEALTHSKOOL” Registrations in Other Classes

• Before the High Court, Disruptive Health Solutions pointed out that “HEALTHSKOOL” had been adopted in 2015 for medicinal and other products and e-pharmacy activities.
• The company already held registrations for the mark in Classes 3, 5 and 44, including both word and logo registrations. The Registrar’s counsel also confirmed before the Court that registrations for the same mark had been granted in other classes.
• The Court further noted that the Registry’s examination report had not cited any identical or deceptively similar trademark. The only objection raised against the application was under Section 9(1)(b).

Delhi High Court Explains “Spectrum of Distinctiveness”

• The High Court found that the Senior Examiner had “erred in law” in applying the standard for registration of trademarks.
• The Court explained that trademarks broadly fall across a spectrum comprising arbitrary/fanciful/invented marks, suggestive marks, descriptive marks and generic marks.
• Relying on Bata India Limited v. Chawla Boot House, (2019) 259 DLT 292, the Court reiterated the spectrum of trademark distinctiveness:

Generic → Descriptive → Suggestive → Arbitrary/Invented

While generic expressions enjoy the least distinctiveness and descriptive marks generally require secondary meaning, suggestive marks are inherently distinctive and do not require proof of secondary meaning.

How to Distinguish a Suggestive Mark From a Descriptive Mark

• The judgment provides an important test for determining whether a mark is descriptive or merely suggestive.
• Referring to Bata India, the Court noted that the inquiry can involve two considerations: the degree of imagination required to connect the mark with the product, and the competitor’s need to use the mark.
• The Court also relied on the Bombay High Court’s judgment in People Interactive (India) Private Limited v. Vivek Pahwa, 2016 (68) PTC 225 (Bom), which explains that suggestive words merely hint at a feature or speciality of the goods and require the consumer to make a mental connection between the expression and the product. Such marks do not require proof of secondary meaning before registration.

Descriptive Element Does Not Automatically Make Entire Mark Unregistrable

• The High Court further clarified that a mark can obtain protection either because it is inherently distinctive or because it has acquired distinctiveness through secondary meaning.
• Importantly, the Court held that merely because some portion of a trademark has a reference or indication concerning the goods or services, the entire mark cannot automatically be rejected.
• The Registry must examine the mark on its merits, the extent of its use and other registrations held by the applicant. The Court also recognised that a trademark owner is entitled to expand into additional goods and services as a natural consequence of business expansion.

“HEALTHSKOOL” Distinctive Enough to Proceed for Advertisement

• Applying these principles, the Court noted that “HEALTHSKOOL” had been used by the appellant since 2015 and was already protected through several registrations in other classes.
• The company had also recorded sales of approximately ₹23 crore during 2020-21.
• Significantly, the appellant informed the Court that it was not claiming exclusive rights over the word “Health” per se.
• Considering these circumstances, the High Court concluded that “HEALTHSKOOL” was sufficiently distinctive at that stage to proceed for advertisement.

Registry Directed to Advertise Mark Within Two Months

• The Delhi High Court consequently held that the Senior Examiner’s refusal order was unsustainable and liable to be set aside.
• The Court directed that the trademark application proceed for advertisement in the Trade Marks Journal with the condition:

“No exclusive rights in the word ‘Health’.”

The Registrar was directed to advertise the mark within two months. The Court, however, clarified that its decision would not bind any opposition proceedings that might subsequently be initiated by a third party. The appeal was accordingly allowed.

Key Legal Takeaway

• The judgment reinforces that the Trade Marks Registry cannot treat every mark having some connection with the relevant goods as automatically descriptive. The proper inquiry requires consideration of the spectrum of distinctiveness.
• In particular, suggestive marks are inherently distinctive, whereas descriptive marks ordinarily require secondary meaning. The degree of imagination required by a consumer to connect a mark with the product remains an important test in drawing that distinction.

The decision also recognises that the presence of a potentially descriptive component within a composite trademark does not necessarily justify rejection of the entire mark, particularly where an appropriate disclaimer can protect the public interest.

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