Delhi High Court: Trademark Refusal Must Be Based on Reasoned Analysis, Not Mere Similarity of Marks

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

Date: 25.09.2026

Delhi High Court: Trademark Refusal Must Be Based on Reasoned Analysis, Not Mere Similarity of Marks

The Delhi High Court has set aside the refusal of Lucy Group Ltd.’s application for registration of the trademark “GEMINI” in Class 09, holding that the Registrar of Trademarks failed to consider crucial factual and legal submissions placed before it.

Justice Jyoti Singh held that the Registrar’s order was “unreasoned, non-speaking and reflects non-application of mind”, observing that a quasi-judicial authority is legally required to consider all relevant contentions and issues raised by the parties before arriving at its decision.

The High Court, however, did not decide whether GEMINI was ultimately entitled to registration. Instead, it remanded the trademark application to the Registrar for fresh consideration and directed a decision within 10 weeks after hearing Lucy Group.

Background: Lucy Group’s ‘GEMINI’ Trademark Application

• Lucy Group Ltd. filed the appeal under Section 91 of the Trade Marks Act, 1999, challenging the Registrar’s order dated 17 April 2025, which had refused registration of its trademark under Application No. 5247072 dated 14 December 2021 in Class 09.
• According to the company, it first used the GEMINI mark in India at the Elecrama trade event in Bengaluru on 13 February 2016, where it promoted and displayed products to potential customers and business associates.
• Lucy Group subsequently filed a convention trademark application in Great Britain on 16 June 2021 and, on 14 December 2021, applied to register GEMINI in India as a convention application.

Trademark Registry Cites Four Earlier ‘GEMINI’ Marks

• On 4 January 2022, the Registry issued an Examination Report raising an objection under Section 11(1) of the Trade Marks Act.
• Four earlier marks were cited on the ground that Lucy Group’s proposed GEMINI mark was identical or similar to marks already appearing on the Register in respect of identical or similar goods.
• Following hearings and written submissions, the Registrar refused registration on 17 April 2025. Lucy Group thereafter filed Form TM-M on 15 May 2025 seeking detailed grounds for refusal, but according to the appeal, those grounds were never supplied.

Lucy Group: Registrar Failed to Compare the Actual Goods

• Lucy Group’s principal grievance was that the Registrar had merely noted the existence of four earlier registrations and concluded that there was a likelihood of confusion because of the allegedly similar goods.
• The company argued that the Registrar had failed to undertake a meaningful comparative analysis of the nature and function of the goods, their trade channels and the relevant consumers.
• It also challenged the Registrar’s finding that adoption of GEMINI was not bona fide, arguing that this was not a ground of refusal under Section 11(1).

Lucy Group’s GEMINI Products Are Industrial SCADA and RTU Systems

• A central aspect of Lucy Group’s case was the highly specialised nature of the products for which registration was sought.
• The application covered industrial-grade products including SCADA (Supervisory Control and Data Acquisition) systems and GEMINI RTUs (Remote Terminal Units).
• The RTUs were described as multipurpose units intended for advanced feeder automation and for controlling and monitoring pole- and ground-mounted medium-voltage switchgear.
• Lucy Group relied on product catalogues, technical specifications and its corporate profile to show that it operated in the specialised field of power automation, grid monitoring and infrastructure control systems.
• The company also claimed continuous and extensive use of GEMINI in India since February 2016 and argued that the specialised nature, application and trade channels of its goods distinguished them from the products covered by the cited registrations.

Cited Mark 1: ‘Wires and Cables’

• The first cited GEMINI registration, No. 728627 in Class 09, covered “wires and cables.”
• Lucy Group argued that wires and cables were basic electrical transmission components, whereas its SCADA systems, RTUs and industrial switchgear were advanced control systems integrated with software and supplied as part of specialised engineering projects.
• It further claimed that the two marks had co-existed in the Indian market since 2016 without reported confusion and that GEMINI had acquired secondary distinctiveness among its customers.

Cited Mark 2: Television Broadcasting and Entertainment Products

• The second cited registration, No. 953168, was also for GEMINI in Class 09 and belonged to Sun TV Network Limited.
• Lucy Group argued that the goods associated with this registration related to the television broadcasting and entertainment sector, whereas its own products concerned industrial power-distribution and control solutions.
• According to Lucy Group, the nature, purpose and consumer base of the respective goods were entirely different. It also informed the Court that it had filed a rectification petition on the ground of non-use against the second cited mark on 30 July 2022, which remained pending.

Third Mark Abandoned; Fourth Filed on ‘Proposed to Be Used’ Basis

• Lucy Group also raised specific objections regarding the remaining two cited marks.
• It submitted that Registration No. 3164101 for GEMINI in Class 09 had been abandoned before the date of the impugned order.
• As regards the fourth mark, Application No. 3939124, Lucy Group pointed out that it had been filed on a “proposed to be used” basis and that its filing was later than Lucy Group’s claimed first use of GEMINI.
• The detailed comparison reproduced on pages 5–9 of the High Court order further contrasted Lucy Group’s specialised industrial products with the goods associated with each cited mark, including wires and cables, broadcasting/electronic goods, consumer electronics and portable spectroscopic instruments.

Same Trademark Class Does Not Automatically Mean Goods Are Similar: Lucy Group’s Argument

• Lucy Group argued that goods cannot be treated as similar merely because they fall within the same Nice Classification class.
• According to the company, the correct enquiry was whether the respective goods were commercially and functionally similar, rather than whether there was a theoretical or broad overlap in their classification.
• It also emphasised that Section 11 requires consideration of likelihood of confusion “on the part of the public”, yet the Registrar had not identified the relevant public or adequately examined the consumers involved.

Registrar Defends Refusal Under Section 11

• The Registrar defended the order, arguing that the GEMINI application was barred by earlier identical marks appearing on the Trade Marks Register.
• It contended that Lucy Group’s mark was phonetically, visually and structurally identical to the cited marks and that the relevant goods were similar or identical, creating a likelihood of confusion under Section 11(1).
• In particular, the Registrar argued that electrical goods such as wires, cables and switchgear may travel through the same trade channels and reach common classes of consumers such as electricians, contractors and engineers.
• According to the Registrar, treating specialised industrial products as wholly different from cables created an artificial distinction because cables and switchgear could be closely connected in the modern electrical industry.

Delhi High Court Finds Crucial Submissions Were Ignored

• After examining the Examination Report, Lucy Group’s reply and its detailed written submissions, the High Court found a fundamental defect in the Registrar’s decision-making process.
• Justice Jyoti Singh observed that none of the crucial submissions had been considered.
• The registration had essentially been refused because the applied-for mark was considered phonetically and visually similar to the cited marks and the goods were treated as similar.
• However, the Registrar had not examined the distinctions Lucy Group sought to establish regarding the nature and function of the competing goods.

Registrar Failed to Consider Abandoned and Later-Filed Marks

The Court specifically noted that the Registrar had also failed to consider Lucy Group’s submissions that:

• the third cited mark had been abandoned; and
• the fourth cited mark was filed on a “proposed to be used” basis much after Lucy Group’s claimed first use.

The High Court observed that these crucial facts and legal issues were not even referred to in the impugned order.

Significantly, the Court stated that had these matters been considered and adjudicated, the decision might have been different.

Quasi-Judicial Authorities Must Deal With Relevant Contentions

• The Court then reiterated an important principle governing administrative and quasi-judicial decision-making.
• It held that even a quasi-judicial authority is under a legal obligation to consider all contentions and issues raised by the parties, insofar as they are relevant, before taking a decision.

Viewed against that requirement, the Registrar’s order was held to be:

• “clearly unreasoned, non-speaking and reflects non-application of mind.”
• This became the decisive basis for judicial interference.

High Court Does Not Decide Trademark Registration on Merits

• Importantly, the Delhi High Court expressly stated that it was not entering into the merits of Lucy Group’s claim for registration.
• The Court therefore did not finally rule that the cited GEMINI marks were dissimilar, that there was no likelihood of confusion, or that Lucy Group was necessarily entitled to registration.
• Instead, it remanded the matter to the Registrar for a fresh decision.
• This distinction is significant because Lucy Group secured a procedural appellate victory, while the substantive question of whether GEMINI should ultimately be registered remains for reconsideration by the Trademark Registry.

Fresh Decision Within 10 Weeks

The High Court directed the Registrar to freshly consider Application No. 5247072 after hearing Lucy Group and taking into account all the points raised in response to the Examination Report.

The Registrar was specifically directed to consider documents already on record, including the:

• priority documents;
• user affidavit;
• written submissions dated 6 August 2024;
• written submissions dated 17 February 2025; and
• written submissions dated 15 March 2025.

The fresh decision must be taken within 10 weeks from 27 March 2026. The Court also directed that no new documents would be permitted before the Registrar during the reconsideration.

The appeal was accordingly allowed and disposed of.

Why the Judgment Matters for Trademark Examination

• The ruling highlights an important procedural safeguard in trademark registration proceedings. The existence of an identical or similar earlier mark may trigger scrutiny under Section 11, but a refusal order must still demonstrate that the Registrar has considered the material factual and legal submissions placed by the applicant.
• Where an applicant specifically distinguishes the competing goods by their function, market, consumer base and trade channels—or raises issues concerning abandonment, priority and claimed prior use—those contentions cannot simply be ignored.
• At the same time, the judgment should not be understood as establishing a general rule that goods within the same class are necessarily dissimilar merely because their applications differ. The High Court deliberately left the merits open for the Registrar’s fresh determination.

Key Takeaway

The Delhi High Court’s decision reinforces that trademark refusal orders must be reasoned, speaking orders reflecting consideration of relevant evidence and contentions.

A mechanical conclusion based on similarity of marks and broadly stated similarity of goods, without addressing material objections raised by the applicant, may not withstand appellate scrutiny.

For Lucy Group, the judgment reopens the path to registration of GEMINI in Class 09, but does not itself grant the trademark registration. The Registrar must now reconsider the application on its merits within the timeline fixed by the Court.

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Source: Delhi High Court

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Ravi Shekhar Jha – Advocate, Bar Council of Delhi