Delhi High Court Reinforces Duty to Give Reasons in Trademark Decisions

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

Date: 09.10.2026

Delhi High Court Reinforces Duty to Give Reasons in Trademark Decisions

The Delhi High Court has set aside the refusal of Psychotropic India Limited’s application to register DISOPIL, holding that the Trade Marks Registrar failed to consider the company’s detailed submissions before rejecting the mark.

Background: DISOPIL application and the objection

Psychotropic India Limited applied on 8 June 2023 to register the word mark DISOPIL in Class 05 for medicinal preparations. The application, numbered 5971233, was examined by the Trade Marks Registry, which issued an objection under Section 11(1) of the Trade Marks Act, 1999.

The objection was based on the existing Class 05 registration for DESOPILL, covering pharmaceutical, medicinal, allopathic, ayurvedic and veterinary preparations. The Registry considered the two marks too close for similar or identical goods and ultimately refused DISOPIL on 27 January 2025.

Psychotropic India appealed to the Delhi High Court under Section 91 of the Act, challenging the refusal as an unreasoned decision that overlooked the material placed before the Registrar.

Psychotropic India’s arguments

The company argued that it had filed a detailed response to the examination report and made further submissions at the hearing, but those points were not addressed in the refusal order.

Its central submission was that “PIL” is not an arbitrary suffix. According to the company, PIL is derived from its name, Psychotropic India Limited, and has been registered in its favour since 1986. It also relied on multiple Class 05 registrations containing PIL as a prefix or suffix, including marks such as K-PIL, CALPIL, PIL POSE, and BISOPIL.

Psychotropic India contended that its sustained use and registration of PIL-formative marks had built goodwill in the pharmaceutical market. It therefore argued that DISOPIL had been honestly and bona fide adopted as a coined mark associated with the company’s established PIL brand family.

The company also submitted that the mark should be assessed as a whole. In its view, DISOPIL was distinguishable from DESOPILL despite the Registry’s similarity concern.

Registrar’s position: close marks for overlapping goods

The Registrar defended the refusal on the basis that DISOPIL and DESOPILL are visually, structurally and phonetically similar. The difference between the letters “E” and “I” was said to be too slight to distinguish the marks meaningfully.

The Registrar further argued that both marks concerned similar pharmaceutical goods, heightening the risk that relevant consumers could be confused. It was also argued that a trademark search before adoption of DISOPIL would have revealed the earlier DESOPILL registration.

Court’s finding: the refusal was not a reasoned order

Justice Jyoti Singh did not decide whether DISOPIL should ultimately be registered. Instead, the Court focused on whether the Registrar had properly considered the applicant’s case.

The Court found that the refusal order did not deal with Psychotropic India’s detailed response, including its evidence and submissions concerning:

• the earlier registration and use of PIL;
• PIL being an acronym connected to the company’s name;
• the company’s portfolio of PIL-formative marks in Class 05;
• the prior registration of BISOPIL; and
• the claim that DISOPIL was honestly and legitimately adopted.

The order had instead proceeded principally on the asserted similarity between DISOPIL and DESOPILL and the similarity of the respective goods.

The Court held that a quasi-judicial authority must apply its mind to the material submissions made by an applicant and provide cogent reasons for its conclusion. A decision that does not engage with relevant evidence or arguments is a non-speaking order and reflects non-application of mind.

Importance of a speaking order in trademark proceedings

The ruling reinforces that trademark examination is not complete merely because the Registry identifies similar marks and overlapping goods. Where an applicant provides a substantive explanation, supporting registrations, evidence of use, or other relevant material, the decision-maker must address those points.

This does not mean that an applicant’s evidence automatically overcomes an objection under Section 11(1). It means that the Registrar must evaluate that evidence and explain why it does or does not alter the result.

For pharmaceutical marks in particular, similarity concerns are significant because the goods may affect consumer health. However, that concern does not remove the obligation to issue a reasoned decision based on the complete record.

The Court’s order

The Delhi High Court allowed the appeal to the limited extent of sending the matter back to the Registrar for reconsideration. The Registrar must:

• reconsider TM-A Application No. 5971233 for DISOPIL in Class 05;
• consider and address the submissions already made by Psychotropic India;
• provide the company an opportunity to be heard; and
• issue a fresh decision in accordance with law within eight weeks.

The Court specified that the reconsideration must be based on the existing record. Psychotropic India will not be permitted to introduce new material.

Key takeaway

The decision is a procedural win for Psychotropic India, not a final approval of DISOPIL. The High Court has required the Trade Marks Registrar to conduct a fresh, reasoned assessment that considers the company’s claimed PIL brand history and its arguments on distinctiveness before deciding whether the mark can proceed to registration.

Connected Matter

Delhi High Court Sets Aside Refusal of “OFFER” Trademark Registration for Alcoholic Beverages

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Source: Delhi High Court

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Ravi Shekhar Jha – Advocate, Bar Council of Delhi