Madras High Court Clarifies Test for Descriptive and Composite Trademarks

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

Date: 05.11.2026

Madras High Court Clarifies Test for Descriptive and Composite Trademarks

The Madras High Court has set aside the Trade Marks Registry’s refusal to register “GIRL POWER PROJECT” in Class 41, holding that the mark must be assessed as a whole and is capable of distinguishing the applicant’s services.

The decision, delivered on 19 July 2024 by Justice P.B. Balaji, reinforces an important trademark principle: a composite word mark cannot be refused simply by separating its individual words and treating them as descriptive. The Court directed the Registry to resume processing the application within three months.

Background of the dispute

Just Lime My Child Foundation, a non-profit organisation working to improve healthcare, personal care, education and micro-enterprise opportunities for women and girls, applied to register the word mark “GIRL POWER PROJECT” in Class 41.

The Foundation stated that it had operated the initiative under this name since 2014. Its programme focuses on supporting girls through the challenges of adolescence and helping them avoid outcomes such as early marriage, early pregnancy and disease, while promoting education and economic independence. The organisation also began operating the project in India in 2020.

Despite this background, the Trade Marks Registry rejected the application on 8 February 2024 under Section 9(1)(b) of the Trade Marks Act, 1999. The Registry considered the phrase descriptive of girl empowerment and therefore not eligible for registration.

The Foundation’s case

The appellant argued that the Registry had wrongly broken the mark into separate descriptive elements instead of considering the expression “GIRL POWER PROJECT” as one composite mark. It also pointed out that the same mark had already been registered in the United States and Uganda.

The Foundation relied on decisions recognising that the registrability of a word combination depends on the overall impression created by the complete mark, not merely on whether individual words may have descriptive meanings. It submitted that the phrase was not confined to describing girl empowerment services and was distinctive of its broader charitable activities.

Why the Court disagreed with the Registry

The Court found that the refusal order did not explain adequately why the complete mark was barred by Section 9(1)(b). Its reasoning identified several flaws:

• The mark was improperly dissected. The Registry examined the expression in parts rather than evaluating “GIRL POWER PROJECT” as a composite whole.
• The refusal lacked supporting analysis. Although the Registry called the mark descriptive or common to trade, it did not provide a meaningful discussion supporting that conclusion.
• Relevant overseas registrations were not considered. The Court noted that registrations in the United States and Uganda had been brought to the Registry’s attention but were not addressed.
• The mark could distinguish the Foundation’s services. The Court held that the organisation’s objectives and activities were broader than the particular Class 41 services cited by the Registry. The mark was therefore capable of distinguishing its services from those of other entities.

The Court referred approvingly to the principle that even where individual terms may have descriptive connotations, their combination may still be distinctive if the expression as a whole differs from the ordinary way in which consumers describe the relevant goods or services.

Distinguishing the Registry’s cited precedent

The Registry relied on a Delhi High Court decision concerning the mark “SWISS MILITARY.” The Madras High Court found that decision inapplicable.

That earlier case involved an opposition and concerns over a mark suggesting a geographical origin that could mislead the public. By contrast, the “GIRL POWER PROJECT” dispute concerned a refusal based on alleged descriptiveness. The Court held that the factual and legal context of the “SWISS MILITARY” decision did not support the Registry’s position.

Outcome and significance

The High Court allowed the appeal, set aside the Registry’s refusal, and directed the Registrar of Trade Marks to process the application in accordance with law within three months of receiving the order. No costs were awarded.

The ruling is significant for trademark applicants using multi-word marks with suggestive or descriptive elements. It confirms that the legal test is not whether isolated words have ordinary meanings, but whether the mark, viewed in its entirety, can identify and distinguish the applicant’s services. A refusal under Section 9(1)(b) must also be supported by clear reasoning tied to the complete mark and the services for which protection is sought.

For “GIRL POWER PROJECT,” the Court concluded that the expression was distinctive enough to proceed through the registration process rather than being rejected at the threshold.

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Source: Madras High Court

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Ravi Shekhar Jha – Advocate, Bar Council of Delhi