Delhi HC: Trademark Registry Cannot Reject Registration Applications Without Giving Proper Reasons

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

Date: 06.11.2026

Delhi HC: Trademark Registry Cannot Reject Registration Applications Without Giving Proper Reasons

The Delhi High Court set aside the refusal of Skechers’ “RELAXEDFIT” footwear trademark application, holding that the Registrar of Trade Marks cannot reject an application through unexplained, one-line orders.

Background of the dispute

Skechers USA Inc. II, a global footwear manufacturer and the registered owner of the “SKECHERS” mark, adopted “RELAXEDFIT” for footwear in 2008. It obtained registration for the mark in the United States in 2010 and later secured registrations across major jurisdictions, including the European Union, United Kingdom, China, Japan, Australia, the UAE, Russia and several South American countries.

In India, Skechers applied on 8 November 2012 to register a stylised “RELAXEDFIT” device mark in Class 25 for footwear. The Trade Marks Registry raised objections under Sections 9 and 11 of the Trade Marks Act, 1999. Skechers responded that “RELAXEDFIT” was a distinctive coined combination, that the cited marks were not similar, and that the mark’s extensive international registration supported protection in India.

The Registry’s refusal

The Registrar rejected the application on 7 June 2018, stating only that the mark was objectionable under Sections 9 and 11. The order did not explain the factual or legal basis for the objection.

After Skechers sought written grounds through Form TM-M, the Registry again issued a brief refusal in March 2019, merely recording that the mark was objectionable under Sections 9 and 11. Skechers challenged both orders before the Delhi High Court.

Why the Court rejected the refusal orders

Justice Prathiba M. Singh found that both orders were devoid of reasoning and inconsistent with established trademark-law requirements.

A reasoned order is mandatory

The Court relied on the earlier ruling in Intellectual Property Attorneys Association v. Controller General of Patents, Designs and Trade Marks, which held that Section 18(5) of the Trade Marks Act requires the Registrar to record and communicate the grounds for refusal or conditional acceptance in writing.

The Court reaffirmed that Rule 36 of the Trade Marks Rules cannot be used to issue a decision without reasons and require the applicant to make a separate paid request to discover the basis of refusal. The statutory obligation under Section 18(5) prevails.

Registrability requires a substantive assessment

The Court also referred to its decision in Dubai Islamic Bank v. Union of India, which explains that a registrar assessing distinctiveness should consider the mark’s character, use, global adoption, reputation, advertising, judicial recognition and composite nature.

In Skechers’ case, the Registry had not meaningfully evaluated the stylised composite mark, Skechers’ evidence of use, or its substantial portfolio of international registrations. A generic reference to Sections 9 and 11 was not enough.

Section 11 objection raised at the examination stage

Skechers also argued that the Section 11 objection was inappropriate at this stage because Section 11(5) limits certain relative-grounds objections to opposition proceedings. While the Court’s decision principally turned on the absence of reasons, the argument reinforced the need for a legally grounded, specific assessment rather than a formulaic refusal.

The Court’s decision

The High Court set aside both refusal orders and directed that Skechers’ Indian application no. 2425633 for “RELAXEDFIT” in Class 25 proceed toward registration.

The registration is subject to the following disclaimer:

“No exclusive rights in the words ‘RELAXED’ separately and ‘FIT’ separately, except as a combination and in the manner in which it is depicted in the present application.”

The Court further directed that the mark be advertised in the Trade Marks Journal within three months, subject to this condition. The order does not decide the merits of any opposition that may be filed after advertisement.

Key legal implications

• Trademark refusals must contain reasons. A bare statement that a mark is objectionable under statutory provisions does not meet the Registrar’s legal duty.
• Composite marks must be assessed as a whole. Descriptive elements may be disclaimed individually while the overall combination and presentation remain registrable.
• International registrations are relevant evidence. They do not automatically guarantee Indian registration, but they are material to the assessment of distinctiveness and should be considered.
• Applicants may secure protection with tailored disclaimers. A disclaimer can preserve the public’s right to use common words while protecting the distinctive manner in which those words are combined and represented.

The ruling strengthens procedural accountability at the Trade Marks Registry and confirms that an applicant’s evidence of distinctiveness, use and global recognition requires genuine consideration before a mark is refused.

Aadrikaa Legal Services is a trusted legal and regulatory support partner providing end-to-end legal solutions to law firms, corporate organizations, and businesses across India. We specialize in paralegal services, litigation support, tax and regulatory matters, delivering reliable, efficient, and result-oriented legal assistance.

Our services include comprehensive paralegal support, drafting and documentation, legal research, case management, litigation handling, and representation support across various judicial and quasi-judicial forums. We also assist in direct and indirect tax matters, customs, GST, corporate regulatory compliance, and legal advisory.

Source: Delhi High Court

Disclaimer

Handy Download:

Write to us at office@aadrikaalaw.com

Tel: +91-11-4999 2707

www.aadrikaalaw.com

Ravi Shekhar Jha – Advocate, Bar Council of Delhi