Delhi HC-Geographical Names Are Not an Automatic Bar to Trademark Registration

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

Date: 10.11.2026

Delhi HC-Geographical Names Are Not an Automatic Bar to Trademark Registration

The Delhi High Court has held that a trademark containing a geographical term, the word “Bank,” and a slogan cannot be refused registration through a blanket finding that it is descriptive or non-distinctive.

The dispute

Dubai Islamic Bank challenged the refusal of its application to register the composite mark “DUBAI ISLAMIC BANK – THE BETTER WAY TO BANK.” The Trade Marks Registry had rejected the application under Section 9 of the Trade Marks Act, 1999, reasoning that “Dubai” indicated geographical origin and that the mark was descriptive in nature.

The Registry also noted that the mark was proposed to be used in India and concluded that the applicant could not rely on acquired reputation through use to overcome the objection.

What the Court found

Justice Prathiba M. Singh set aside the refusal, finding that the Registry’s approach was overly general and did not properly assess the mark as a whole.

The Court emphasized that Section 9 does not impose an automatic bar merely because a mark includes:

• a geographical reference;
• descriptive or customary language;
• the name of a service, such as “Bank”; or
• a slogan or tagline.

Instead, registrability requires a fact-specific assessment of whether the mark, viewed in its complete commercial form, can distinguish one trader’s services from another’s.

A composite mark must be assessed as a whole

A central feature of the ruling is the Court’s recognition that the applied-for mark was not limited to the words “Dubai” and “Bank.” It also included the expression “The Better Way to Bank.” The Registry had failed to account for this composite structure.

The Court observed that banks commonly use marks combining a geographic term, the word “Bank,” and a slogan. The presence of “Bank” is ordinarily expected for banking services and, by itself, does not establish that the entire mark is inherently non-distinctive. Similarly, use of a location name does not automatically make a mark incapable of registration.

How distinctiveness should be evaluated

The judgment explains that distinctiveness under Section 9 is broad and contextual. A mark may be assessed by considering factors such as:

• the nature and overall character of the mark;
• the extent and duration of use;
• priority in adoption internationally;
• well-known status;
• advertising and promotional investment;
• judicial decisions recognizing distinctiveness;
• reputation in the relevant market;
• the mark’s composite elements; and
• the relevant customer base.

The Court noted that descriptive marks may become registrable when they acquire a secondary meaning. A geographical name can also be registered where distinctiveness is established. Likewise, slogans and taglines are capable of functioning as trademarks.

Foreign registrations and comparable Indian registrations matter

Dubai Islamic Bank had pointed to registrations of other banks whose names included geographical references. It also relied on its registrations in numerous countries. The Court held that these materials were relevant and should have been considered rather than disregarded through a formulaic application of the refusal provisions.

The decision does not mean that every geographically suggestive bank name must be registered. Rather, it requires the Trade Marks Registry to evaluate the evidence and the mark’s full composition before deciding whether registration should be granted.

Outcome of the case

The Court allowed the writ petition, set aside the refusal order dated 26 March 2019, and remanded the matter to the Registrar of Trade Marks for fresh consideration.

On reconsideration, the Registrar was directed to examine:

• comparable bank marks registered in India that use “Bank” and geographic references;
• Dubai Islamic Bank’s global trademark registrations;
• the registrability of slogans and taglines; and
• any further material or judicial precedents presented by the applicant at a hearing.

Why the ruling is significant

The decision reinforces that trademark examination must be based on the complete mark and the evidence surrounding it, not on isolated words alone. For businesses in regulated or descriptive service sectors, the ruling is particularly relevant: a name that includes a geographic reference or an industry term may still be registrable when its overall presentation has, or is capable of acquiring, distinctive character.

The key principle is clear: geographic and descriptive elements are relevant to trademark analysis, but they are not automatic grounds for refusing a composite trademark application.

Connected Matter

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

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Source: Delhi High Court

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Ravi Shekhar Jha – Advocate, Bar Council of Delhi