Aadrikaa Legal Services (ALS)- Law I Litigation I Arbitration
Date: 03.11.2026
Delhi HC: Trademark Registry Cannot Reject Marks Based on Imaginary or Conjectural Descriptiveness
This Short Article has been prepared & written by Advocate Ravi Shekhar Jha-Delhi High Court, New Delhi. The views expressed are based on his interpretation of the law. He can be reached at his email id intelconsul@gmail.com .
The Delhi High Court has set aside the Trade Marks Registryβs refusal to register βDOUBLE-CHOICEβ for rice, flour and cereal preparations, holding that the mark must be assessed as a whole and that a proposed-to-be-used application cannot be rejected for lacking acquired distinctiveness through use.
Background of the dispute
Kapil Goyal applied on 20 June 2023 to register βDOUBLE-CHOICEβ in Class 30 for rice, flour and preparations made from cereals. The application was filed on a proposed-to-be-used basis, meaning the mark had not yet been used in the marketplace.
The Trade Marks Registry objected under Sections 9(1)(a) and 9(1)(b) of the Trade Marks Act, 1999. It concluded that the mark lacked distinctiveness, was composed of non-distinctive words, and was descriptive of the kind and intended purpose of the relevant goods. The Registry also found that the mark had not acquired secondary meaning because it had not been used in the market.
Following a hearing, the application was refused on 24 January 2025. Kapil Goyal appealed to the Delhi High Court under Section 91 of the Act.
Key issues before the Court
The dispute centred on three connected questions:
- Whether βDOUBLE-CHOICEβ was inherently incapable of distinguishing one traderβs goods from those of another.
- Whether the expression directly described rice, flour or cereal preparations.
- Whether the absence of prior market use could justify refusal of an application filed on a proposed-to-be-used basis.
The Courtβs findings
A composite trademark cannot be broken into isolated words
The Court held that a trademark must be evaluated in its entirety. Although βDOUBLEβ and βCHOICEβ are individually common English words, their combination had to be assessed as the composite expression βDOUBLE-CHOICEβ.
On that basis, the Court found that the expression was not so common or devoid of distinction that it could not identify the commercial source of the applicantβs goods. The Registry had not identified any identical or similar marks, nor had it explained why use of βDOUBLE-CHOICEβ would make it impossible for consumers to distinguish the applicantβs goods from those of other traders.
The mark was not shown to be descriptive
The Registry had reasoned that βDOUBLE-CHOICEβ referred to a situation involving two options and therefore described a variety or consumer choice connected with the products. The Court rejected that reasoning as unsupported by evidence.
It noted that the refusal order did not clarify which products consumers would supposedly be choosing between. There was no factual material showing that the mark denoted product variety, two alternatives, or any feature of the rice and cereal goods. The Court characterized this conclusion as conjectural rather than evidence-based.
A mark is not descriptive merely because its words have dictionary meanings. To attract the statutory bar, the expression must directly indicate a characteristic, quality, kind, purpose or other attribute of the specific goods. The Court found no such direct connection between βDOUBLE-CHOICEβ and rice, flour or cereal preparations.
Non-use is irrelevant for a proposed-to-be-used application
The Court also held that the Registryβs reliance on non-use and lack of secondary meaning was legally misplaced. Where an application is expressly filed on a proposed-to-be-used basis, the applicant cannot be expected to show that the mark has acquired distinctiveness through actual market use.
Requiring proof of prior use in such cases would undermine the statutory recognition of proposed-to-be-used trademark applications. The relevant inquiry was whether the mark was registrable on its own merits, not whether it had already acquired a reputation through use.
Outcome
The Court allowed the appeal, set aside the refusal order dated 24 January 2025, and directed the Trade Marks Registry to advertise βDOUBLE-CHOICEβ in Class 30. After advertisement, the application is to proceed in accordance with the Trade Marks Act, 1999 and the Trade Marks Rules, 2017.
Why the ruling matters
This decision reinforces important principles for trademark applicants and examiners:
- Assess the mark as a whole: Common individual words do not automatically make their combination non-distinctive.
- Require a direct descriptive link: A refusal for descriptiveness must be tied to a real and immediate characteristic of the claimed goods, not a speculative association.
- Give reasoned decisions: A refusal should explain why the mark cannot distinguish the applicantβs goods and should be grounded in relevant material.
- Respect proposed-to-be-used filings: Absence of market use cannot be treated as a defect where the application is validly filed on that basis.
The ruling offers a clear reminder that trademark examination must rest on the actual commercial impression created by a mark and on evidence-based reasoning, rather than on the separate meanings of its component words.
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Source: Delhi High Court
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