Aadrikaa Legal Services (ALS)- Law I Litigation I Arbitration
Date: 05.11.2026
Madras High Court Clarifies Test for Descriptive and Composite Trademarks
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 Madras High Court has set aside the Trade Marks Registryβs refusal to register βGIRL POWER PROJECTβ in Class 41, holding that the mark must be assessed as a whole and is capable of distinguishing the applicantβs 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 βGIRL POWER PROJECTβ 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 Foundationβs case
The appellant argued that the Registry had wrongly broken the mark into separate descriptive elements instead of considering the expression βGIRL POWER PROJECTβ 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 βGIRL POWER PROJECTβ 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 Registryβs attention but were not addressed.
- The mark could distinguish the Foundationβs services. The Court held that the organisationβs 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 Registryβs cited precedent
The Registry relied on a Delhi High Court decision concerning the mark βSWISS MILITARY.β 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 βGIRL POWER PROJECTβ dispute concerned a refusal based on alleged descriptiveness. The Court held that the factual and legal context of the βSWISS MILITARYβ decision did not support the Registryβs position.
Outcome and significance
The High Court allowed the appeal, set aside the Registryβs 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 applicantβs 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 βGIRL POWER PROJECT,β the Court concluded that the expression was distinctive enough to proceed through the registration process rather than being rejected at the threshold.
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: Madras High Court
Handy Download:
Write to us at office@aadrikaalaw.com
Tel: +91-11-4999 2707