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
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 set aside the refusal of Skechersβ βRELAXEDFITβ 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 βSKECHERSβ mark, adopted βRELAXEDFITβ 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 βRELAXEDFITβ 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 βRELAXEDFITβ was a distinctive coined combination, that the cited marks were not similar, and that the markβs extensive international registration supported protection in India.
The Registryβs 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 markβs character, use, global adoption, reputation, advertising, judicial recognition and composite nature.
In Skechersβ case, the Registry had not meaningfully evaluated the stylised composite mark, Skechersβ 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 Courtβs 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 Courtβs decision
The High Court set aside both refusal orders and directed that Skechersβ Indian application no. 2425633 for βRELAXEDFITβ in Class 25 proceed toward registration.
The registration is subject to the following disclaimer:
βNo exclusive rights in the words βRELAXEDβ separately and βFITβ separately, except as a combination and in the manner in which it is depicted in the present application.β
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 Registrarβs 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 publicβs 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 applicantβs evidence of distinctiveness, use and global recognition requires genuine consideration before a mark is refused.
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Source: Delhi High Court
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