DELHI HIGH COURT: DISTINCTIVENESS UNDER SECTION 9(1)(A) MUST BE TESTED QUA THE GOODS, NOT ON A STANDARD OF “UNIQUENESS”
INTRODUCTION
The Delhi High Court, in the case of ADS Spirits Pvt. Ltd. v. The Registrar of Trade Marks, C.A.(COMM.IPD-TM) 8/2026 on 21.07.2026 has allowed a statutory Appeal filed under Section 91 of the Trade Marks Act, 1999, against an Order dated 30.10.2015 of the Registrar of Trade Marks rejecting Trade Mark Application No. 5514779 for the mark OFFER in Class 33.
BRIEF FACTS
The Appellant Company, incorporated in 2010 and part of the ADS Group of companies, filed the Application on 03.07.2022 on a “proposed to be used” bases, seeking registration for “alcoholic beverages, except beers; alcoholic preparations for making beverages”. An Examination Report dated 18.11.2022 raised an objection under Section 9(1)(a), describing the mark in the standard-format terms as a common surname, personal name, geographical name, ornamental matter or a non-descriptive geometrical figure. The Appellant filed a reply on 26.12.2022 and an additional reply on 24.06.2025, furnishing a list of 31 marks incorporating the word OFFER that had already been registered by the Registrar, including OFFER SALE, offerME, Grab OFFERS and OFFERUP and relying on this Court’s decision in Abu Dhabi Global Market v. Registrar of Trademarks, 2023 SCC OnLine Del 2947, the Registrar rejected the Application without addressing either the cited registrations or the case law, holding that OFFER is used in common parlance to seek a discount and is devoid of “uniqueness”.
SUBMISSIONS BY THE PARTIES
The Appellant contended that the Impugned Order was non-speaking and reflected non-application of mind and that Section 9(1)(a) requires only an assessment of distinctive character, not novelty or uniqueness. It relied on Oswaal Books and Learnings Private Limited v. Registrar of Trade Marks, 2026 SCC OnLine Del 2362, Teleecare Network India Pvt. Ltd. v. Asus Technology Pvt. Ltd., 2019 SCC OnLine Del 8739 and Mohd. Rafiq & Others v. Modi Sugar Mills Ltd., 1971 SCC OnLine Del 190, among other authorities, for the proposition that a word may be generic in relation to one class of goods and arbitrary in relation to another.
The Respondent defended the Order, submitting that adequate reasoning need not run into several paragraphs and relied on Venus Worldwide Entertainment Private Limited v. Popular Entertainment Network (Pen) Private Limited, 2023 SCC OnLine Del 5066, IHHR Hospitality Pvt. Ltd. v. Bestech India Pvt. Ltd., 2012 SCC OnLine Del 2713 and the Supreme Court’s decision in Pernod Ricard India Private Limited v. Karanveer Singh Chhabra, 2025 SCC OnLine SC 1701, for the proposition that generic, descriptive or laudatory terms commonly used in a trade cannot be monopolised.
FINDINGS ON THE EXAMINATION REPORT AND IMPUGNED ORDER
The Delhi High Court found the Examination Report itself defective, describing the objection as a standard pre-drafted format listing every possible ground without specifying which one applied to offer and held this indicative of non-application of mind at the threshold stage. The Court held that the Impugned Order was wholly non- speaking, unreasoned and cryptic since it did not engage with the Appellant’s reply, the additional reply, the list of 31 registered marks or the Abu Dhabi Global Market judgment. Relying on I Am the Ocean, LLC v. Registrar of Trade Marks, 2023 SCC OnLine Bom 3341, and this Court’s decisions in Psychotropic India Limited v. Registrar of Trade Marks, 2026 SCC OnLine Del 446, and Cargill Incorporated v. The Registrar of Trade Marks, C.A.(COMM.IPD-TM) 43/2024, the Court held that an order which fails to consider material on record cannot be sustained and is liable to be quashed on this ground alone.
ANALYSIS AND DIRECTIONS OF THE COURT
The Court held that Section 9(1)(a) prescribes registration only of the marks devoid of distinctive character and does not import any requirement of “uniqueness”. The word does not appear in the statutory text and the Registrar’s reliance on it reflected a wrong test. The court reiterated the four-fold classification of marks into arbitrary/fanciful/invented, suggestive, descriptive and generic categories and the corresponding spectrum of distinctiveness, drawing on Disruptive Health Solutions Private Limited v. Registrar of Trade Marks, 2022 SCC OnLine Del 2002 and the authorities extracted therein. The Court held that distinctiveness cannot be assessed in the abstract and must be tested in relation to the specific goods for which registration is sought, since a mark may be descriptive of one category of goods and arbitrary as to another. The Court also held that the Registrar’s equation of OFFER with a “discount” was not entirely accurate, since an offer is a proposal or invitation to transact, is distinct from a discount and is ordinarily used with qualifying words such as “special”, “limited” or “exclusive” rather than as a standalone term.
The Court held that none of the precedents relied upon by the Respondent were applicable, since the Registrar had not applied the correct statutory test in the first place. The Impugned Order date 30.10.2025 was quashed and set aside. The Registrar was directed to reconsider Application No. 5514779 for the mark OFFER in Class 33, after granting a hearing to the Appellant and considering the replies and documents on record and to pass a fresh decision within four months. The Court clarified that it had not expressed any opinion on the merits of the registrability of the mark.
CONCLUSION
The Judgement reinforces two distinct propositions under Section 9(1)(a). First, that the Registrar of Trade Marks, being a quasi-judicial authority, must pass a reasoned, speaking order that engages with the submissions, documents and precedents placed on record. Second, that the distinctiveness under Section 9(1)(a) is a relational inquiry tied to the specific goods or services in question and is not to be conflated with novelty, inventiveness or uniqueness.
Shomdeepta Chanda
Associate
The Indian Lawyer & Allied Services
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