Summary
This post examines a recent Delhi High Court case concerning the cancellation of a registered composite trademark under Section 9(1)(b) of the Trade Marks Act, 1999. The Appellant challenged the Registrar’s order, arguing that composite marks should not be assessed solely on descriptive elements. The Court granted interim relief, observing that continuous bona fide use and supporting evidence are significant in cancellation proceedings. The decision underscores the need to evaluate composite marks in their entirety, with reference to actual use and evidentiary materials.
Background of the dispute
The case arises from the cancellation of a registered trademark owned by Sudeep Gupta (hereinafter referred to as the “Appellant”) under Class 39. The Appellant had adopted and used the mark ‘
‘, continuously since 19th July 2020. The trademark was granted registration on 15th June 2024, recognising the Appellant’s prior use.
However, on 22nd May 2025, the Registrar of Trade Marks cancelled the registration under Section 57(4) of the Trade Marks Act, 1999 (hereinafter referred to as the “Impugned Order”). . The cancellation was based on the Registrar’s view that the mark was descriptive in nature as per Section 9(1)(b) of the Trade Marks Act, 1999 (hereinafter referred to as the “Act”) and therefore unregistrable. Aggrieved by the Impugned Order the Appellant filed an appeal before the Delhi High Court under Section 91 of the Act, along with an application seeking a stay on the Impugned Order.
Appellant’s Arguments
The Appellant argued that the Registrar had incorrectly applied Section 9(1)(b) of the Act, which bars registration only where a mark consists ‘exclusively’ of descriptive elements. It was submitted that the Appellant’s mark was a composite mark and could not be assessed by isolating individual components.
The Appellant further contended that the Registrar failed to consider the submitted evidence of continuous and bona fide use since 2020 along with user affidavit and supporting invoices filed in response to the Section 57(4) notice. Such evidence, it was argued, demonstrated goodwill in the mark and could not be ignored at the stage of cancellation.
It was also submitted that permitting the cancellation to operate during the pendency of the appeal would cause irreparable loss.
Legal Precedents Cited
The Appellant relied on the decision of the Delhi High Court in Abu Dhabi Global Market v. Registrar of Trade Marks (2023) wherein, the Court held that Section 9(1)(b) does not apply to composite marks, even if certain elements of the mark have descriptive significance. It was emphasised that the statutory bar operates only where the entire mark falls within the prohibited category.
The use of the term “exclusively” in Section 9(1)(b) rules out reliance on the dominant part doctrine. While assessing similarity between dominant parts of competing marks may be relevant in infringement proceedings, such principles have no application when assessing registrability or cancellation. Accordingly, a mark can be refused registration or cancelled under this provision only where the mark, taken as a whole, is found to fall entirely within the descriptive categories set out in Section 9(1)(b).
Court’s Findings
The Delhi High Court found that the Appellant had established a prima facie case for grant of interim relief. It observed that the mark appeared to be a composite mark, rendering the applicability of Section 9(1)(b) untenable.
The Court held that the balance of convenience favoured the Appellant, noting that the mark had been in continuous use since 2020 and had been granted registration in 2024. It further observed that refusal to grant a stay would result in irreparable injury.
Accordingly, the operation of the Impugned Order was stayed during the pendency of the appeal.
Conclusion
The present order reiterates that composite marks must be assessed as a whole and that Section 9(1)(b) applies only when a mark is found to be entirely descriptive.
The decision places emphasis on actual use and the materials placed on record by the parties. It indicates that long standing commercial use and supporting evidence are relevant considerations while examining requests for cancellation or invalidation of trademarks.
Citation: Sudeep Gupta vs Registrar Of Trademarks Trademarks Registry New Delhi, Delhi High Court, on 20th November 2025, C.A.(COMM.IPD-TM) 78/2025. Available at: https://indiankanoon.org/doc/151835024/.
Authored by Ms. Vidhi Kela and Reviewed by Ms. Benita Alphonsa Basil