Summary
In the case of M/s Ads Agro Industries Pvt Ltd vs The Registrar of Trade Marks, the Delhi High Court held that the Trade Marks Office cannot refuse a trademark on a ground that was not mentioned in the Examination Report. The Court found that introducing a completely new objection in the final order violates principles of natural justice. The Court also examined how geographical names and tribal names must be assessed under Section 9(1)(a) of the Trade Marks Act 1999.
Background
M/S Ads Agro Industries Pvt Ltd (‘Ads Agro’) applied for registration of the mark TAJPURIYA in Class 33 for alcoholic beverages on a proposed to be used basis.
The Examination Report issued by the Trade Marks Office raised an objection under Section 9(1)(a) stating that the mark was a geographical name and incapable of distinguishing the goods.
The company filed a detailed reply stating that the mark was arbitrary and inherently distinctive and had no geographical connection with the goods.
After a hearing, the Trademarks Office refused registration. In the refusal order, it stated that TAJPURIYA was the name of an indigenous tribe from Nepal and parts of India and that alcohol was used in their rituals. On that basis, it held that the mark lacked distinctiveness under Section 9.
Aggrieved by this decision of the registry, Ads Agro challenged the refusal before the Delhi High Court.
Issues Before the Court
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- Can the Trade Marks Office refuse a trademark on a ground that was not mentioned in the Examination Report?
- Whether stating that a mark refers to a tribal name associated with alcohol justifies refusal under Section 9(1)(a)?
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Ad Agro’s Arguments
Ads Agro argued that the only objection in the Examination Report was that the mark was geographical. The refusal order, however, introduced a new ground that the mark was the name of an indigenous tribe. This ground was never raised earlier, and the Applicant therefore had no opportunity to respond to the same. This violated the principles of natural justice.
Furthermore, Ads Agro strongly argued that the mark was arbitrary in relation to alcoholic beverages. Even if assumed to have a geographical origin, an arbitrary use of a geographical term could be registrable.
The Registry’s Arguments
The Trade Marks Office argued that the mark lacked inherent distinctiveness because it referred to a tribe where alcohol was used in rituals and therefore could not distinguish the goods. The Office maintained that since the term referred to a tribe associated with alcohol use, it was devoid of distinctiveness.
Court’s Analysis
The Court observed that the Examination Report raised an objection only on the ground that the mark was geographical. However, the refusal order proceeded on a completely different basis by holding that TAJPURIYA was the name of an indigenous tribe where alcohol was used in rituals. The Court stated that this ground was not mentioned in the Examination Report and therefore the company had no opportunity to respond to it. According to the Court, this amounted to a violation of principles of natural justice.
The Court further stated that the original objection in the Examination Report was not dealt with in the refusal order. In the eyes of the Court, it was unclear whether that objection was waived or ignored. If it was not waived, the Trademarks Office failed to consider the detailed reply filed by the company. The Court also noted that the company had argued that the mark was arbitrary and inherently distinctive in relation to alcohol and that even if the term had a geographical origin, it could still be registrable if used in an arbitrary manner. The Court observed that these submissions were not considered in the refusal order. The Court stated that when a detailed reply is filed, the Trademarks Office must deal with the points raised before refusing registration under Section 9(1)(a).
On both procedural and substantive counts, the Court held that the refusal order could not be sustained. The Court did not finally decide on the distinctiveness of the mark but held that the matter required fresh examination.
Conclusion
In view of the findings, the Court set aside the refusal order dated 29 January 2024 and sent the matter back to the Registry to re-examine the trademark application from the stage of hearing after considering the reply to the Examination Report.
Case Citation: M/S Ads Agro Industries Pvt Ltd v. The Registrar of Trade Marks, C A COMM IPD TM 33 of 2024, decided on 3 February 2026 by the High Court of Delhi. Available on https://indiankanoon.org/doc/29356051/
Authored by Gaurav Mishra, BananaIP Counsels