Summary
In the case of Oswaal Books and Learnings Private Limited v. The Registrar of Trade Marks, the Delhi High Court Division Bench held that the mark “ONE FOR ALL” is not descriptive of educational books under Section 9(1)(a) of the Trade Marks Act, 1999. The Court ruled that the expression is at best suggestive and does not have an immediate connection with books. It set aside the refusal order and restored the application for registration.
One for All (Trademark Refusal)
The appellant applied for registration of the word mark “ONE FOR ALL” in Class 16 for educational books and allied publications. The Registrar refused the application under Section 9(1)(a) of the Trade Marks Act, 1999, holding that the mark was devoid of distinctive character and that acquired distinctiveness had not been proved.
The Single Judge dismissed the appeal under Section 91 and held that the expression was a common laudatory slogan. According to the Single Judge, the phrase conveyed that the appellant’s books were a universal or one stop solution for various examinations and boards. The Single Judge treated the mark as descriptive and lacking inherent distinctiveness.
The appellant preferred a Letters Patent Appeal before the Division Bench.
Questions Before the Court
1. Whether the mark “ONE FOR ALL” is inherently distinctive under Section 9(1)(a) of the Trade Marks Act, 1999?
2. Whether the mark is descriptive of educational books or merely suggestive in nature?
3. What is the correct test for determining distinctiveness under Section 9(1)(a)?
4. Can slogans function as trademarks?
5. Whether the appellant was required to establish acquired distinctiveness in the facts of the case?
Arguments Presented By the Parties
Appellant
The appellant argued that the mark is inherently distinctive and does not describe the nature, quality, or characteristics of books. It submitted that the expression requires mental processing before any connection can be drawn with the goods.
It also argued that the Single Judge wrongly dissected the mark and treated it as descriptive merely because it consists of common English words. According to the appellant, slogans are capable of functioning as trademarks and must be assessed as a whole.
Without prejudice, the appellant contended that it had also established acquired distinctiveness through use and sales.
Respondent
The Registrar contended that “ONE FOR ALL” is a common and laudatory slogan. It argued that in the context of books catering to multiple boards and examinations, the phrase directly describes their intended purpose as being suitable for all.
It was submitted that common expressions face a higher threshold for registration. The respondent further argued that the appellant had not shown long and continuous use sufficient to establish secondary meaning.
Court’s Analysis of Distinctiveness Under Section 9(1)(a)
The court stated that Section 9(1)(a) prohibits registration of marks that are incapable of distinguishing goods of one person from those of another. The court observed that the inquiry under Section 9(1)(a) is twofold. First, whether the mark is inherently distinctive. Second, if not, whether it has acquired distinctiveness before the date of application.
Test for Distinctiveness
The court stated that distinctiveness must be assessed in the context of the goods for which the mark is used. The court relied on prior precedent which held that a common word may become distinctive when used for goods with which it has no immediate connection. It observed that the correct test is whether the mark evokes an immediate and direct connection with the goods. If the connection is immediate, the mark is descriptive. If imagination is required to connect the mark with the goods, it may be suggestive.
The court stated that the mark “ONE FOR ALL” does not evoke an immediate connection with books. It observed that the expression has no inherent relation to books or printed publications. At the highest, it may suggest universality. The court said that even if the appellant intended to project its books as a universal solution, that would render the mark suggestive and not descriptive.
Whether the Mark Is Descriptive or Suggestive
The court disagreed with the Single Judge’s finding that the mark is descriptive. It stated that “ONE FOR ALL” does not directly and unequivocally describe books. The court observed that the phrase is not commonly used in Class 16 to designate the character or quality of books.
According to the court, the connection between the phrase and books is not immediate. The mark is capable of use in many contexts unrelated to books. Therefore, it is at best suggestive.
Treatment of Slogans as Trademarks
The court observed that slogans are capable of constituting trademarks within the meaning of Sections 2(m) and 2(zb) of the Act. It noted that slogans can perform a source identifying function in modern trade, particularly in a digitised marketplace.
The court stated that slogans are not per se unregistrable. Their registrability depends on whether they are capable of distinguishing the goods of one person from those of another.
Acquired Distinctiveness and Burden of Proof
The court clarified that the requirement to prove acquired distinctiveness arises only when a mark is found to lack inherent distinctiveness. Since it held that “ONE FOR ALL” is not descriptive and is capable of distinguishing goods, the refusal under Section 9(1)(a) could not be sustained.
The court therefore did not treat proof of secondary meaning as determinative in the facts of this case. It held that the mark satisfies the statutory requirement of distinctiveness.
Findings
The court set aside the order of the Single Judge and the refusal order of the Registrar. It held that the mark “ONE FOR ALL” is not descriptive of books and is capable of registration under Section 9(1)(a).
The application was restored to the stage at which it stood prior to refusal and was directed to proceed in accordance with law.
Relevant Paras
Paras 24 to 29
“24. Needless to state, the legal position in such matters is well- settled. Section 9(1)(a) proscribes registration of marks which are incapable of distinguishing the goods of one person from those of another. The proviso, however, statutorily preserves registrability where, before the date of application, the mark has acquired a distinctive twofold; (i) whether the mark is inherently distinctive; and; (ii) if it is not, whether the evidence demonstrates acquired distinctiveness sufficient to attract the proviso.
25. Further, this court speaking through one of us (C.Hari Shankar J) in the decision of Leayan Global Pvt ltd. vs Bata India Ltd. had laid down as follows :
“34.4.1 Though Section 17(2)(b) does not permit any claim of exclusivity over a mark which is not distinctive, it does not contain any guideline as to how to decide whether a particular mark is, or is not, distinctive. The Trade Marks Act is, however, thankfully not silent in this regard, as the answer to this query is to be found in Section 9(1)(a) of the Trade Maks Act. Section 9 contains the absolute grounds on which registration of a trademark may be refused. Clause (a) of Section 9(1) does not allow registration of trademarks which are devoid of any distinctive character. The expression ‘devoid of any distinctive character’ is explained, in the same clause, as ‘not capable of distinguishing the goods or services of one person from those of another person’. There is no reason as to why this explanation for the expression ‘devoid of any distinctive character’ should not be applied to understand the expression ‘non-distinctive character’ in Section 17(2)(b).
34.4.2 Thus, by virtue of Section 17(2)(b), no exclusivity can be claimed over a mark which is not capable of distinguishing the goods of one person from those of another. The aspect of distinctiveness, or the absence of it, has, therefore, to be assessed not merely by referring to the mark in vacuo, but in the context of the goods or services for which it is used. A common dictionary word, which may be part of daily usage, may become distinctive when used for goods or services with which it has no immediate connection.
34.4.3 We, in this context, are in entire agreement with the learned Single Judge’s observation that the word ‘POWER’ does not evoke a connect, in the mind, between the mark and footwear, as it may, for example, evoke, if it were to be used in the context of boxing gloves. While the mark POWER may, therefore, arguendo, not be distinctive when used for an item such a boxing gloves or, for that matter, an electric plug, it is distinctive when used for footwear.
34.4.4 Leayan’s contention that the mark POWER was lacking in distinctiveness cannot, therefore, be accepted.”
26. It could be understood from the above reading that a mark is descriptive or not has to be assessed in the context of the goods and services it is being used. Also, a common word may also become distinctive if used for goods or services with which it has no immediate connection.
27. Additionally, it is undisputed that the slogans are clearly capable of constituting a “trade mark” within the meaning of Sections 2(m) and 2(zb) of the Act. These slogans can be represented graphically and can be used in distinguishing the goods of one person from those of another. In some cases, these slogans are used to indicate, in the course of trade, a connection between the goods and the person entitled to use the mark.
28. Also, with the rise of heavily digitised marketplace, with digital marketing expanding rapidly, slogans and taglines often perform a source identifying function and, in many cases, may be more readily recognised than the brand or trade name itself. Slogans, taglines, and similar expressions have therefore become an integral component of source identification.
29. Adverting to the facts of the present case, the learned Single Judge, in the impugned judgment, has proceeded substantially on the premise that “ONE FOR ALL” is a combination of common English words, and that permitting its registration would result in monopolisation of language.”
Paras 34 to 36
“34. We find that the applied mark “ONE FOR ALL” does not evoke a connect, in the mind, between the mark and books. The mark has no relation with books and can be used in any situation to communicate broad coverage or universality. “ONE FOR ALL” does not directly and unequivocally describe books. The applied mark is, at the highest, suggestive in nature. Therefore, satisfies the statutory requirement and is capable of registration.
35. Additionally, applying the test mentioned above, the connect between books and “ONE FOR ALL” is not immediate. Even assuming that the appellant’s intention is to project its books as a universal solution for various academic needs, that would, at the highest render the mark suggestive and not descriptive.
36. Therefore, according to us, the appellant cannot be refused registration in view of Section 9(1)(a) of the Act.”
Case Citation
Oswaal Books and Learnings Private Limited v. The Registrar of Trade Marks, LPA 571/2025, decided on 10 February 2026 (Delhi High Court).
Indian Kanoon Link: http://indiankanoon.org/doc/51079020/ Visited on: 18 February 2026.
Disclaimer
This case blog is based on the author’s understanding of the judgment. Understandings and opinions of others may differ. An AI application was used to generate parts of this case blog. Views are personal.