Summary
This case note traces the SoEasy trademark from acceptance and journal publication in Class 16 to a post-acceptance refusal as a laudatory, non-distinctive mark based on Sections 9(1)(a) and 9(1)(b), triggered through Section 19. While affirming that the Registrar may withdraw acceptance before registration to preserve the purity of the Register, the Court applies the mental-leap test, treats SoEasy as a suggestive and inherently distinctive mark, sets aside the refusal, and directs the application to proceed in accordance with the Act and Rules.
Background
The journey of the mark “SoEasy” (hereinafter referred to as “the Mark”) took an unexpected turn when its registration was refused by the Registrar of Trade Marks (hereinafter referred to as “the Registrar”) on 20 May 2025, giving rise to the present proceedings. The present appeal was preferred under Section 91 of the Trade Marks Act, 1999 (hereinafter referred to as “the Act”) whereby Trade Mark Application No. 5799569 (hereinafter referred to as “Application”) in Class 16 was refused.
The appellant, Mr. Ashim Kumar Ghosh (hereinafter referred to as “the Appellant”), had filed the said Application on 2 February 2023 before the Registrar seeking registration of the word the Mark on a proposed-to-be-used basis in class 16, namely instructional and teaching material (except apparatus), printed matter, and book-binding material. Upon examination, an Examination Report dated 15 June 2023 was issued, raising objections under Section 9 of the Act. A reply was filed by the Appellant, following which the Application was accepted under Section 20(1) of the Act by order dated 10 April 2024, which was subject to the condition that the mark would be used as a whole.
Subsequently, the Mark was published in Trade Marks Journal No. 2153 dated 22 April 2024. No opposition was filed within the statutory period. However, a notice dated 16 December 2024 was thereafter issued by the Registrar under Section 19 of the Act, proposing withdrawal of the earlier acceptance on the ground that the Mark had been erroneously accepted, as the Mark was allegedly devoid of distinctiveness. In response, a reply was filed by the Appellant, wherein the maintainability of the notice was challenged, inter alia, on the ground that it amounted to a review of an issue already adjudicated at the examination stage.
A hearing was thereafter conducted on 20 February 2025. Subsequently, a fresh Examination Report was issued on 19 May 2025, and by the impugned order dated 20 May 2025, the application was refused on the ground that the mark was laudatory in nature and lacked distinctiveness under Sections 9(1)(a) and 9(1)(b) of the Act.
Thereafter, the Appellant approached the Delhi High Court.
Issues for Determination
The following issues arose for consideration before the Court:
1. Whether the Registrar was justified in refusing the application after invoking Section 19 of the Act;
2. Whether the Mark was devoid of distinctiveness and liable to refusal under Section 9(1) of the Act.
Submissions on Behalf of the Appellant
It was submitted by the Appellant that the power conferred under Section 19 of the Act was discretionary and not absolute, and such power could not be exercised arbitrarily after the application had already been accepted and published. It was further contended that once the objection under Section 9 of the Act had been adjudicated upon and acceptance had been granted, the matter had attained finality and could not be reopened on the same grounds.
Further the Appellant argued that Section 19 of the Act only empowered the Registrar to withdraw acceptance of an application and did not extend to refusal of the application outright. The impugned refusal was therefore, stated to be beyond the scope of the provision.
On merits, the Appellant contended that the Mark was an invented and arbitrary combination of two dictionary words, which did not directly describe the Appellant’s goods. Further the Appellant submitted that the Mark was suggestive in nature and required imagination and mental perception to establish a connection with the goods, thereby rendering it inherently distinctive and registrable without proof of secondary meaning.
Submissions on Behalf of the Respondent
It was submitted that the notice had been issued under Section 19 of the Act without reference to any specific sub-clause, thereby indicating that the Registrar had invoked the provision in it’s entirety. Further the Respondent argued that the absence of opposition did not confer an automatic right to registration, since Section 23 of the Act expressly makes registration subject to the Registrar’s power under Section 19 of the Act.
On merits, the Respondent contended that the Mark was a laudatory expression conveying ease and simplicity and directly indicating a positive attribute of the Appellant’s goods. It was further submitted that such laudatory and generic expressions were incapable of distinguishing the Appellant’s goods from those of others and were therefore liable to refusal under Section 9(1) of the Act.
Analysis by the Court
The Court first examined the statutory framework governing withdrawal of acceptance under the Act. Referring to Sections 19 and 23 of the Act, it was observed that the power to withdraw acceptance before registration was retained by the Registrar even in cases where no opposition had been filed and was also held that acceptance and publication of a mark did not confer any vested right to registration (paras 25–26).
The court rejected the contention that Section 19 could not be invoked on grounds already considered at the examination stage. It was held that the Act did not prohibit the Registrar from revisiting acceptance where an error was detected before registration, and that the underlying purpose of section 19 was to maintain the purity of the Trade Marks Register (paras 30–33).
The Court analysed Section 9(1) of the Act, and the recognised classification of trade marks as generic, descriptive, suggestive, arbitrary, and fanciful was explained. The descriptive marks directly describe the goods or their qualities, while generic marks identify the goods themselves and are not entitled to protection. Court also noted that the distinction between descriptive, suggestive, arbitrary, and fanciful marks are not always rigid and may, in certain cases, appear blurred. (paras 38–41).
The Court explained that suggestive marks occupy an intermediate position between descriptive and fanciful marks and require imagination, thought, or perception on the part of consumers to ascertain the nature of the goods. Such marks do not directly describe the goods and are therefore inherently distinctive and registrable without proof of secondary meaning.
In this context, the Court considered the nature of the Appellant’s mark sought to be registered under Class 16 and considered the Appellant’s contention that the Mark was suggestive in nature. The Mark was assessed by applying the mental-leap test, requiring consumers to make a mental leap to associate the Mark with the Appellant’s goods (paras 42–43).
Findings and Decision
In view of the above, although no procedural infirmity was found in the impugned order, interference was warranted on the merits of the Respondent’s decision. Accordingly, the present appeal was allowed and the impugned order passed by the Respondent for this Application, was set aside.
The Respondent was directed to proceed with the Appellant’s Application in Class 16 for registration of the mark in accordance with the provisions of the Act and the Trade Marks Rules, 2017.
Case Citation
Ashim Kumar Ghosh v. Registrar of Trade Marks, C.A.(COMM.IPD-TM) 48/2025, decided on 24 November 2025 (Delhi High Court). Available at: https://indiankanoon.org/doc/107298663/ (Visited on 22 December 2025)
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.
Authored by: Ms. Ananya Nadajoshi