Delhi High Court Clarifies: Trademark Law Requires Distinctiveness, Not Uniqueness

I am unable to discern the concept of ‘uniqueness’ in the statutory provision and therefore, as the Appellant rightly flags, a wrong test was applied by the Respondent to determine if the mark could be registered. -Hon’ble Ms. Justice Jyoti Singh, Delhi High Court.

In trademark law, the prerequisite for registration under Section 9(1)(a) of the Trademarks Act, 1999 is distinctiveness—a mark must be capable of distinguishing the goods of one trader from those of another. ADS Spirits Pvt. Ltd. applied to register the word “OFFER” for alcoholic beverages.

The Registrar rejected the application, reasoning that “OFFER” was a common word used in discounts and lacked uniqueness.

ADS Spirits challenged this, pointing out that the law does not demand uniqueness, only distinctiveness, and that similar marks containing “OFFER” had already been registered.

They also argued that “OFFER” is never used as a brand name in the liquor industry, so when applied to whisky it can act as a different and unusual name in that field, making it distinctive.

The Delhi High Court agreed, observing that the Registrar had applied the wrong test. The Court explained that distinctiveness must be judged relative to the goods that a word may be descriptive in one industry but serve as a distinctive brand in another. For liquor, “OFFER” could function as a brand name because consumers do not normally associate that word with whisky.

The Court held that the correct legal standard is distinctiveness, not uniqueness, and quashed the Registrar’s refusal order.

When applying for trademark registration, businesses should keep in mind that the law requires a mark to be distinctive in the context of the goods or services, not necessarily unique or invented. A common word may still qualify if it is used in a way that is unusual for that industry and helps consumers identify the source of the product.

Applicants should also support their applications with evidence of usage, examples of similar registrations, and relevant case law, because the Registrar is bound to consider these materials and issue a reasoned order.