Section 9(1)(a) Trade Marks Act Tests Distinctive Character Of A Mark, Not Its Uniqueness: Delhi High Court

The Court was hearing an appeal filed by ADS Spirits Pvt. Ltd. against the refusal of its application to register the mark “OFFER” in Class 33 for “alcoholic beverages, except beers; alcoholic preparations for making beverages”. The Registrar had refused registration under Section 9(1)(a), holding that the word was used in common parlance while demanding discounts and was devoid of “uniqueness”.

A Bench of Justice Jyoti Singh, while finding that the Registrar had applied a wrong test, observed that Section 9(1)(a) bars marks devoid of distinctive character and not marks merely because they are common words:

“Application of the Appellant for registration of the mark OFFER has been refused under Section 9(1)(a), categorically stating that the word is devoid of ‘uniqueness’. Section 9 of 1999 Act provides absolute grounds for refusal of registration and plain reading of sub-Section (1)(a), which is extracted in the earlier part of the judgment, shows that the provision proscribes registration of the applied mark if it is devoid of any ‘distinctive character’ and the phrase has been explained thereafter, to mean not capable of distinguishing the goods or services of one person from those of another person. 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.”

Advocate Ankit Sahni appeared for ADS Spirits, while Senior Panel Counsel Gaurav Barathi appeared for the Registrar of Trade Marks.

Background

ADS Spirits sought registration of the mark “OFFER” on a proposed-to-be-used basis for alcoholic beverages and alcoholic preparations for making beverages. It contended that “OFFER” was arbitrary and inherently distinctive for alcoholic beverages, and that consumers seeing it on a liquor bottle would perceive it as a brand rather than as an incomplete promotional statement.

The company argued that the Registrar had ignored its reply, additional submissions, and prior registered composite marks using the word “OFFER”. It also contended that the mark had to be tested in relation to the goods for which registration was sought, and not in the abstract.

The Registrar defended the refusal, arguing that “OFFER” was an ordinary English word commonly used while asking for discounts, and therefore lacked distinctiveness. Reliance was placed on decisions where generic or commonly used terms were denied broader trademark protection.

Court’s Observations

The Court first noted that the examination objection itself was framed in a broad, stock format, stating that the mark was a common surname, personal name, geographical name, ornamental or non-distinctive geometrical figure.

The Court remarked: “The objection is rather strange and perhaps a standard pre-drafted format including every possible objection to reject registration without specifying whether the mark OFFER was perceived as a name of a person/surname or a geographical name or a geometrical figure. This is clearly indicative of non-application of mind even at the stage of issuing the Examination Report.”

It further found that the refusal order compounded this arbitrariness by resting entirely on the view that “OFFER” was used for discounts and was not unique.

The Court held that distinctiveness cannot be examined in isolation and must be assessed in relation to the goods for which registration is sought. A word may be descriptive or generic for one class of goods but arbitrary for another.

The Court stated: “Clearly, in the present case, Respondent has failed to enter into the exercise of determining whether the applied mark OFFER is distinctive qua alcoholic beverages. It cannot be disputed that distinctiveness cannot be tested or determined in a vacuo and must be seen relative to the goods for which the applied mark is sought to be registered inasmuch as a trademark can be descriptive qua a certain category of goods but may be distinctive qua another category, as rightly flagged by the Appellant.”

Referring to the spectrum of distinctiveness, the Court relied on decisions including Bata India Limited (2019), People Interactive (2016), Oswaal Books (2026), Mohd. Rafiq (1971), Evergreen Sweet House (2008), Vineet Kapur (2025), and Mankind Pharma (2022).

The Court held that the statutory question was not whether the mark is an everyday English word, but whether it has a direct descriptive connection with the goods.

The Court observed: “Having considered the aforesaid judgments and the impugned order, I am of the view, that Respondent has applied a wrong test for determining whether the mark OFFER was registrable inasmuch as Section 9(1)(a) of 1999 Act does not recognise or require the applied mark to be ‘unique’ and proscribes registration of a mark which is devoid of distinctive character.”

The Court added: “The provision does not leave the concept of distinctiveness nebulous and goes on to explain that a mark is non-distinctive if it is incapable of distinguishing the goods/services of the applicant from goods/services of others. Therefore, even a common English word used daily may become distinctive of goods it has no connection with. As held in several judgements, the test is the extent to which the imagination must be strained to draw a connect between the mark and the goods and if there is no connect comes to the mind, such as in the case of ivory to soaps, gap to clothes, the mark is arbitrary.”

The Court also disagreed with the Registrar’s reasoning that “OFFER” necessarily indicated a discount.

The Court noted: “In fact, even the finding of the Respondent that OFFER indicates a discount and hence not unique is also not totally correct. Offer and discount are not synonymous. An offer is a proposal or invitation to transact. Discount is to reduce the price. Product may be offered for sale without discount and it is common knowledge that the word ‘offer’ is ordinarily not used as a standalone word when the message is to give a discount and is often qualified with words ‘special’, ‘limited’, ‘exclusive’, ‘holiday’.”

The Court distinguished Venus Worldwide (2023), IHHR Hospitality (2012), and Pernod Ricard (2025), observing that those cases involved marks found generic, commonly associated with the relevant field, or commonly used in the alcoholic beverages industry itself.

Conclusion

The Court quashed and set aside the refusal order and directed the Registrar to reconsider ADS Spirits’ application for registration of the mark “OFFER” in Class 33. The Registrar was directed to decide within four months after granting a hearing and considering the replies and documents on record.

The Court clarified that it had not expressed any opinion on the merits of the registration application.

Cause Title: ADS Spirits Pvt. Ltd. v. The Registrar of Trade Marks (Neutral Citation: 2026:DHC:5783)

Appearances

Appellant: Advocates Ankit Sahni, Kritika Sahni, Chirag Ahluwalia, Mohit Maru and Aparna Sharma

Respondent: Senior Panel Counsel Gaurav Barathi, with Government Pleader Vikrant Malwal and Advocate Chirantan Priyadarshan

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