Imagination Test Fails Where Mark Reflects Intended Purpose Of Cosmetics: Delhi High Court Cancels GLASS SKIN Registration In Renee Dispute
Renee Cosmetics argued that the term originated as a popular Korean beauty trend in 2017 to describe luminous skin and was widely used by global cosmetic giants.
Justice Tushar Rao Gedela, Delhi High Court
The Delhi High Court has held that a trademark designating the intended purpose or visual result of a cosmetic product cannot be monopolized under the Trade Marks Act, 1999. Invalidation occurs under Section 9(1)(b) because such industry-wide terms remain common to the trade and are barred from exclusive registration unless secondary distinctiveness is proved.
Directing the rectification of the register, the Court cancelled a six-year-old registration for the word mark ‘GLASS SKIN’ in a dispute involving Renee Cosmetics Private Limited. The Court rejected the "imagination test" defense, observing that consumers easily identify the phrase as a descriptive worldwide beauty trend rather than a source identifier.
A Single-Judge Bench of Justice Tushar Rao Gedela observed, “…It would be absurd to propound that the term ‘GLASS SKIN’ for a product which is a cosmetic for the purpose of skin care, would not be a “descriptive” term or would convey anything other than the intended purpose or the end result. In such a factual situation, the question of “imagination test” does not arise at all. If a consumer is confronted with the product related to cosmetics, which uses the terms ‘GLASS SKIN’, and also having regard to the fact that it is a worldwide fashion trend, in the opinion of this Court, it would be quite obvious as to what is the intended purpose and end result that the product would achieve”.
Advocate Aditya Gupta appeared for the petitioner and Arunima Dwivedi, CGSC appeared for the respondent.
The petitioner, Renee Cosmetics Private Limited, adopted and launched its brand in late 2019. Meanwhile, the respondent, Rupali Sharma, had applied for the registration of the word mark ‘GLASS SKIN’ in Class 03 on a “proposed to be used basis” earlier that year and was granted registration.
In January 2025, the petitioner sought registration for its composite mark ‘RENEE GLASS SKIN SPF 50’. This prompted the respondent to issue a legal notice alleging trademark infringement, eventually leading to the removal of the petitioner’s product listings from the e-commerce platform Amazon.
Aggrieved by the commercial disruption, the petitioner approached the High Court seeking rectification and cancellation of the respondent's mark. The petitioner argued that the term originated as a popular Korean beauty trend in 2017 to describe luminous skin and was widely used by global cosmetic giants.
The Court analyzing the statutory mandate under Section 9(1)(b) of the Trade Marks Act, 1999, noted that the provision explicitly proscribes the registration of marks that describe the characteristics or intended purpose of goods. Relying on established legal treatises, the Bench found that the widespread usage of the term by competitors and fashion media overwhelmingly indicated its descriptive nature.
“…In the opinion of this Court sub-section (1)(b) of Section 9 of the Act proscribes registration of a mark which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or services. Out of the aforesaid particulars, this case concerns itself with the ‘kind’ and ‘intended purpose’ of the goods manufactured by both the parties...”, the Bench noted.
“This is for the reason that the petitioner, like other stakeholders, is using the term ‘GLASS SKIN’, apparently, not as a ‘distinctive’ mark, but only as a part of the entire word mark ‘RENEE GLASS SKIN SPF 50’. Though, it is correct that the petitioner too cannot urge that the term ‘GLASS SKIN’ is either arbitrary or a coined word nor can it contend that the said term is ‘suggestive’ either. Thus, the use of the word ‘GLASS SKIN’ alongwith the entire word mark may be permissible without the term ‘GLASS SKIN’ having special protection”, the Bench noted further.
The Court also emphasized that the respondent had failed to place any documentary evidence on record to show that the mark had acquired a distinctive secondary meaning through commercial use.
Operatively, the Court allowed the rectification petition and directed the Registrar of Trademarks to cancel and remove the trademark registration for ‘GLASS SKIN’ from the Register of Trademarks within four weeks. The connected civil suit was directed to be listed before the Joint Registrar on October 13, 2026.
Cause Title: Renee Cosmetics Private Limited v. Rupali Sharma & Anr. (Neutral Citation: 2026:DHC:5075)
Appearances:
Petitioner: Aditya Gupta and Aakriti Bansal, Advocates.
Respondents: Rajal Rai Dua, Divyangana, Rohan Sharma, and Nishant Chopra, Arunima Dwivedi, CGSC, Himanshi Singh, Monalisha Pradhan, Advocates.