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2025 Supreme(Del) 412
IN THE HIGH COURT OF DELHI AT NEW DELHI
TEJAS KARIA, J.
Mensa Brand Technologies Private Limited - Appellant
Versus
Registrar Of Trade Marks – Respondent
C.A.(Comm.IPD-TM) 17 of 2025 & I.A. 8861 of 2025
Decided On : 22-08-2025
Important Points
Subject
Intellectual Property - Trademark Law
Act Referred
Headnote
(B) Trade Marks - Distinctiveness - A mark must be assessed as a whole, without dividing it into its individual components - The 'dot' in 'PRO.FITNESS' contributes to its distinctiveness and phonetic identity, which was not considered in the Impugned Order. (Paras 20-22)
Facts of the case:
The Appellant, a company selling various food products, filed an application for the trade mark 'PRO.FITNESS', which was rejected by the Registrar for lacking distinctiveness as per Section 9(1)(a) of the Act. The Appellant contended that the mark was uniquely coined and not a commonly used phrase. (Paras 1, 4-6)
Findings of Court:
The rejection was not based on a proper application of the law regarding distinctiveness and failed to take into account the proper assessment methods required for trade mark examination. (Paras 19-25)
Issues: The key issues included whether the trade mark lacks distinctiveness and whether the Registrar correctly applied the principles regarding assessment of trade marks. (Paras 1, 25)
Ratio Decidendi: The court held that a trade mark should be viewed in its entirety, affirming the Anti-Dissection Rule, and highlighted the flaw in how the Registrar assessed the distinctiveness of 'PRO.FITNESS'. (Paras 19-22)
Result: Appeal allowed; the Impugned Order set aside, and the Respondent directed to advertise the Subject Trade Mark. (Paras 25, 27)
For the Appellant :Mr. Aditya Gupta, Mr. Siddharth Varshney & Ms. Aakriti Bansal, Advocates.
For the Respondent:Ms. Nidhi Raman, CGSC with Mr. Arnav Mittal & Mr. Om Ram, Advocates
| Table of Content |
|---|
| 1. appeal against rejection of trademark. (Para 1 , 2 , 3 , 4 , 5 , 6) |
| 2. arguments for distinctiveness of the trademark. (Para 7 , 8 , 9 , 10 , 11 , 12 , 13 , 14 , 15 , 16 , 18) |
| 3. court's analysis on trademark distinctiveness. (Para 19 , 20 , 21 , 22 , 23 , 24) |
| 4. decision to allow appeal and set aside rejection. (Para 25 , 26 , 27) |
JUDGMENT :
TEJAS KARIA, J.
1. The present Appeal has been filed under Section 91 of the Trade Marks Act, 1999, (“Act”) being aggrieved by the order dated 17.01.2025 passed by the Registrar of Trade Marks (“Impugned Order”). The Respondent, vide the Impugned Order, refused Application No. 6701235 filed by the Mensa Brand Technologies Private Limited, i.e., the Appellant for registration of the Trade Mark “PRO.FITNESS” in Class 30 (“Subject Trade Mark”) on the ground that the Subject Trade Mark lacked distinctiveness as required under Section 9(1)(a) of the Act.
2. The Appellant is a Company engaged in selling rice-based snack food, rice cakes, crackers, rice crackers, rice crisps, rice thins, cookies, peanut butter cookies, filled cookies, peanut butter cups, chocolate ganache, chocolate fudge, frosting, frosting mixes, cake frosting, rolled oats, oats, foodstuff made of oats, processed oats for human consumption.
FACTUAL BACKGROUND
3. On 08.11.2024, the Appellant’s predecessor-in-interest filed the Trade Mark Application No. 6701235 for the Subject Trade Mark 
in Class 30 on a ‘proposed to be used’ basis. The Appellant’s predecessor-in-interest filed a request for an expedited process of the Application for registration of the Subject Trade Mark, in the requisite form, on 11.11.2024.
4. The Respondent issued a First Examination Report (“FER”) on 12.11.2024 raising objection under Section 9(1)(a) of the Act, stating that the Subject Trade Mark was not distinctive and not capable of distinguishing the goods or services of one person from those of others.
5. The Appellant responded to the FER through a detailed reply along with the relevant case laws on 12.12.2024. Thereafter, the Respondent issued a hearing notice dated 16.12.2025 scheduling a pre-publication hearing for the Subject Trade Mark on 16.01.2025. The Counsel for the Appellant appeared for the hearing on 16.01.2025 and made submissions in favour of the registration of the Subject Trade Mark.
6. The Application for the registration of the Subject Trade Mark was rejected the next day, i.e., on 17.01.2025 vide the Impugned Order. Aggrieved by the rejection of the Application for registration of the Subject Trade Mark, the Appellant has filed the present Appeal submitting that the Impugned Order is arbitrary, legally flawed, and contrary to the basic principles governing Trade Mark examination.
SUBMISSIONS ON BEHALF OF THE APPELLANT
7. The learned Counsel for the Appellant submitted that the Appellant has successfully applied for and registered the Trade Mark “PROFITNESS” and other formative marks in India. The details of the Appellant’s registrations and the applications, which have been accepted by the Respondent for the Trade Mark “PROFITNESS” and other formative marks in India are as under:
| Sr. No. | Application No. | Class | Mark | Status as mentioned in the Appeal | Updated Status | Date of Acceptance |
| 1. | 6701225 | 5 |  | Accepted and advertised | Registered | 16.01.2025 |
| 2. | 6701226 | 5 |  | Accepted and advertised | Registered | 16.01.2025 |
| 3. | 6701230 | 30 |  | Accepted and advertised | Registered | 17.01.2025 |
| 4. | 6701233 | 30 |  | Accepted and advertised | Registered | 17.01.2025 |
| 5. | 6701236 | 30 |  | Accepted and advertised | Registered | 20.01.2025 |
| 6. | 6701231 | 30 |  | Accepted and advertised | Registered | 11.02.2025 |
| 7. | 6701239 | 30 |  | Accepted and advertised | Registered | 27.01.2025 |
| 8. | 6701240 | 30 |  | Accepted and advertised | Registered | 27.01.2025 |
| 9. | 6701241 | 30 |  | Accepted and advertised | Registered | 27.01.2025 |
| 10. | 6701242 | 30 |  | Accepted and advertised | Registered | 27.01.2025 |
| 11. | 6701224 | 5 |  | Accepted and advertised | Period of opposition expired on 17.07. 2025 | 04.03.2025 |
| 12. | 6701227 | 5 |  | Accepted and advertised | No change-period of opposition expired on 24.07. 2025 | 10.03.2025 |
| 13. | 6701229 | 5 |  | Accepted and | No | 10.03.2025 |
| 14. | | |||||
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