Distinctiveness of a trade mark must be assessed in its entirety, not by dissecting its components, supporting the Anti-Dissection Rule.

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.