Common phrases lack distinctiveness under trade mark law, but may be registered if they can show acquired distinctiveness through usage.

JUDGMENT :

OM PRAKASH SHUKLA, J.

1. The present intra-court appeal is directed against the judgment dated 28.05.2025, whereby the learned Single Judge dismissed C.A.(COMM.IPD-TM) 19/2024 preferred by the appellant under Section 91 of the Trade Marks Act, 1999, “the Act” hereinafter and affirmed the refusal order dated 14.12.2023 passed by the Registrar of Trade Marks rejecting Trade Mark Application No. 4711190 for registration of the mark “ONE FOR ALL” in Class 16.

2. The appellant, Oswaal Books and Learnings Private Limited, is engaged in the business of publication and sale of educational books and allied academic material. It is claimed by the appellant that since 20.08.2020, they adopted the mark “ONE FOR ALL” in relation to its educational publications falling under Class 16.

3. The appellant filed Trade Mark Application No. 4711190 on 20.10.2020, seeking registration of the mark “ONE FOR ALL” in Class 16. The application was examined and an Examination Report dated 04.11.2020 came to be issued, raising objections under Section 9 [ Absolute grounds for refusal of registration. – (1) The trade marks – (a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person; (b) which consist exclusively of marks or indications 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 service; (c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered: Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.] of the Act, specifically (1)(a) and calling upon the appellant to establish that the mark was capable of distinguishing its goods from those of others.

4. After replying to the FER, First Examination Report and attending the hearing, the appellant’s trademark application for “ONE FOR ALL” was refused vide order dated 14.12.2023 under Section 9 (1)(a) of the Act on the ground that it is a common, non-distinctive expression and that the appellant failed to prove that its mark has acquired distinctiveness/secondary meaning.

5. The appellant assailed the refusal by way of an appeal under Section 91 of the Act, being C.A.(COMM.IPD-TM) 19/2024, before this Court. By the impugned judgment dated 28.05.2025, the learned Single Judge dismissed the appeal and affirmed the refusal. The learned Single Judge held that the mark “ONE FOR ALL” was a common, laudatory phrase, that it conveyed the impression of the appellant’s books being a universal or “one-stop” solution for all, and that the mark was, therefore, descriptive and lacking in inherent distinctiveness. The learned Single Judge further held that the appellant had failed to discharge the burden of establishing acquired distinctiveness or secondary meaning, and that the documents relied upon by the appellant predominantly related to the appellant’s house mark “OSWAAL BOOKS” rather than to the applied mark “ONE FOR ALL”. The learned Single Judge also noted that in most instances the mark wa