ASHIM KUMAR GHOSH vs THE REGISTRAR OF TRADE MARKS - 2025 Supreme(Online)(Del) 9608

Headnote:(A) Trade Marks Act, 1999 - Sections 9, 19, 23, 91 - Withdrawal of acceptance - Distinctiveness - Suggestive mark - The Registrar's power under Section 19 to withdraw acceptance before registration is discretionary but must be exercised on just grounds - However, Section 19 does not bar revisiting previously adjudicated grounds - In this case, the mark 'SoEasy' for instructional and teaching material in Class 16 is suggestive, not descriptive, requiring imagination to connect to the goods - Therefore, it is inherently distinctive and entitled to registration - Impugned order refusing registration set aside - The court relied on Teleecare Network (India) (P) Ltd. v. Asus Technology (P) Ltd., 2019 SCC OnLine Del 8739 for classification of trade marks.

(B) Section 23(1) - Registration subject to Section 19 - No vested right to registration arises merely from non-opposition after acceptance and advertisement - The Registrar can withdraw acceptance at any stage before issuance of certificate.

Facts of the case:
The appellant filed a trade mark application for the mark 'SoEasy' in Class 16 on a proposed-to-be-used basis for instructional and teaching material. The application was accepted and published after examination. Subsequently, the Registrar issued a notice under Section 19 proposing to withdraw acceptance on the ground that the mark was devoid of distinctiveness. After a hearing, the Registrar refused registration. The appellant appealed.

Findings of Court:
The court held that although the Registrar had procedural authority under Section 19 to revisit the acceptance, the substantive decision was erroneous because the mark 'SoEasy' is suggestive in nature. A suggestive mark requires imagination, thought and perception to reach a conclusion as to the nature of goods, and is therefore inherently distinctive. The mark is not descriptive of the goods and is entitled to protection without proof of secondary meaning.

Issues: (i) Whether the refusal under Section 19 was procedurally valid? (ii) Whether the mark 'SoEasy' is non-distinctive under Section 9(1)?

Ratio Decidendi: A trade mark composed of ordinary words can be suggestive if it requires a mental leap to connect the mark to the goods or services. Suggestive marks are inherently distinctive and registrable under the Trade Marks Act, 1999, even without acquired distinctiveness. The Registrar's decision to refuse registration on grounds of non-distinctiveness was set aside. Result : Appeal allowed. Impugned order dated 20.05.2025 set aside. Respondent directed to proceed with the appellant's application for registration in accordance with law.

Legal Category Hierarchy

1. Appeal under Section 91, Trade Marks Act, 1999 against order under Section 19 withdrawing acceptance of trademark application on grounds of non-distinctiveness. (Para 1 , 2 , 3 , 4 , 5 )

2. Appellant argued mark inherently distinctive and Section 19 powers improperly exercised; respondent argued mark descriptive and Section 19 properly used. (Para 7 , 8 , 9 , 10 , 11 , 12 , 13 , 14 , 15 , 16 , 17 , 18 )

3. Appeal allowed; impugned order set aside; Registrar directed to proceed with registration in accordance with the Act. (Para 44 , 45 , 46 , 47 )

4. Does Section 19 of the Trade Marks Act allow the Registrar to withdraw acceptance of a trademark application after it has been accepted and published?

Yes, the Registrar has power under Section 19 to withdraw acceptance at any stage before registration, even if no opposition was filed, subject to hearing the applicant. (Para 25 , 26 , 30 , 31 , 32 , 33 )

5. Does prior adjudication of objections under Section 9 bar fresh proceedings under Section 19?

No, Section 19 does not bar revisiting even if the same grounds were previously adjudicated; the intent is to maintain the purity of the Register. (Para 30 , 32 , 33 )

6. What are the categories of trademarks for assessing distinctiveness, and how do they affect registrability?

Marks are classified as generic, descriptive, suggestive, arbitrary, or fanciful. Suggestive, arbitrary, and fanciful marks are inherently distinctive and registrable; descriptive marks may acquire distinctiveness. (Para 38 , 39 , 40 )

7. Is the mark 'SoEasy' suggestive or descriptive for instructional and teaching materials?

The mark 'SoEasy' is suggestive because it requires imagination, thought, and perception to connect the mark to the goods; it is not descriptive and is thus entitled to protection. (Para 40 , 41 , 42 , 43 )

8. Must a notice under Section 19 specify the particular subsection under which it is issued?

No, a notice under Section 19 need not specify a particular subsection; it is valid if it indicates the Registrar's satisfaction that the mark should not be registered. (Para 27 , 28 )

JUDGMENT

TEJAS KARIA, J

1. The present Appeal has been filed by the Appellant under Section 91 of the Trade Marks Act, 1999 (“Act”) against the order dated 20.05.2025 (“Impugned Order”) passed by the Respondent in Trade Mark Application No. 5799569 in Class 16 for the Trade Mark ‘SoEasy’ (“Appellant’s Mark”) filed by the Appellant.

FACTUAL BACKGROUND:

2. The Appellant had filed the Trade Mark Application bearing No. 5799569 in Class 16 for the goods - instructional and teaching material (except apparatus), printed matter and book binding material. The said Application was filed before the Respondent on 02.02.2023 on a ‘proposed-to-be-used’ basis.

3. This Application was duly examined by the Registrar, who issued an Examination Report dated 15.06.2023. Contesting the same, the Appellant filed its Reply dated 01.07.2023 to the Examination Report. Thereafter, vide order dated 10.04.2024, the Appellant’s Application was accepted under Section 20(1) of the Act subject to the condition that the Appellant’s Mark shall be used as a whole.

4. Thereafter, the Registrar published the Appellant’s Mark in the official Trade Mark Journal No. 2153 dated 22.04.2024. On 16.12.2024, the Respondent issued a notice dated 16.12.2024 under Section 19 of the Act (“Notice’) seeking to withdraw the order of acceptance of the Appellant’s Application for the registration of the Appellant’s Mark on the ground that the Appellant’s Mark had been erroneously accepted as it was devoid of distinctiveness and not capable of distinguishing the Appellant’s goods from those of others. The Appellant was also called upon to submit its response with documents, failing which the acceptance of the said Application shall be deemed to be withdrawn. The Appellant contested the Notice by filing its Reply dated 21.12.2024, wherein it was submitted that the Notice was not maintainable and that it was a review and / or appeal in guise and was unsubstantiated.

5. Subsequently, the Respondent scheduled a hearing, which was held on 20.02.2025. On 19.05.2025, the Respondent issued a fresh Examination Report and, thereafter, vide the Impugned Order, the Respondent refused the Appellant’s Application for the registration of the Appellant’s Mark.

6. Being aggrieved by the Impugned Order, the Appellant has preferred the present Appeal before this Court.

SUBMISSIONS ON BEHALF OF THE APPELLANT:

7. The learned Counsel for the Appellant submitted that the power to withdraw the acceptance of a Trade Mark application conferred upon the Registrar under Section 19 of the Act is discretionary in nature and not absolute. It is further submitted that this discretion must be exercised on just grounds and not in an arbitrary manner as Section 19 of the Act does not confer unfettered powers on the Registrar to withdraw acceptance in a whimsical manner.

8. The learned Counsel for the Appellant submitted that the Appellant was entitled to the Registration Certificate and Section 19 of the Act cannot be interpreted in a manner so as to curtail the said right accrued to the Appellant as pursuant to the acceptance and publication of the Appellant’s Mark, no opposition was received within the statutory time period.

9. The learned Counsel for the Appellant submitted that the First Examination Report dated 15.06.2023 issued against the Appellant’s Mark raised an objection under Section 9 of the Act, which was successfully responded by the Appellant, pursuant to which the Appellant’s Mark was accepted for registration vide order dated 10.04.2024 and published in the Trade Marks Journal No. 2153 dated 22.04.2024. It was further submitted that the adjudication regarding the objection raised under Section 9 of the Act had attained finality and proceedings under Section 19 could not have been initiated on the very same grounds.

10. The learned Counsel for the Appellant submitted that it is evident from a plain reading of Section 19 of the Act that the Respondent can only withdraw the acceptance and not dismiss or refuse t

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2025 Supreme(Online)(Del) 9608

IN THE HIGH COURT OF DELHI AT NEW DELHI
Tejas Karia, J
ASHIM KUMAR GHOSH – Appellant
Versus
THE REGISTRAR OF TRADE MARKS – Respondent
C.A.(COMM.IPD-TM)-48/2025

The court held that a trade mark consisting of ordinary words like 'SoEasy' can be suggestive and inherently distinctive if it requires imagination to link to the goods, and such marks are entitled to registration even without proof of secondary meaning.

Legal Category Hierarchy

Table of Contents

4. Does Section 19 of the Trade Marks Act allow the Registrar to withdraw acceptance of a trademark application after it has been accepted and published?

5. Does prior adjudication of objections under Section 9 bar fresh proceedings under Section 19?

6. What are the categories of trademarks for assessing distinctiveness, and how do they affect registrability?

7. Is the mark 'SoEasy' suggestive or descriptive for instructional and teaching materials?

8. Must a notice under Section 19 specify the particular subsection under which it is issued?

2025 Supreme(Online)(Del) 9608

IN THE HIGH COURT OF DELHI AT NEW DELHITejas Karia, JASHIM KUMAR GHOSH – AppellantVersusTHE REGISTRAR OF TRADE MARKS – RespondentC.A.(COMM.IPD-TM)-48/2025

The court held that a trade mark consisting of ordinary words like 'SoEasy' can be suggestive and inherently distinctive if it requires imagination to link to the goods, and such marks are entitled to registration even without proof of secondary meaning.

Legal Category Hierarchy

Table of Contents

4. Does Section 19 of the Trade Marks Act allow the Registrar to withdraw acceptance of a trademark application after it has been accepted and published?

5. Does prior adjudication of objections under Section 9 bar fresh proceedings under Section 19?

6. What are the categories of trademarks for assessing distinctiveness, and how do they affect registrability?

7. Is the mark 'SoEasy' suggestive or descriptive for instructional and teaching materials?

8. Must a notice under Section 19 specify the particular subsection under which it is issued?

IN THE HIGH COURT OF DELHI AT NEW DELHI
Tejas Karia, J
ASHIM KUMAR GHOSH – Appellant
Versus
THE REGISTRAR OF TRADE MARKS – Respondent
C.A.(COMM.IPD-TM)-48/2025