For trademarks filed on a proposed-to-be-used basis, evidence of secondary meaning is not required. Trademarks must be analyzed as a whole rather than being dissected into common constituent words, and any denial of registration must be supported by reasoned findings rather than conjecture.

JUDGMENT

TEJAS KARIA, J

1. This is an Appeal filed by the Appellant under Section 91 of the Trade Marks Act, 1999 (“Act”) and Rule 156 of the Trade Marks Rules, 2017 (“Rules”) read with the Delhi High Court Intellectual Property Rights Division Rules, 2022, seeking setting aside of the order dated 24.01.2025 (“Impugned Order”) passed by the learned Senior Examiner of Trade Marks refusing registration of the Trade Mark “DOUBLE-CHOICE” (“Appellant’s Mark”) bearing Application No. 5987240 in Class 30.

FACTUAL BACKGROUND:

2. The Appellant is engaged in the business of trading of rice, flour and preparations made from cereals. On 20.06.2023, the Appellant filed an Application bearing No. 5987240 for the registration of the Appellant’s Mark on a proposed-to-be-used basis in Class 30.

3. Vide Examination Report dated 06.11.2023, objections were raised under Section 9(1)(a) of the Act claiming that the Appellant’s Mark is devoid of distinctive character, in addition to Section 9(1)(b) of the Act claiming that the Appellant’s Mark consists exclusively of words or indications which may serve in trade to designate the characteristics of the goods.

4. In response to the said Examination Report, the Appellant filed its detailed reply dated 12.11.2023 addressing the objections raised in the examination report. Thereafter, the matter was heard on 12.11.2024 and vide the Impugned Order, the Appellant’s application for the registration of the Appellant’s Mark was refused.

5. Aggrieved by the Impugned Order, the present Appeal has been filed by the Appellant.

SUBMISSIONS ON BEHALF OF THE APPELLANT:

6. The learned Counsel for the Appellant submitted that the Respondent rejected the application for the registration of the Appellant’s Mark on the ground that it was non-distinctive in nature without providing any reasoning for the said finding. It is further submitted that the Impugned Order merely states the conclusion that the Appellant’s Mark is non-distinctive without explaining why it cannot distinguish the Appellant’s goods from those of others. Therefore, the Impugned Order is in violation of principles of natural justice.

7. The learned Counsel for the Appellant relied upon this Court’s decision in Abu Dhabi Global Market v. Registrar of Trademarks , 2023 SCC OnLine Del 2947 to submit that an order refusing registration on the ground of lack of distinctiveness must contain reasoned finding demonstrating why the mark is incapable of distinguishing goods / services for which it is used.

8. The learned Counsel for the Appellant submits that the Respondent erroneously demanded proof of ‘acquired distinctiveness’ and ‘secondary meaning’ for the Appellant’s application for the registration of the Appellant’s Mark even when it was explicitly filed on a proposed-to-be-used basis, which is a paradoxical requirement. The learned Counsel for the Appellant relied upon this Court’s decision in Abu Dhabi Global Market (supra) to further submit that for an application filed on a proposed-to-be-used basis, evidence of acquired distinctiveness or secondary meaning cannot be demanded as the statutory recognition of proposed-to-be-used applications under Section 18(1) of the Act would be rendered meaningless if the evidence of market use is required.

9. The learned Counsel for the Appellant submitted that the Respondent erroneously held that the