BharatStamp Is a Self-Created, Arbitrary and Fanciful Word’: Delhi High Court Sets Aside Trademark Refusal, Holds Mark Inherently Distinctive and Fit for Registration
Sanchayita Lahkar
The High Court of Delhi, Single Bench of Justice Saurabh Banerjee, has set aside the order dated 02.01.2024 passed by the Senior Examiner of Trade Marks, Trade Mark Registry, New Delhi, and permitted the trademark application for the registration of the composite mark "BharatStamp" to proceed.
The judgment came in response to an appeal filed under Section 91 of the Trade Marks Act, 1999, read with Rule 156 of the Trade Marks Rules, 2017, seeking reversal of the refusal of registration on grounds that the mark lacked distinctiveness.
The appellant, Grey Swift Private Limited, applied on 20.02.2021 for registration of the word mark "BharatStamp" under Class 9 on a 'proposed to be used' basis. The Registrar issued an Examination Report on 20.03.2021 objecting under Section 9(1)(a), asserting that the mark was non-distinctive and incapable of distinguishing the goods or services of the applicant from those of others.
Subsequently, on 02.01.2024, the Senior Examiner passed an order rejecting the application, recording: "The mark applied for registration is objectionable under S 9(1)(a) ... it is devoid of any distinctive character... the mark is well-within the public domain and common in use."
Challenging this, the appellant argued that the mark "BharatStamp" constituted a novel juxtaposition of the Sanskrit-derived proper noun "Bharat" and the polysemous English term "Stamp". The appellant submitted that the word combination created an arbitrary and fanciful mark that does not directly point to the nature of its goods, thereby qualifying as inherently distinctive.
Counsel for the appellant cited precedents including Global Super Parts v. Blue Super Flame Industries, Ticona Polymers, Inc. v. Registrar of Trade Marks, and Mikko Vault LLC v. Registrar of Trade Marks, to assert that composite marks must be evaluated as a whole and not dissected into components. Reliance was placed on the Supreme Court judgment in T.V. Venugopal v. Ushodaya Enterprise Ltd. & Anr., stating that a mark should be viewed in its entirety.
Additionally, the appellant submitted that "BharatStamp" fell under the 'suggestive' category of trademarks, requiring imagination to associate it with the underlying goods, and was therefore inherently registrable. The counsel stated: "It requires some degree of imagination, thought and perception to reach a conclusion as to the nature of goods."
The appellant also contended that even if considered descriptive, the mark had acquired a secondary meaning due to continuous use over six years, marquee clientele of over 300 institutions, and recognition including empanelment by the State of Rajasthan. To support this, cases including Ishi Khosla v. Anil Aggarwal, Info Edge (India) Pvt. Ltd. v. Shailesh Gupta, and Zydus Wellness Products Limited v. Cipla Health Ltd. were cited.
In rebuttal, counsel for the Registrar submitted that "BharatStamp" was not distinctive and failed to identify the source of goods or services, referencing Telecare Network India Pvt. Ltd. v. Asus Technology Pvt. Ltd. and Ilu v. Asian Hobby Crafts LLP. It was further submitted that since the mark was filed on a "proposed to be used" basis, claims of acquired distinctiveness post-application date could not be entertained.
Justice Saurabh Banerjee recorded that as per Section 9(1)(a) of the Trade Marks Act, a trademark must be capable of distinguishing the goods or services of one person from another. The Court found that "BharatStamp" being a coined, self-created, and non-dictionary term was inherently distinctive:
"Though the 'BharatStamp' of the appellant is a combination of two words... they cannot be dissected... the said 'BharatStamp' is also neither a colloquial term nor which is/ can be found in the Dictionary... it is, in fact, purely a self-created, arbitrary and fanciful word coined by the appellant."
Referring to F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd., the Court quoted:
"The resulting combination produces a new word... a newly coined word which does not remind an ordinary person knowing English of the original words... It follows that the word... being an invented word was entitled to be registered."
The Court further observed from McCarthy on Trademarks: "A combination of generic terms may result in a composite mark that itself is not generic... the whole composite may create a distinct commercial impression that is more than just the sum of its parts."
Justice Banerjee also relied on the principle of anti-dissection, stating: "The principle of anti-dissection is now well-settled... the mark cannot be dissected into its individual parts while examining its entitlement to registration."
Considering the evidence and precedents, the Court concluded: "The said mark 'BharatStamp'... would require a higher degree of imagination for the average consumer to come to that conclusion. The said mark... is, thus, inherently distinctive."
On the issue of secondary meaning, the Court recorded that distinctiveness may be acquired before actual registration. Citing Marico Limited v. Agro Tech Foods Limited, it stated: "The terminus ad quem fixed by the proviso to Section 9(1), of the date of application... stands statutorily extended by Section 31(2) to the date of registration..."
The Court also noted that similar word marks such as BharatPe, Bharat ScanPay, BHARAT VISION, and device marks like B BHARAT BIJLEE were previously registered by the same authority.
The Court allowed the appeal and set aside the impugned order dated 02.01.2024. It directed: "The mark 'BharatStamp' applied for registration vide trademark application no.4872027 by the appellant is liable to proceed for registration."
It was also clarified: "The registration of the composite mark 'BharatStamp' shall not confer any exclusive right over any individual component/ part of the mark i.e., 'Bharat' or 'Stamp' upon the appellant herein."
"A copy of this judgment be forwarded to the Registrar of Trade Marks for compliance."
Advocates Representing the Parties:
For the Petitioner: Mr. Siddharth Nath, Mr. Asjad Hussain, and Mr. Anunay Chowdhary
For the Respondent: Ms. Rukhmini Bobde (CGSC) with Mr. Jatin Dhamija, Mr. Amlaan Kumar, and Mr. Vinayak Aren
Case Title: Grey Swift Private Limited v. The Registrar of Trade Marks
Neutral Citation: 2025: DHC:2609
Case Number: C.A.(COMM.IPD-TM) 18/2024
Bench: Justice Saurabh Banerjee
[Read/Download order]
