Suggestive Mark Capable Of Registration Under Trade Marks Act: Delhi High Court Allows Appeal, Sets Aside Refusal Of “SoEasy” Trademark For Hindi Learning Platform
Safiya Malik
The High Court of Delhi Single Bench of Justice Tejas Karia has set aside the Trade Marks Registrar’s decision refusing registration of the mark “SoEasy” for instructional materials used on a Hindi language learning and testing platform, holding that the expression is suggestive rather than descriptive and thus capable of trademark protection under the Trade Marks Act. In an appeal filed by the applicant against the Registrar, the Court concluded that the mark does not directly describe the qualities or characteristics of the goods in Class 16 and therefore is inherently capable of distinguishing the applicant’s products. The Court directed the Registrar to proceed with examination and registration formalities on the pending application in accordance with law.
The appellant filed Trade Mark Application No. 5799569 in Class 16 for the mark ‘SoEasy’ on 02.02.2023 for instructional and teaching material, printed matter and bookbinding material. The Registrar issued an Examination Report dated 15.06.2023, to which the appellant submitted a reply on 01.07.2023. The application was accepted on 10.04.2024 under Section 20(1) with the condition that the mark must be used as a whole, and was subsequently advertised in Trade Marks Journal No. 2153 dated 22.04.2024.
On 16.12.2024, the Registrar issued a notice under Section 19 stating that the mark had been accepted in error on the ground that it was devoid of distinctiveness and not capable of distinguishing the appellant’s goods. The appellant filed a reply on 21.12.2024 disputing the maintainability of the notice. A hearing took place on 20.02.2025, after which a fresh Examination Report was issued, followed by the impugned order dated 20.05.2025 refusing registration of the mark.
The appellant argued that Section 19 confers only discretionary, not unfettered, power; that acceptance followed by publication created an entitlement to registration in the absence of opposition; that objections under Section 9 raised earlier were already adjudicated; and that the mark was distinctive, invented, and suggestive. The respondent submitted that the notice was issued under Section 19 as a whole; that refusal was permissible since registration is always subject to Section 19; and that the mark was laudatory, generic, non-distinctive, and fell under Section 9(1).
The appeal concerned two issues: (i) whether refusal complied with Section 19; and (ii) whether the Registrar erred in finding the mark non-distinctive under Section 9(1).
The Court recorded that Section 23(1), by its opening words “subject to the provisions of section 19,” makes it clear that even where no opposition is filed, acceptance and advertisement do not create a vested right to registration. The Court stated that “the Respondent has the power under Section 19 of the Act to withdraw acceptance at any stage before issuing the Registration Certificate.”
Regarding the scope of the notice, the Court observed that it did not specify sub-section (a) but was issued “under Section 19 of the Act entirely and not restricted to Section 19(a) of the Act alone.” The Court further stated that “Section 19 of the Act does not impose any bar on the Registrar to revisit and examine the acceptance even though the same grounds have been adjudicated upon previously while granting acceptance.”
On the purpose of Section 19, the Court recorded that “the intent of Section 19 of the Act is to maintain the purity of the Register of Trade Marks and weed out any error that might have crept in while giving acceptance.” It held that the Registrar’s exercise of power under Section 19 was procedurally valid.
Turning to distinctiveness, the Court referred to Section 9(1) and noted that marks devoid of distinctiveness or consisting exclusively of indications describing characteristics of goods cannot be registered except under the proviso. It noted the legal distinction between descriptive, generic, suggestive, arbitrary, and fanciful marks as explained in Teleecare Network (India) Pvt. Ltd. v. Asus Technology Pvt. Ltd.
The Court recorded that the appellant provided instructional and teaching material for learning, teaching, and testing Hindi language, and observed that the mark ‘SoEasy’ in that context “suggests that the learning, teaching and testing of Hindi language would be made easy and uncomplicated or would require minimal effort.” It stated that consumers would require “a mental leap to draw a connection between the Appellant’s Mark and the product sold or services provided” and that “the words ‘So’ and ‘Easy’ juxtaposed together… would not immediately be reminiscent of the Appellant’s product or service.”
The Court held that the mark is “not descriptive of the qualities, ingredients or characteristics of the Appellant’s product” and that “suggestive Trade Marks are liable to be protected under the Act.”
The Court stated: “the present Appeal is hereby allowed and the Impugned Order passed by the Respondent in Trade Mark Application No. 5799569 in Class 16 for the Mark ‘SoEasy’ is set aside.”
“The Respondent is directed to proceed with Appellant’s Application No. 5799569 in Class 16 for the registration of the Appellant’s Mark ‘SoEasy’ in accordance with the provisions of the Act and the Trade Marks Rules, 2017.” The Court also directed the Registry to provide a copy of the order to the Trade Marks Registry through email and through counsel for the respondent. “Pending Applications also stand disposed.”
Advocates Representing The Parties
For the Appellant: Mr. Sudarshan Kumar Bansal, Advocate; Mr. Shivendra Pratap Singh, Advocate.
For the Respondent: Mr. Piyush Beriwal, Advocate; Mr. Vedansh Anand, Advocate; Ms. Ruchita Srivastava, Advocate; Ms. Jyotsana Vyas, Advocate.
Case Title: Ashim Kumar Ghosh v. The Registrar of Trade Marks
Neutral Citation: 2025: DHC:10350
Case Number: C.A.(COMM.IPD-TM) 48/2025
Bench: Justice Tejas Karia
