Trade Marks Act | Generic Or Descriptive Terms Without Acquired Distinctiveness Cannot Be Monopolized Through Registration: Bombay High Court

"Generic, descriptive or laudatory terms, particularly those commonly used in a given trade, cannot be monopolised and the protection by registration does not extend to such elements per se unless it is affirmatively shown that they have acquired secondary meaning." Bombay High Court, in a ruling dated September 16, 2026, held that generic or laudatory trade marks that fail to demonstrate acquired distinctiveness cannot be granted registration, as they must remain available for bona fide use by all traders.

Dismissing a challenge to the rejection of the trade mark "ICE CREAM ROCKS," a bench led by Justice Somasekhar Sundaresan observed that the court's appellate jurisdiction under Section 91 of the Trade Marks Act, 1999, allows it to evaluate the core merits of a rejection even where the Registrar’s order lacks detailed articulation.

Graviss Foods Private Limited, the petitioner, challenged two orders passed by the Registrar of Trade Marks refusing the registration of the mark "ICE CREAM ROCKS" in Class 29 and Class 35. The Registrar had cited Sections 9(1)(a) and 9(1)(b) of the Trade Marks Act, noting that the mark was devoid of inherent distinctiveness and was descriptive of the goods. While the petitioner argued that the Registrar’s orders were cryptic and "boilerplate," the High Court undertook a substantive analysis of the mark’s eligibility for registration.

The primary legal issue before the court was whether the mark "ICE CREAM ROCKS," when viewed as a whole, possesses the requisite distinctiveness to merit registration, and whether the petitioner had provided sufficient evidence of "acquired distinctiveness" to overcome the absolute grounds for refusal under Section 9 of the Act.

Court Assesses Inherent Distinctiveness

The Court analyzed whether the combination of "ICE CREAM" and "ROCKS" could function as a distinctive trade mark. It observed that the petitioner sought a monopoly over the phrase "ICE CREAM ROCKS," despite their actual market usage often being in conjunction with the "Baskin Robbins" house mark. The Court held that simply combining two words does not automatically create an invented or distinctive mark.

No Monopoly On Generic Terms

The Court emphasized that Sections 9(1)(a) and 9(1)(b) exist to prevent the monopolization of terms that describe the kind, quality, or characteristics of goods. Because "ICE CREAM ROCKS" serves to describe the nature and quality of the product—implying either the shape of the ice cream or a laudatory claim of excellence—it remains ineligible for protection as a word mark.

"The Subject Mark speaks for itself in how it is indistinctive to differentiate between the goods or services of the Petitioner from the goods or services of any other person. Merely adding ‘ROCKS’ to ‘ICE CREAM’ does not turn the needle in favour of making the Subject Mark capable of acquiring a distinctive character."

Rejection Of Acquired Distinctiveness Claims

Regarding the proviso to Section 9, the Court examined the Affidavit of User provided by the petitioner. It noted that the application was filed merely seven months after the claimed commencement of use. The Court concluded that such a short period of use, particularly when the mark was consistently used with the "Baskin Robbins" differentiator, was insufficient to establish that the public perceived the term "ICE CREAM ROCKS" as an independent, distinctive brand.

"The length of usage of the Subject Mark at the time of the applications does not inspire confidence in the claim of acquired distinctiveness. The applications have been filed within seven months of the commencement of claimed usage."

Irrelevance Of Section 11 Objections

The petitioner had argued that the Registrar’s reliance on Section 11 (relative grounds for refusal based on existing marks) was flawed due to a lack of benchmarking. The Court observed that because the mark failed to cross the "absolute hurdle" of Section 9, the arguments regarding Section 11 and potential confusion with existing marks became academic and unnecessary to decide.

Call For Procedural Improvement

Before concluding, the Court expressed concern regarding the quality of orders passed by the Registrar’s office. It noted that many such orders lack proper formatting, paragraph numbering, and legible font sizes, which creates significant hurdles for the administration of appellate review. The Court directed that these observations be brought to the attention of the leadership governing the Registrar’s offices to ensure better quality in decision-making.

The High Court ultimately found no merit in the petitions, affirming the Registrar’s decision to refuse registration on the grounds that the mark was neither inherently distinctive nor had it acquired secondary meaning in the market.

Date of Decision: 16 September 2026