Case Note & Summary
The High Court of Bombay addressed two Commercial Miscellaneous Petitions challenging the rejection of trademark applications for 'ICE CREAM ROCKS' by Graviss Foods Private Limited. The applications were submitted on January 17, 2024, but were rejected by the Registrar of Trade Marks on December 23, 2025, due to objections under Sections 9(1)(a) and 11(1) of the Trade Marks Act, 1999. The Registrar found that the Subject Mark was not inherently distinctive, being descriptive and laudatory, and thus incapable of distinguishing the goods from those of others. The Petitioner argued that the Impugned Orders lacked adequate reasoning and that the mark had acquired distinctiveness through use since June 10, 2023. However, the court noted that the mark was a simple combination of generic words and did not reference the established brand 'Baskin Robbins', under which the products were marketed. The court emphasized that generic terms cannot be monopolized and that the burden of proving acquired distinctiveness lies with the Petitioner. Ultimately, the court upheld the Registrar's decision, stating that the Subject Mark was not eligible for registration under Section 9 due to its descriptive nature and lack of distinctiveness, rendering the arguments under Section 11 moot. The court concluded that the petitions did not warrant appellate intervention and were dismissed without interference with the Impugned Orders.
Headnote
A) Trademark Law - Distinctiveness - Registration Refusal - Trade Marks Act, 1999, Sections 9(1)(a), 9(1)(b) - The Subject Mark was deemed devoid of distinctiveness as it was descriptive and laudatory, failing to distinguish the goods from others. The court upheld the Registrar's decision, emphasizing that generic terms cannot be monopolized without acquired distinctiveness. Held that the mark did not meet the requirements for registration (Paras 24-27). B) Trademark Law - Likelihood of Confusion - Registration Refusal - Trade Marks Act, 1999, Section 11(1) - The court found no sufficient analysis of similarity with existing marks, but concluded that the Subject Mark was not registrable under Section 9, rendering Section 11 irrelevant. The court noted that the mark could not claim distinctiveness based on its usage (Paras 33-38).
Issue of Consideration
Whether the Subject Mark 'ICE CREAM ROCKS' is eligible for registration under the Trade Marks Act, 1999.
Final Decision
The High Court upheld the Registrar's decision to reject the trademark applications for 'ICE CREAM ROCKS' under Sections 9(1)(a) and 11(1) of the Trade Marks Act, 1999, concluding that the mark was descriptive and lacked distinctiveness.
Law Points
- Trademark registration
- distinctiveness
- descriptive marks
- acquired distinctiveness
- likelihood of confusion
