Uniqueness' Not A Statutory Test For Refusing Trademark Registration: Delhi High Court

The Delhi High Court has recently set aside an order refusing registration of the trademark 'OFFER' for alcoholic beverages.

It held that the Registrar of Trade Marks rejected the application by applying the non-statutory test of "uniqueness" instead of examining whether the mark was distinctive in relation to the goods for which registration was sought.

Justice Jyoti Singh was hearing an appeal filed by ADS Spirits, which had applied to register the mark OFFER in Class 33 for "alcoholic beverages, except beers; alcoholic preparations for making beverages."

The court held that the Registrar had applied the wrong legal standard.

"I am unable to discern the concept of 'uniqueness' in the statutory provision and therefore, as the Appellant rightly flags, a wrong test was applied by the Respondent to determine if the mark could be registered."

ADS Spirits, part of the ADS Group of Companies and the owner of brands including Royal Green Whisky and Double Blue Whisky, had filed the application in July 2022 on a proposed-to-be-used basis.

The Trade Marks Registry later objected to the mark, describing it as "a common surname/personal name/geographical name/ornamental or a non-distinctive geometrical figure." The company filed replies disputing the objection before the application was rejected in October 2025.

The court found that the examination report itself reflected non-application of mind. It observed that the objections appeared to have been lifted from a standard format without identifying which objection actually applied to the mark.

Observing that the examination report reflected non-application of mind, the court held, "The objection is rather strange and perhaps a standard pre-drafted format including every possible objection to reject registration without specifying whether the mark OFFER was perceived as a name of a person/surname or a geographical name or a geometrical figure. This is clearly indicative of non-application of mind even at the stage of issuing the Examination Report."

The court also held that the rejection order was "wholly non-speaking, unreasoned and cryptic" because it failed to consider the company's replies and supporting material.

Turning to the merits, the court observed that distinctiveness must be assessed in relation to the goods concerned. A mark may be descriptive for one category of goods but distinctive for another. It found that the Registrar had not undertaken that exercise.

On the test of distinctiveness, the court observed, "Respondent has not even entered into the exercise of examining the mark OFFER on this test."

The court also disagreed with the Registrar's view that the word "offer" simply conveyed a discount.

Explaining why that reasoning was flawed, the court observed, "Offer and discount are not synonymous. An offer is a proposal or invitation to transact. Discount is to reduce the price."

The court quashed the refusal order and directed the Registrar to reconsider the application within four months after granting ADS Spirits a hearing. It clarified that it had not expressed any opinion on whether the mark should ultimately be registered.