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Court Case Bulletin (CCB): Slogans Face A High Bar For Proving Acquired Distinctiveness In Trademark Registration
Author: Adyanshi Kashyap
In the matter of Oswaal Books and Learnings Private Limited vs. The Registrar of Trade Marks [C.A.(COMM.IPD-TM) 19/2024], a Single Judge [Mini Pushkarna, J.] of the High Court of Delhi, vide judgment dated May 28, 2025, dismissed the appeal filed under Section 91 of the Trade Marks Act, 1999 (the “Act”), and upheld the Registrar’s decision to refuse registration of the Appellant’s slogan mark ONE FOR ALL (“Mark”) filed claiming use since 2020. The Court held that the Appellant failed to meet the statutory and evidentiary requirements for registration of the Mark, finding it to be descriptive, widely used, and lacking both inherent and acquired distinctiveness required for registration under Section 9(1).
The proviso of Section 9(1) of the Act, sets out the exception to absolute grounds for refusal of registration of a trademark, stating that, “…Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark”. The key question of law was whether a slogan mark comprised of common words has a higher threshold of proving that it has acquired distinctiveness or secondary meaning through extensive use so as to identify the said mark with the products of the Appellant.
The Appellant, a publisher of study materials that caters to all segments of students, for all leading boards and competitive examinations, claimed that the Mark had been used continuously since 2020 across both offline and online platforms and had, through sales and promotion, come to identify its books. The Registrar of Trade Marks refused registration under Section 9(1)(a), finding that the Mark lacked distinctiveness, as it comprised common words that could not be monopolized by an individual.
The Court observed that the Mark is a common phrase of the English language, which in context of books designed for multiple boards and examinations, merely suggests that the mark is descriptive, and also lacked inherent distinctiveness. On the claim of acquired distinctiveness, the Court found the Appellant’s evidence insufficient. The sales and promotional figures largely pertained to the mark OSWAAL BOOKS, with Mark appearing only as a tagline in association with the main brand. There was no material to show that consumers identified the Mark as an independent source identifier.
The Court dismissed the appeal, reiterating that registration of slogans or common expressions requires clear evidence that they have become uniquely associated with the applicant’s goods, and held that, “Thus, it is evident that slogans, particularly, those which are descriptive or commonly used phrases, face a significantly high threshold for registration, unless they have acquired a secondary meaning…merely placing a slogan prominently on goods or advertisements, does not suffice to establish the same, as a source identifier, unless consumers have come to associate that phrase uniquely with the applicant’s goods or services.”
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