When Description is NOT Disqualification: Delhi High Court rules in favour of Composite Marks

By Ananyaa Banerjee and Samridhi Chugh

The jurisprudence surrounding the concept of ‘descriptiveness’ under the Indian trademark law has been witnessing renewed judicial attention in recent months. With brands increasingly using semi-descriptive and suggestive trade marks to retain consumer recall value, the question of where descriptiveness ends and distinctiveness begins has become critical to the questions of registrability and enforcement.

It is in a similar vein that the Hon’ble Delhi High Court, in a recent interim order in the case of Sudeep Gupta v. Registrar Of Trademarks, Trademarks Registry,[1] clarified the scope of Section 9(1)(b) of the Trade Marks Act, 1999. Staying the cancellation of a registered mark on the ground that it was a composite mark and not exclusively descriptive, the Court has reaffirmed that there can be no overbroad application of absolute grounds of refusal against bonafide proprietors of marks which have acquired distinctiveness otherwise in the market.

Background: A Registered Trade Mark’s Unreckoned Cancellation

• The case revolved around the cancellation of a trade mark “”/ “STORE MY GOODS” applied by Sudeep Gupta, (“the Appellant”), in Class 39, which was said to be in continuous use since July 19, 2020 and was granted registration in June 2024.
• A year after its registration, the Registrar of Trade Marks passed an order under Section 57 (4) of the Trade Marks Act, 1999, in May 2025, cancelling the erstwhile registration, on the ground that the mark was descriptive in nature, using the word “STORE” in relation to transport and storing services in Class 39, in contravention of Section 9(1)(b) of the Act.
• As per Section 9(1)(b), trade marks “…which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service” cannot be registered.
• However, the proviso to Section 9 also allows the registration of such marks, among others, “…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 Appellant then preferred an appeal under Section 91 of the Act before the Hon’ble Delhi High Court, seeking a stay on the operation of this impugned order.

Key Issues in Conflict

• Whether a composite mark can be cancelled as descriptive under Section 9(1)(b) of the Trade Marks Act, 1999, without its assessment as a whole.
• Whether the requirement that the mark be “exclusively” descriptive was satisfied, permitting cancellation under Section 57 of the Act?
• Whether the Registrar was justified in disregarding the evidence of continuous and bonafide use while ordering the mark’s cancellation.

Contentions of the Appellant

The Appellant challenged the impugned order of the Registrar on multiple grounds:

• Misapplication of Section 9(1)(b): The Appellant strongly argued that Section 9(1)(b) bars registration only where a mark consists exclusively of descriptive elements. The Registrar, by dissecting the mark and focusing on individual descriptive components had ignored the settled principle that composite marks must be assessed as a whole.
• Failure to Consider Evidence of Use: The Appellant pointed out that the detailed evidence of use since 2020, filed in reply to the notice issued under Section 57(4) of the Act, including a user affidavit, supporting invoices, and proof of awards and recognitions, was not considered by the Registrar, rendering the impugned order arbitrary.
• Irreparable Harm: The Appellant further contended that allowing the cancellation would cause him irreparable commercial and reputational harm, particularly as the mark had already acquired goodwill and recognition in the market.

Key Ruling: The Abu Dhabi Case

• The Appellant heavily relied on the judgment in Abu Dhabi Global Market v. The Registrar of Trademarks, Delhi,[2] wherein the Court had categorically held that composite marks stood excluded from the scope of Section 9(1)(b), even if parts of the mark were descriptive.
• In this case, the mark “ABU DHABI GLOBAL MARKET” was granted the green light by the Court as it observed that it was a composite mark and rejected the argument that “ABU DHABI” formed its dominant part.
• The Court had also held that the principle of “dominant part” was alien to Section 9(1)(b), which was parsed in a language that pressed for the consideration of a mark as a whole, using the word ‘exclusively’. Thus, only if the entire mark exclusively fell within the contours envisaged under Section 9(1)(b), the registration of the mark would be disallowed.

Court’s Decision: Cancellation Stayed

• The Court found that the Appellant had successfully established a prima facie case for the grant of interim relief.
• The Court observed that the mark “”/ “STORE MY GOODS” appeared to be a composite mark, and therefore, the application of Section 9(1)(b) was prima facie
• It also observed that the Appellant had successfully demonstrated its long-standing use since 2020, and its grant of registration in 2024 further tilted the balance of convenience in its favour.
• Thus, on the basis that irreparable injury would be caused to the Appellant otherwise, the Court stayed the cancellation order.

Broader Implications – Further Push to the Rule of Entirety

As a larger implication, the above interim order effectively reinforces the rule of entirety, which has been statutorily recognized under Section 17 of the Act, providing for the comparison of marks as a whole.

Earlier Decisions on the Issue

The order in Sudeep Gupta also joins a series of other past judicial decisions which have reaffirmed that composite marks are not to be dissected for the determination of descriptiveness, so as to proscribe the mark from registration. They are as follows:

• Umang Dairies Limited v. Registrar Of Trade Marks:[3] In this case, the Hon’ble Delhi High Court had held that the while the term “WHITE” in the mark “WHITE MAGIK” was descriptive in relation with milk, the resulting composite mark did not relate to any of the goods to which the subject mark was applied, holding that the mark was not descriptive but merely suggestive in nature.
• Rajni Gupta Trading As Guru Kripa Chemico Industries v. The Registrar Of Trade Marks:[4] Here, the Court allowed the registration of a composite mark comprising the terms “DOCTOR’S” and “CHOICE”, holding that when viewed as a whole, the mark could not be considered descriptive, and thus, not attract the objection under Section 9(1)(b).
• Navaid Khan v. Registrar of Trade Marks Office:[5] Reiterating the entirety principle, the Court in this case held “CruzOil” to be a composite mark and thus, excluded from the ambit of Section 9(1)(b). Relying on the judgment in Abu Dhabi, the court held that the use of the term ‘Oil’ by the Appellant in respect of goods in Class 04, cannot deem the mark descriptive and unregistrable, when the mark in the entirety comprised a combination of words and devices. Thus, the Court opined that the dissection of the subject mark into individual marks was erroneous on the part of the Registrar.
• Khadi and Village Industries Commission v. The Registrar of Trade Marks:[6] More recently, the Hon’ble Bombay High Court in this case directed the immediate registration of the mark “KHADI PRAKRITIK PAINT”, placing reliance on the case of Abu Dhabi as well as on the Supreme Court’s decision in Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., AIR 1955 SC 558, wherein it was held that “when a trademark consists of multiple elements, its distinctiveness must be determined by evaluating it as a whole, rather than in fragmented parts.”

Final Thoughts

• The Court in the present interim order, while staying the cancellation of the mark’s registration, has recognized the relevance of continuous commercial use and reaffirmed the rule of entirety.
• It has struck a balance between protecting terms that are publici juris (public rights) and composite marks which harbor bonafide proprietory interests.
• The order also emphasizes that cancellation of a mark is not a tool to be used without a comprehensive analysis of the facts of the case in tandem with settled legal principles, but a remedy to be exercised with caution.

Practical Suggestions for Brand Owners

• Adopt a composite branding strategy: Pair potentially descriptive terms with distinctive elements, such as coined words, logos and unique stylization, to strengthen chances of the trade mark’s registrability.
• Meticulously document use: Maintain invoices, advertisements, digital presence and affidavits to demonstrate continued, bonafide use.
• Avoid over-reliance on descriptive claims: While descriptiveness may be commercially attractive, ensure that the brand allows distinctiveness to develop.
• Act swiftly against adverse orders: Seek appellate remedies and interim protection promptly to prevent irreversible commercial harm.

[1] C.A.(COMM.IPD-TM) 78/2025

[2] Neutral Citation: 2023:DHC:3476

[3] C.A.(COMM.IPD-TM) 145/2021

[4] C.A.(COMM.IPDTM)33/2021

[5] 2023 SCC OnLine Del 3273

[6] 2025:BHC-OS:1308