Common Phrases as Trade Marks – Delhi High Court Sets a Rigorous Proof-of-Distinctiveness Standard in Oswaal Books & Learnings Pvt. Ltd. v. Registrar of Trade Marks (2025)

1. Introduction

In Oswaal Books and Learnings Pvt. Ltd. v. Registrar of Trade Marks, the Delhi High Court revisited the perennial debate surrounding registrability of everyday expressions and advertising slogans as trade marks. The appellant sought registration of the phrase “ONE FOR ALL” in Class 16 for educational books. The Registrar refused the application on absolute grounds under s. 9(1)(a) Trade Marks Act, 1999, holding the phrase devoid of inherent distinctiveness. Justice Mini Pushkarna, sitting in appeal under s. 91, dismissed the challenge, crystallising a rigorous evidentiary benchmark that applicants must cross when claiming distinctiveness for common phrases.

Key Facts at a Glance

• Applicant: Oswaal Books & Learnings Pvt. Ltd.—publisher of guidebooks for multiple school boards and entrance exams.
• Applied Mark: “ONE FOR ALL” (word mark) – use claimed since 20 Aug 2020.
• Ground of Refusal: s. 9(1)(a): mark devoid of distinctive character. Registrar held phrase is common, descriptive, incapable of functioning as source identifier.
• Appeal Issue: Whether applicant adduced sufficient material to show acquired distinctiveness / secondary meaning so as to overcome the s. 9(1)(a) bar.

2. Summary of the Judgment

The Court affirmed the Registrar’s refusal. Critical findings include:

1. “ONE FOR ALL” is an ordinary English expression that conveys a descriptive commercial message, especially for study material aimed at “all” exams and boards.
2. To defeat s. 9(1)(a) an applicant must prove acquired distinctiveness through cogent evidence. Oswaal’s sales figures, CA certificates and promotional materials predominantly related to the house mark “OSWAAL BOOKS”, not to “ONE FOR ALL” used per se.
3. Use of the phrase always in conjunction with “OSWAAL BOOKS” or other elements negated independent recognition.
4. Mere popularity of the phrase in literature (motto of “Three Musketeers”) shows it is part of common parlance, further diluting distinctiveness.
5. Consequently, no interference with the Registrar’s decision; the appeal was dismissed.

3. Analytical Commentary

3.1 Precedents and Authorities Considered

• Evergreen Sweet House v. Ever Green (Del HC 2008): distinguished; concerned arbitrary mark for unrelated goods; here phrase is descriptive.
• Telecare Network v. ASUS (Del HC 2019): dealt with coined juxtaposition; Court held present phrase not coined but common.
• Ilua Sole Prop. v. Asian Hobby Crafts (Del HC 2024): reiterated that generic/descriptive terms cannot be monopolised.
• Institute of Directors v. Worlddevcorp (Del HC 2023): words of ordinary English usage barred unless secondary meaning proved.
• Doctrinal reference: McCarthy on Trademarks §7:19 & §7:23, emphasising “failure to function” doctrine for slogans.

3.2 Legal Reasoning Dissected

1. Section 9(1)(a) Threshold
   The Court reiterates that marks incapable of distinguishing goods/services ab initio are barred. Slogans fall within same scrutiny; only if inherently distinctive or secondarily distinctive are they registrable.
2. Descriptiveness of “ONE FOR ALL”
   The mark communicates a universal applicability of the books – effectively describing purpose/character. Hence not arbitrary or suggestive but descriptive.
3. Secondary Meaning Test
   Evidence must establish that relevant consumers perceive the phrase as indicating single commercial source. The Court found:
   • Invoices showed sparse standalone use.
   • CA certificates lumped sales of all Oswaal titles; causative link to applied mark missing.
   • Promotional material presented phrase always with house mark.
   Result: failure to prove secondary meaning.
4. Public Domain Consideration
   Reference to Alexandre Dumas’ “All for one, one for all” demonstrates phrase’s entrenched public usage, supporting conclusion that exclusivity would unfairly deplete language commons.

3.3 Impact of the Decision

4. Complex Concepts Simplified

• Inherent Distinctiveness Spectrum
  • Generic (e.g., “BOOK”) – never registerable.
  • Descriptive (“ONE FOR ALL” for universal guidebook) – registerable only with secondary meaning.
  • Suggestive (“PENGUIN” for refrigerated goods) – inherently distinctive.
  • Arbitrary (“APPLE” for computers) – strongest.
  • Fanciful/Coined (“EXXON”) – strongest.
• Secondary Meaning / Acquired Distinctiveness
  Consumer association overtime between descriptive word and single source – proven through market surveys, length/extent of use, advertising spend, media recognition.
• “Failure to Function” Doctrine
  Even if a phrase is used prominently, if public perceives it only as information or puffery (e.g., “DRIVE SAFELY”), it fails to function as a trade mark.
• Absolute vs. Relative Grounds
  Absolute grounds (s. 9) relate to intrinsic registrability of the sign; relative grounds (s. 11) deal with conflicts with prior marks.

5. Conclusion

The Delhi High Court’s decision in Oswaal Books pushes the pendulum firmly towards linguistic openness, foreclosing private ownership of everyday phrases unless an applicant clears the high bar of acquired distinctiveness with cogent, phrase-specific proof. By demanding rigorous evidence and emphasising “failure to function” principles, the Court aligns Indian jurisprudence with global best practices that protect both consumer clarity and the commons of language. For brand strategists and IP practitioners, the message is clear: inventiveness pays. Choose marks that are inherently distinctive, or be prepared to shoulder a heavy evidentiary burden.