Minor Additions Do Not Cure Deceptive Similarity: “FRESH NOT FROZEN” Refused Against Prior “FRESH N FROZEN” in Class 35

1. Introduction

This decision of the Madras High Court in M/s. Freshtohome Foods Private Limited v. The Registrar of Trade Marks (Neutral Citation: 2026 MHC 1; decided on 18-12-2025) arose from an appeal under Section 91 of the Trade Marks Act, 1999 (originally filed before the Intellectual Property Appellate Board and later transferred to the High Court).

The appellant sought registration of the mark “FRESH NOT FROZEN” in Class 35 for online retail store services featuring various food items. The Trade Marks Registry objected under Section 9(1)(a), 9(1)(b) and Section 11(1), and ultimately refused the application by order dated 26.04.2019. The central issue before the Court was whether “FRESH NOT FROZEN” was deceptively similar to the already registered mark “FRESH N FROZEN” in the same class, such that refusal under Sections 9 and 11 was justified.

2. Summary of the Judgment

The Court dismissed the appeal and upheld the Registrar’s refusal. It found that:

  • There existed a prior registered mark “FRESH N FROZEN” in Class 35.
  • The appellant’s mark “FRESH NOT FROZEN”, sought for similar food-related services in the same class, was deceptively similar on a “cursory look” and from the standpoint of ordinary consumers.
  • The difference created by adding only the letters “OT” (to form “NOT”) did not sufficiently distinguish the marks, especially where the remaining wording substantially overlapped.
  • Given identical/closely related services, the refusal was “clearly objectionable” under Sections 9 & 11.

The Court also clarified that the refusal was limited to the deceptive similarity ground and that the appellant remained free to file a fresh application for an unobjectionable mark, to be considered on its own merits.

3. Analysis

3.1 Precedents Cited

The judgment does not cite any case law by name. Instead, it sets out a well-recognized list of factors for assessing deceptive similarity (nature of marks, degree of resemblance, nature of goods/services, class of purchasers, mode of purchase, and surrounding circumstances). The Court applies these factors directly to the two competing marks.

Although no authorities are expressly referenced, the Court’s approach reflects established trade mark adjudication methodology: consumer-centric comparison of the marks as a whole, with a focus on likely confusion in the market.

3.2 Legal Reasoning

The Court’s reasoning proceeds in three main steps:

  1. Existence of a prior registered mark in the same class: The Court notes that “FRESH N FROZEN” is already registered in Class 35 for services connected with food products and allied retail/wholesale/distribution activities. This triggers heightened scrutiny under Section 11(1), which addresses conflict with earlier marks.
  2. Side-by-side comparison is not determinative; “first look” market reality is: The Court emphasizes the practical test—how an ordinary purchaser with “reasonable mental faculty” is likely to perceive the mark. On that test, “FRESH NOT FROZEN” is found deceptively similar because it substantially reproduces the earlier mark’s wording and structure; the only change is the insertion of “OT”.
  3. Meaning-based arguments do not rescue similarity where the overall impression overlaps: The appellant argued that “FRESH NOT FROZEN” is “diametrically opposite” in meaning to “FRESH N FROZEN”. The Court rejects meaning as the “determining factor,” holding that the key question is deceptive similarity in overall impression and the likelihood of consumers being misled—especially where services are identical under the same class.

In effect, the Court treats the marks’ near-identity in wording and the shared commercial field (Class 35 retail/marketing services for food items) as sufficient to sustain refusal under Sections 9 & 11.

3.3 Impact

The decision is significant in reinforcing several practical points for trade mark prosecution in India:

  • Small textual changes may be inadequate where a proposed mark substantially contains the earlier registered mark, particularly in the same class and for identical/closely related services.
  • Semantic or “opposite meaning” arguments have limited utility if the consumer’s first impression and overall structure of the marks remain confusingly close.
  • For Class 35 applications (often broad and service-oriented), applicants should expect stricter conflict analysis because many businesses describe overlapping retail/marketing/distribution services for similar product categories.
  • The Court’s closing clarification encourages applicants to re-brand and re-apply with a sufficiently distinctive mark, instead of attempting marginal edits to overcome prior rights.

4. Complex Concepts Simplified

  • Deceptive similarity: Two marks can be considered too close if an ordinary consumer is likely to be confused about whether the goods/services come from the same source—even if the marks are not identical.
  • Section 11(1) objection: A later mark can be refused if it conflicts with an earlier trade mark (especially if the marks are similar and the goods/services are identical or similar), creating a likelihood of confusion.
  • Section 9(1)(a) and 9(1)(b) objections: These generally relate to marks lacking distinctiveness or being descriptive. In this case, the Court’s decisive emphasis is on confusion/conflict given the prior registered mark, rather than a standalone distinctiveness analysis.
  • Class 35: A trade mark classification covering services such as advertising, business management, and retail/wholesale services (including online retail services). Two businesses can clash in Class 35 even if their underlying products differ, because the registered activity is the retail/marketing service.

5. Conclusion

The Madras High Court upheld the Registrar’s refusal of “FRESH NOT FROZEN” because it was deceptively similar to the pre-existing registered mark “FRESH N FROZEN” in Class 35 for identical or closely related services. The Court’s key takeaway is that minor additions or tweaks—such as inserting a short word or a few letters—will not avoid refusal when the overall impression remains confusingly close, particularly in the same class and commercial field. At the same time, the Court left the door open for the applicant to seek registration of a genuinely distinctive alternative mark.