Suggestive Slogans as Inherently Distinctive Trade Marks and the Scope of Section 19 TM Act: Commentary on Ashim Kumar Ghosh v. Registrar of Trade Marks

Suggestive Slogans as Inherently Distinctive Trade Marks and the Scope of Section 19 of the Trade Marks Act, 1999: A Commentary on Ashim Kumar Ghosh v. Registrar of Trade Marks, 2025 DHC 10350

1. Case Overview

1.1 Parties, Court and Citation

  • Case Title: Ashim Kumar Ghosh v. The Registrar of Trade Marks
  • Citation: 2025 DHC 10350
  • Court: High Court of Delhi at New Delhi
  • Coram: Hon’ble Mr. Justice Tejas Karia
  • Date of Judgment: 24 November 2025
  • Case No.: C.A. (COMM.IPD-TM) 48/2025

1.2 Factual and Procedural Background

The appellant, Ashim Kumar Ghosh, applied to register the mark “SoEasy” (word/device) in Class 16 (Application No. 5799569) for:

  • Instructional and teaching material (except apparatus)
  • Printed matter
  • Book-binding material

The application was filed on 02.02.2023 on a “proposed-to-be-used” basis.

The procedural timeline was as follows:

  1. Examination:
    • Examination Report issued on 15.06.2023, raising objections under Section 9 (absolute grounds).
    • Appellant filed a reply dated 01.07.2023 contesting the objections.
  2. Acceptance and Publication:
    • Application accepted on 10.04.2024 under Section 20(1), subject to the condition that the mark be used as a whole.
    • Mark published in Trade Marks Journal No. 2153 dated 22.04.2024.
    • No opposition was filed within the statutory period.
  3. Section 19 Notice (Withdrawal of Acceptance):
    • On 16.12.2024, the Registrar issued a Notice under Section 19 stating that the mark had been “accepted through an error” and proposing to withdraw the acceptance because the mark was devoid of distinctiveness and not capable of distinguishing the appellant’s goods.
    • The appellant replied on 21.12.2024, challenging the maintainability of the notice and characterising it as a review/appeal in disguise and unsubstantiated.
  4. Fresh Hearing and Refusal:
    • Hearing held on 20.02.2025 before the Registrar.
    • Fresh Examination Report issued on 19.05.2025, maintaining objections under Sections 9(1)(a) and 9(1)(b).
    • By order dated 20.05.2025 (Impugned Order), the Registrar refused the application, holding that:
      • “SoEasy” is laudatory, indicating that tasks are done with minimal effort;
      • It is made of generic words with dictionary meaning, neither coined nor invented;
      • It lacks inherent distinctiveness, falls under Section 9(1)(a) and (b);
      • There is no acquired distinctiveness as the mark was filed on a proposed-to-be-used basis.
  5. Appeal to High Court:
    • Appeal filed under Section 91 of the Trade Marks Act, 1999, challenging the Impugned Order.

1.3 Issues Before the Court

The High Court identified the following core issues:

  1. Section 19 / Procedural Issue: Whether the Registrar’s refusal of the appellant’s application, after invoking Section 19 to withdraw acceptance, was in accordance with the scope and procedure of Section 19 of the Trade Marks Act, 1999.
  2. Section 9 / Substantive Issue: Whether the Impugned Order erred in holding that the mark “SoEasy” is non‑distinctive and thus not registrable under Section 9(1) of the Act.

2. Summary of the Judgment

The High Court allowed the appeal, set aside the Registrar’s refusal, and directed progression of the application to registration. The key holdings can be summarised as follows:

  1. Scope of Section 19 and Effect of No Opposition:
    • Under Section 23(1), registration after acceptance and absence of opposition is expressly made “subject to the provisions of Section 19”.
    • Therefore, even if a mark is accepted and advertised, and no opposition is filed within time, the applicant does not acquire a vested right to registration.
    • The Registrar is empowered to withdraw acceptance at any time before registration under Section 19, for reasons including that the mark should not be registered or has been accepted in error.
  2. Use of Section 19 to Revisit Section 9 Objections:
    • Section 19 is intended to maintain the purity of the Register and allows the Registrar to correct errors in acceptance of marks that do not meet registrability requirements.
    • The provision does not prohibit the Registrar from reconsidering the same grounds (e.g., Section 9 objections) that were previously adjudicated during initial examination.
    • Accordingly, the Registrar’s decision to revisit Section 9 objections through Section 19 was held to be procedurally permissible.
  3. Power to Refuse After Withdrawal of Acceptance:
    • Section 19 authorises the Registrar to withdraw acceptance and then “proceed as if the application had not been accepted”.
    • This means that, after withdrawal, the Registrar may re-examine and, if warranted, refuse the application on substantive grounds such as Section 9, subject to hearing.
    • The Registrar’s procedural approach (issuing notice, hearing, fresh examination, and then refusing) was therefore not ultra vires Section 19.
  4. Classification of “SoEasy” – Suggestive, Not Descriptive:
    • Relying on Teleecare Network (India) (P) Ltd. v. Asus Technology (P) Ltd., the Court revisited the classification of marks into generic, descriptive, suggestive, arbitrary, and fanciful.
    • A suggestive mark is one where the consumer must use imagination, thought and perception – a “mental leap” – to connect the mark to the goods or services.
    • The Court held that “SoEasy” for a platform and materials for Hindi language learning, teaching and testing:
      • suggests that learning/teaching will be easy or effortless;
      • does not directly describe the nature, quality or characteristics of the goods in Class 16;
      • therefore is suggestive, not descriptive or generic.
    • Suggestive marks are deemed inherently distinctive and are registrable without proof of acquired distinctiveness.
  5. Rejection of the Registrar’s Characterisation as Laudatory/Generic:
    • The Registrar had labelled “SoEasy” as a laudatory generic expression which falls foul of Section 9(1)(a) and (b).
    • The Court disagreed, holding that “SoEasy”:
      • is not a direct statement of quality or characteristic of the goods;
      • is not exclusively descriptive of the goods’ kind, quality or intended purpose under Section 9(1)(b);
      • is capable of distinguishing the appellant’s goods/services.
  6. Outcome:
    • The appeal was allowed.
    • The Impugned Order refusing the application was set aside.
    • The Registrar was directed to proceed with registration of Application No. 5799569 for the mark “SoEasy” in Class 16, in accordance with the Act and Rules.

3. Statutory Framework

3.1 Section 19 – Withdrawal of Acceptance

Section 19 permits the Registrar, after accepting an application but before registration, to withdraw acceptance if:

  • The application was accepted in error [Section 19(a)], or
  • In the circumstances of the case, the trade mark should not be registered or should only be registered subject to conditions or limitations [Section 19(b)].

Upon such satisfaction and after hearing the applicant (if he so desires), the Registrar may:

  • Withdraw acceptance; and
  • “Proceed as if the application had not been accepted” – i.e., re-examine and act on the application afresh.

3.2 Section 23 – Registration “Subject to Section 19”

Section 23(1) governs the step from acceptance to actual registration. It provides that when an application has been accepted and:

  • Has not been opposed within time; or
  • Opposition has been decided in favour of the applicant;

then the Registrar “shall” register the mark, but “subject to the provisions of Section 19”.

This explicit cross-reference is central: it means even an unopposed, accepted application can be revisited under Section 19 before registration.

3.3 Section 9(1) – Absolute Grounds for Refusal

Section 9(1) lays down absolute grounds where registration is barred:

  • Section 9(1)(a): marks devoid of any distinctive character, i.e. not capable of distinguishing the goods/services of one person from another.
  • Section 9(1)(b): marks consisting exclusively of indications which may serve in trade to designate:
    • Kind, quality, quantity
    • Intended purpose
    • Values
    • Geographical origin
    • Time of production of goods or rendering of service
    • Other characteristics of the goods or services.
  • Section 9(1)(c): marks consisting exclusively of indications which have become customary in current language or bona fide practices of trade.

The proviso allows registration if, before the application date, the mark has acquired distinctiveness through use or is a well-known mark. In this case, the application was on a proposed-to-be-used basis, so only inherent distinctiveness was in play.

4. Detailed Analysis

4.1 Scope of the Registrar’s Power Under Section 19

4.1.1 Appellant’s Position

The appellant advanced several arguments narrowing the reach of Section 19:

  • The power under Section 19 is discretionary, not absolute, and must be exercised on just and non-arbitrary grounds.
  • Once the mark was accepted and advertised, and no opposition was filed within the statutory period, the appellant had an accrued right to a registration certificate; Section 19 could not be read so widely as to defeat this right.
  • Objections under Section 9(1) had already been raised in the first examination report and decided in appellant’s favour when acceptance was granted. That adjudication had, according to the appellant, attained finality, and Section 19 could not be used as a review/appeal mechanism to revisit the same grounds.
  • The appellant argued that the “error” in Section 19(a) must be limited to clerical or mechanical errors or errors not involving a judicial application of mind; any “judicial error” could only be corrected in appeal or review, not under Section 19.

4.1.2 Court’s Reading of Section 19 and Section 23

The Court squarely rejected the suggestion that acceptance coupled with lack of opposition creates a vested right to registration. It emphasised:

  • Section 23(1) makes registration, even in an unopposed case, “subject to the provisions of Section 19”.
  • Therefore, the statutory scheme itself envisages that:
    • Acceptance and advertisement do not freeze the Registrar’s assessment; and
    • The Registrar retains power to reconsider and withdraw acceptance at any time before registration.
  • Accordingly, the appellant had no vested right to demand a registration certificate merely because:
    • No opposition was filed; and
    • The mark had earlier been accepted and advertised.

Crucially, the Court viewed Section 19 as an instrument to “maintain the purity of the Register of Trade Marks”. This policy rationale justifies a continuing supervisory role for the Registrar up to the moment of registration.

4.1.3 Error Under Section 19 – Not Confined to Clerical Mistakes

On the appellant’s contention that “error” in Section 19(a) must be strictly non‑judicial, the Court took a broader, functional view.

While recognising that the power is not unfettered, the Court held that Section 19 authorises the Registrar to weed out:

  • Marks which, upon reconsideration, do not satisfy substantive requirements of the Act; and
  • Instances where acceptance of such marks has occurred “through error” – an expression wide enough to include erroneous substantive assessments.

Paragraphs 30–32 of the judgment are central. The Court explains that Section 19:

  • Is designed to prevent registration of marks that should not be on the Register; and
  • Is constrained by:
    • Its temporal limit – it applies only to accepted but not yet registered applications;
    • Its grounds – it can be invoked only under Section 19(a) or 19(b) conditions; and
    • The mandatory requirement of hearing the applicant if he so desires.

However, the Court made it equally clear that no bar exists in Section 19 on revisiting the same grounds previously considered at the initial examination stage:

“Section 19 of the Act does not impose any bar on the Registrar to revisit and examine the acceptance even though the same grounds have been adjudicated upon previously while granting acceptance.”

This is a significant clarification: acceptance is not a final judicial determination; it remains open to correction until registration.

4.1.4 Nature of the Notice – Section 19(a) vs 19(b)

The appellant contended that the Registrar had invoked only Section 19(a) (acceptance in error), thereby limiting the scope of the proceeding and precluding reliance on Section 19(b). The Court examined the text of the notice, which read:

“Notice under the provisions of Section 19 of Trade Marks Act, 1999 is, hereby, issued… The above mentioned application has been accepted through an error and the Registrar proposes to withdraw the acceptance due to the following reason(s): The impugned mark is devoid of distinctiveness and hence not capable of distinguishing the goods and services of the applicant from those of others.”

The Court held:

  • The notice was issued under Section 19 as a whole, not restricted to sub-clause (a).
  • In substance, the Registrar:
    • Identified an error in acceptance (19(a)); and
    • Articulated a substantive concern that the mark “should not be registered” due to lack of distinctiveness (19(b)).

Thus, the Section 19 invocation was found procedurally proper.

4.1.5 Power to Ultimately Refuse the Application

The appellant argued that Section 19 authorised the Registrar only to withdraw acceptance, not to refuse the application outright. The Court rejected this restrictive reading, relying on the concluding words of Section 19:

“...the Registrar may, after hearing the applicant if he so desires, withdraw the acceptance and proceed as if the application had not been accepted.”

The Court’s interpretation:

  • Once acceptance is withdrawn, the application reverts to the position of a freshly filed, unaccepted application.
  • In that posture, the Registrar has all powers available at the initial examination stage:
    • To raise objections,
    • To call for reply and hearing, and
    • Ultimately to accept or refuse the application on statutory grounds.
  • Therefore, a refusal order following a Section 19 withdrawal is legally permissible, provided due process is followed.

The Court concluded that procedurally the Registrar’s path – notice, hearing, fresh examination report, and refusal – complied with Section 19 and Section 23.

4.2 Distinctiveness of “SoEasy” and Application of Section 9(1)

4.2.1 The Registrar’s Reasoning

The Impugned Order characterised the mark “SoEasy” as follows:

  • It “indicates that a task is accomplished with minimal effort or challenge” – suggesting that the action is easy and direct.
  • This meaning was said to be in “direct reference to the applied specification”, i.e., instructional and teaching materials.
  • The mark was called:
    • A laudatory word – praising the ease or quality of the goods/services;
    • Generic and neither coined nor invented;
    • Composed of common dictionary words, without any unique or distinctive combination.
  • It was held to fall within:
    • Section 9(1)(a) – devoid of distinctive character; and
    • Section 9(1)(b) – consisting exclusively of indications that may serve to designate characteristics of the goods/services.
  • Because the application was on a proposed-to-be-used basis, the Registrar also held that:
    • No case of acquired distinctiveness under the proviso to Section 9(1) was made out.

4.2.2 Precedent: Teleecare Network v. Asus Technology

The High Court grounded its analysis in Teleecare Network (India) (P) Ltd. v. Asus Technology (P) Ltd., 2019 SCC OnLine Del 8739, where a Coordinate Bench, drawing from US jurisprudence (Abercrombie & Fitch, Two Pesos, Park 'N Fly), classifies trade marks as:

  1. Generic
  2. Descriptive
  3. Suggestive
  4. Arbitrary
  5. Fanciful

Key principles reiterated in Teleecare and recited in this judgment include:

  • Generic marks:
    • Refer to the genus of which a product/service is a species (e.g., “spoon” for spoons).
    • Are not registrable as trade marks; they name the product, not its trade source.
  • Descriptive marks:
    • Describe the qualities, ingredients, characteristics, or features of the goods or services.
    • They are not inherently distinctive, but may be registered on proof of secondary meaning/acquired distinctiveness.
  • Suggestive marks:
    • Occupy a middle ground – neither descriptive nor fully fanciful.
    • They require a mental process: “imagination, thought and perception” by the consumer to connect the mark to the product.
    • If the consumer has to take a mental leap to understand the relation, the mark is suggestive.
    • Suggestive marks are considered inherently distinctive; they are registrable without proof of secondary meaning.
  • Arbitrary and fanciful marks:
    • Fanciful marks are invented words (e.g., purely coined terms used only as marks).
    • Arbitrary marks use common words in an unrelated context (e.g., “Ivory” for soap).
    • They enjoy the strongest protection and are inherently distinctive.

Teleecare also underscores that the line between descriptive and suggestive marks is often blurred, and that these classifications are fact-sensitive.

4.2.3 The “Mental Leap” Test Applied to “SoEasy”

The Court’s core reasoning in classifying “SoEasy” as suggestive hinges on how an average consumer would understand the mark in relation to the relevant goods/services:

  • The relevant goods are:
    • Instructional and teaching material, printed matter and book-binding material (Class 16); and
    • In practice, as per documents on record, materials associated with a learning, teaching and testing platform for Hindi language.
  • The phrase “So Easy” in ordinary language conveys that something is very easy, can be accomplished with minimal effort.
  • However, the Court reasoned that, in relation to the appellant’s learning platform and materials:
    • The phrase does not immediately and directly describe a specific characteristic of the goods (e.g., format, content, syllabus, physical attributes).
    • Instead, it provides a suggestion or impression that the learning process will be made easy.

Thus, to understand what the mark indicates in context, the consumer must:

  • Encounter the mark “SoEasy” on educational materials or a platform; and
  • Infer that the teaching/learning experience associated with those materials is likely to be simple or user-friendly.

This intermediate inferential step is precisely the “mental leap” characteristic of suggestive marks. The Court encapsulates this by observing that:

“...the consumers would require a mental leap to draw a connection between the Appellant's Mark and the product sold or services provided under the said Mark as the words 'So' and 'Easy' juxtaposed together to formulate the Appellant's Mark would not immediately be reminiscent of the Appellant's product or service without consumers' additional imagination, thought and perception...”

On this reasoning:

  • “SoEasy” is not descriptive of the goods’ qualities, ingredients or characteristics;
  • It is a suggestive mark, inherently distinctive, and entitled to registration without proof of use.

4.2.4 Rejection of the Laudatory/Generic Characterisation

The Registrar had equated “SoEasy” with a laudatory generic term. The Court’s analysis rejects this on two fronts:

  1. Not Generic:
    • “SoEasy” does not name a category or class of goods or services.
    • It is not the common name for instructional materials or language learning platforms.
    • Therefore, it cannot be treated as generic in the sense of Section 9(1)(c) or in the Abercrombie sense.
  2. Not Purely Descriptive/Laudatory:
    • A laudatory mark typically gives a direct commendation of the quality of the goods (e.g., “Best”, “Superior”, “Perfect”).
    • While “So Easy” contains a positive connotation, the Court found that it does not directly describe a specific characteristic or quality in the precise sense covered by Section 9(1)(b).
    • Instead, it suggests an outcome or benefit (learning made easy) and thus lies in the suggestive category.

The Court concluded that to treat every slogan implying ease or simplicity as automatically descriptive or generic would risk overextending Section 9(1) and depriving legitimately distinctive, suggestive slogans of protection.

4.2.5 Inherent vs Acquired Distinctiveness

Because the application was proposed-to-be-used, the appellant could not, and did not, claim acquired distinctiveness. The entire case pivoted on inherent distinctiveness.

Applying the Teleecare framework, the Court found:

  • “SoEasy” is inherently distinctive as a suggestive mark;
  • Therefore, the proviso to Section 9(1) (acquired distinctiveness) was not required to be invoked.

In effect, the Court confirms and reinforces the principle that suggestive marks need no evidence of use or secondary meaning to qualify for registration in India.

4.3 Precedents Cited and Their Influence

The key precedent relied upon is Teleecare Network (India) (P) Ltd. v. Asus Technology (P) Ltd., which itself drew on US Supreme Court decisions:

  • Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2nd Cir. 1976)
  • Two Pesos, Inc. v. Taco Cabana, Inc., 505 US 763 (1992)
  • Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 US 189 (1985)
  • And the Delhi decision in Evergreen Sweet House v. Ever Green, (2008) 38 PTC 325 (Del)

The influence of these precedents in the present case manifests in three principal ways:

  1. Adoption of the Abercrombie Spectrum in Indian Law The Court, by quoting extensively from Teleecare, reaffirms that Indian trade mark law recognises the generic–descriptive–suggestive–arbitrary–fanciful spectrum as a useful conceptual tool for analysis under Section 9(1). This is particularly relevant when the mark is composed of common dictionary words, like “SoEasy”.
  2. Distinctiveness as the Central Organising Principle The case underscores that Section 9(1)(a)’s focus on distinctive character is best understood in light of the inherent vs acquired distinction:
    • Generic and merely descriptive terms lack inherent distinctiveness, though descriptive marks may be saved by secondary meaning.
    • Suggestive, arbitrary and fanciful marks are presumptively distinctive and registrable.
    The Court’s conclusion that “SoEasy” is suggestive automatically aligns the mark with the inherently registrable end of the spectrum.
  3. “Mental Leap” and Non-Immediate Association Test The Court’s emphasis that consumers must make a mental leap to connect “SoEasy” to educational materials is a direct application of the suggestive mark test distilled in Teleecare. Where the association is neither immediate nor purely descriptive, the mark receives the benefit of being treated as suggestive.

Thus, while the judgment does not announce a new doctrinal test, it consolidates and applies the existing Teleecare framework to a slogan-type mark built out of simple English words – an important extension in practical terms.

5. Complex Concepts Simplified

5.1 Distinctiveness

Distinctiveness is the core idea in trade mark law. A mark is distinctive if it can identify the source of goods or services and distinguish them from others. There are two ways a mark can be distinctive:

  • Inherently Distinctive: The mark is, by its very nature, capable of distinguishing (e.g., invented words, arbitrary use of common words, or suggestive marks).
  • Acquired Distinctiveness (Secondary Meaning): A mark that was initially descriptive can become distinctive over time if the public has come to associate it specifically with one trader through extensive use.

5.2 Types of Marks (Practical Definitions)

  • Generic mark: The common name for a class of products (e.g., “pen” for pens). Such marks can never function as trade marks for those goods.
  • Descriptive mark: Directly describes a quality, characteristic, function, or feature of the goods (e.g., “Sweet” for sugar, “Fast Relief” for a pain balm). These are not registrable by default but may be registered if they have acquired distinctiveness.
  • Suggestive mark: Hints at or suggests some quality or characteristic, but you need to use imagination to see the connection (e.g., “Coppertone” for suntan lotion). These are generally inherently registrable.
  • Arbitrary mark: A common word used in an unrelated context (e.g., “Apple” for computers). Inherently distinctive.
  • Fanciful mark: A completely invented word with no prior meaning (e.g., “Kodak”). Inherently distinctive and very strong.

5.3 Laudatory Marks

Laudatory marks are words or phrases that simply praise the goods or services (e.g., “Best”, “Superb”, “No. 1”). They often overlap with descriptive marks because they describe the alleged quality of the goods. These are usually refused unless they gain distinctiveness through extensive use.

The nuance in Ghosh is that not every phrase containing a positive attribute (“SoEasy”) is automatically treated as a non-registrable laudatory term; it depends on how directly it describes the product and whether some mental processing is still needed by the consumer.

5.4 “Proposed-to-be-Used” Applications

An application can be filed on a “proposed-to-be-used” basis, meaning the applicant is not yet using the mark but intends to start. In such cases:

  • You generally cannot rely on acquired distinctiveness through use.
  • The mark must pass muster on the basis of inherent distinctiveness alone.

Because “SoEasy” is found to be inherently distinctive as a suggestive mark, the absence of prior use did not hurt the appellant’s case.

5.5 “Purity of the Register”

The idea of maintaining the purity of the Register is fundamental. It means the Register should not contain marks that:

  • Are generic or non-distinctive;
  • Are barred by statute (e.g., deceptive, descriptive, customary); or
  • Should only be registered with appropriate conditions or limitations.

Section 19 is one of the tools given to the Registrar to ensure such marks are filtered out before registration, even if they were initially accepted by oversight or error.

6. Likely Impact of the Judgment

6.1 On Trade Marks Registry Practice

This decision has several implications for how the Trade Marks Registry may exercise its powers:

  • Affirmation of Section 19’s Breadth (Pre-Registration): The Registry is explicitly affirmed in its power to:
    • Revisit even fully reasoned acceptances; and
    • Correct perceived errors on substantive grounds (e.g., Section 9) before registration.
  • Process Safeguards: At the same time, the Court’s emphasis on the statutory scheme ensures:
    • The Registrar must issue a clear notice highlighting the grounds for reconsideration;
    • The applicant must be heard if he desires;
    • The final decision must be reasoned.
  • Need for Nuanced Assessment of Slogan Marks: The decision warns against mechanically treating:
    • All positive or convenience-related phrases as laudatory or generic;
    • All combinations of simple English words as automatically non-distinctive.
    The Registry will need to carefully apply the mental leap / suggestiveness test in similar cases involving short slogans or brand phrases.

6.2 On Brand Owners and Practitioners

For trade mark owners and practitioners, the judgment has both cautionary and encouraging aspects:

  • Acceptance Is Not the End of the Road: Even after acceptance and unopposed advertisement, a mark remains vulnerable until the registration certificate is issued. Clients should be advised that:
    • There is no vested right to registration merely from acceptance + no opposition; and
    • Section 19 may still be invoked by the Registrar.
  • Stronger Position for Suggestive Slogans: The decision is supportive of:
    • Slogan-type marks or combinations of common words that are suggestive rather than strictly descriptive;
    • New brands using everyday words creatively, especially in sectors like education, technology, and services.
    It can be cited to argue that short, simple English phrases may nonetheless be inherently distinctive if they require consumer imagination.
  • Strategic Drafting and Evidence: In borderline cases, practitioners may:
    • Emphasise, in reply to examination reports, how the mark requires a mental leap and does not directly describe the goods;
    • Frame the goods/services description to avoid obvious direct descriptive overlap with the mark.

6.3 On the Law of Laudatory and Suggestive Marks

This judgment refines the Indian position on marks that express praise or ease:

  • Not All Positive Phrases Are Barred: It is now clearer that the mere existence of a positive or convenient connotation does not automatically mean:
    • The mark is unregistrable; or
    • It is necessarily descriptive of quality.
  • Context Matters: The assessment of whether a phrase like “SoEasy” is descriptive or suggestive is context-specific. The same phrase might be:
    • Descriptive for some goods/services (e.g., tools explicitly designed to reduce physical exertion); but
    • Suggestive for others (e.g., educational material where “ease” is an outcome, not an intrinsic physical characteristic).
  • Inherent Distinctiveness of Short Slogans Recognised: This decision will likely be cited in future disputes concerning short slogans and taglines where the Registry or opponents argue non-distinctiveness merely because the words are common or appear laudatory.

7. Conclusion

Ashim Kumar Ghosh v. Registrar of Trade Marks is significant on two interlinked axes of Indian trade mark law:

  1. Procedural Axis – Clarifying Section 19’s Reach:
    • The Court confirms that acceptance and non-opposition do not create a vested right to registration.
    • Under Section 19 read with Section 23, the Registrar may:
      • Withdraw acceptance of an application at any time before registration; and
      • Re-examine and even refuse the application on substantive grounds, including grounds already considered at the initial examination.
    • At the same time, the Registrar’s powers remain confined to accepted but unregistered marks, and must be exercised with notice, hearing, and reasoned orders, serving the purpose of maintaining the purity of the Register.
  2. Substantive Axis – Strengthening Protectability of Suggestive Slogans:
    • By classifying “SoEasy” as a suggestive rather than descriptive or generic mark, the Court reinforces:
      • The applicability of the Abercrombie / Teleecare spectrum in Indian law; and
      • The principle that suggestive marks are inherently distinctive and registrable even without evidence of use.
    • The judgment warns against overbroad characterisations of simple English phrases as non-distinctive merely because they are understandable or positive.
    • It underscores the mental leap test: if consumers must exercise some imagination to connect the mark with the goods or services, the mark leans towards being suggestive – and therefore registrable.

In sum, the decision offers both a procedural clarification on the Registrar’s powers under Section 19 and a substantive confirmation

Case Details

Year: 2025
Court: Delhi High Court

Judge(s)

Justice Tejas Karia

Advocates

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