Oswaal Books And Learnings Private. v The Registrar Of Trade Marks on 28 May, 2025
Facts
Oswaal Books and Learnings Pvt. Ltd., a well-known educational book publishing house, applied for registration of the mark “ONE FOR ALL” on 20 October 2020 in Class 16, which includes printed matter like books. The mark would be used as a mark of identification for its whole line of educational books for different boards like CBSE, ICSE, ISC, and competitive examinations like JEE, NEET, CLAT, etc.
But the Registrar of Trademarks objected under Section 9(1)(a) of the Trademarks Act, 1999, that the applied for mark was not of distinctive character. Upon reply to the Examination Report and submission of evidence, the application was refused by the Registrar on 14 December 2023. The applicant further appealed under Section 91 of the Trademarks Act and Rule 156 of the Trademarks Rules, 2017 to the Delhi High Court.
Arguments of the Appellant (Oswaal Books and Learnings Pvt. Ltd.)
The appellant contended that the trademark “ONE FOR ALL”, although consisting of ordinary English words, had gained secondary meaning and distinctiveness through its frequent, prevalent, and persistent use in the education publishing industry since August 2020. The mark had appeared on books covering all prominent academic boards as well as competitive exams. They pointed out that they had spent approximately ₹96.42 lakhs in promotion and advertising, establishing brand recall and consumer goodwill with their study materials. Referring to cases such as Evergreen Sweet House v. Evergreen and Telecare Network v. Asus, they argued that even everyday expressions could be registered when used unusually or arbitrarily for commercial purposes. The appellant also claimed denial of natural justice, asserting the Registrar did not rightly consider voluminous evidence like CA certificates, ad material, YouTube recordings, website screen shots, and third-party statements, which proved use of the mark in a trademark sense. The Registrar was said not to have given proper reasons for rejection and did not comply with legal requirements under the proviso to Section 9(1) of the Trademarks Act, 1999 regarding acquired distinctiveness.
Arguments of the Respondent (Registrar of Trademarks)
The Registrar justified the refusal of registration under Section 9(1)(a) of the Trademarks Act and stated that “ONE FOR ALL” is a descriptive, generic, and laudatory expression that does not possess inherent distinctiveness and is used in ordinary parlance in English, particularly in the field of educational material. To grant exclusive control of such an expression would lead to monopolization of a public expression. The Registrar argued that the evidence submitted by Oswaal Books was inadequate to prove acquired distinctiveness, as the phrase was mostly used in conjunction with the principal mark “Oswaal Books” and not independently as a source identifier. Furthermore, the slogan appeared to function more as a tagline than a trademark, and there was no clear consumer perception linking the phrase directly to the commercial origin of the goods.
ISSUES BEFORE THE COURT
Whether the mark “ONE FOR ALL” distinctive per se under Section 9(1)(a) of the Trademarks Act?
Whether the mark had acquired distinctiveness or secondary meaning under the proviso to Section 9(1), making it eligible for registration?
Judgment of the Delhi High Court
Delhi High Court, through its judgment written by Justice Mini Pushkarna, rejected the appeal of Oswaal Books and sustained the rejection of the trademark registration of the expression “ONE FOR ALL” by the Registrar. The Court ruled that the expression did not have inherent distinctiveness under Section 9(1)(a) of the Trademarks Act and that the appellant had not been able to prove acquired distinctiveness mandated by the proviso. It noted that most of the evidence produced, e.g., CA certificates, sales reports, and advertising materials, centred on the “OSWAAL BOOKS” brand, with only limited and incidental mention of the words “ONE FOR ALL.” The Court noted that the slogan was employed descriptively and promotively, not as an independent source identifier, citing its general commercial and cultural use, including its common association with the “ONE FOR ALL” phrase from The Three Musketeers. Drawing from case laws such as McCarthy on Trademarks, Ilua v. Asian Hobby Crafts (2024), and Institute of Directors v. Worlddevcorp (2023), the Court reaffirmed that generic or descriptive expressions are only registrable where there is evidence of strong secondary meaning under exclusive and long use, as the appellant had failed to demonstrate. Accordingly, the Court held that the slogan did not independently function to designate the origin of goods and rejected the appeal.
Full Judgment- https://indiankanoon.org/doc/163423158/