Allowed

Oswaal Books and Learnings Private Limited v. the Registrar of Trade Marks

Delhi HC10 Feb 2026LPA/571/2025

Case brief

AI extract

What is this about?

The High Court of Delhi in an intra-court appeal against the Registrar of Trade Marks' refusal order, held that the mark "ONE FOR ALL" is suggestive rather than descriptive in relation to educational books. The Court set aside the refusal and restored the application, finding the mark capable of distinguishing the appellant's goods.

What did the court decide?

Set aside the impugned orders; restored the trademark application to the position as at the time of the refusal order.

Oswaal Books and Learnings Private Limited Vs the… — Intellectual Property | Delhi HC (2026)

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$~4

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IN THE HIGH COURT OF DELHI AT NEW DELHI

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- LPA 571/2025 & CM APPL. 56791/2025

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OSWAAL BOOKS AND LEARNINGS PRIVATE LIMITED .....Appellant Through: Mr. Abhishek Malhotra, Sr. Adv with Mr. Yashwardhan Singh, Mr. Angad Singh Dugal, Mr. Govind Singh and Ms. Anukriti Trivedi, Advs.

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versus

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THE REGISTRAR OF TRADE MARKS .....Respondent Through: Mr. Gaurav Barathi SPC with Mr. Chirantan Priyadarshan, Adv.

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CORAM:

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HON'BLE MR. JUSTICE C. HARI SHANKAR HON'BLE MR. JUSTICE OM PRAKASH SHUKLA

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JUDGMENT (ORAL)

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% 10.02.2026

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OM PRAKASH SHUKLA, J.

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1. The present intra-court appeal is directed against the judgment dated 28.05.2025, whereby the learned Single Judge dismissed C.A.(COMM.IPD-TM) 19/2024 preferred by the appellant under Section 91 of the Trade Marks Act, 1999¹ and affirmed the refusal order dated 14.12.2023 passed by the Registrar of Trade Marks rejecting Trade Mark Application No. 4711190 for registration of the mark “ONE FOR ALL” in Class 16.

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1 “the Act” hereinafter

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Signature Not Verified 1 Digitally Signed By:AJIT KUMAR Signing Date:15.0 2.20 26 20:58

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LPA 571/2025

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Page 1 of 14

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2. The appellant, Oswaal Books and Learnings Private Limited , is engaged in the business of publication and sale of educational books and allied academic material. It is claimed by the appellant that since 20.08.2020, they adopted the mark “ONE FOR ALL” in relation to its educational publications falling under Class 16.

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3. The appellant filed Trade Mark Application No. 4711190 on 20.10.2020, seeking registration of the mark “ONE FOR ALL” in Class 16. The application was examined and an Examination Report dated 04.11.2020 came to be issued, raising objections under Section 9² of the Act, specifically Section 9(1)(a) and calling upon the appellant to establish that the mark was capable of distinguishing its goods from those of others.

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4. After replying to the FER³ and attending the hearing, the appellant’s trademark application for “ONE FOR ALL” was refused vide order dated 14.12.2023 under Section 9(1)(a) of the Act on the ground that it is a common, non-distinctive expression and that the appellant failed to prove that its mark has acquired distinctiveness/secondary meaning.

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5. The appellant assailed the refusal by way of an appeal under

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2 Absolute grounds for refusal of registration. – (1) The trade marks – (a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person; (b) 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; (c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered: Provided that a trade mark shall not be refused registration 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. Signature Not Verified 3 First Examination Report Digitally Signed By:AJIT KUMAR LPA 571/2025 Page 2 of 14 Signing Date:15.0 2.20 26 20:58

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Section 91 of the Act, being C.A.(COMM.IPD-TM) 19/2024, before this Court. By the impugned judgment dated 28.05.2025, the learned Single Judge dismissed the appeal and affirmed the refusal. The learned Single Judge held that the mark “ONE FOR ALL” was a common, laudatory phrase, that it conveyed the impression of the appellant’s books being a universal or “one-stop” solution for all, and that the mark was, therefore, descriptive and lacking in inherent distinctiveness. The learned Single Judge further held that the appellant had failed to discharge the burden of establishing acquired distinctiveness or secondary meaning, and that the documents relied upon by the appellant predominantly related to the appellant’s house mark “OSWAAL BOOKS” rather than to the applied mark “ONE FOR ALL” . The learned Single Judge also noted that in most instances the mark was not used in isolation but with prefixes or suffixes, and concluded that the appellant had not shown that the expression “ONE FOR ALL” was recognised by the relevant purchasing public as a standalone indicator of trade origin.

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6. The learned Single Judge additionally relied upon the proposition that words of ordinary English usage cannot be monopolised, and observed that allowing registration of such expressions would result in impermissible restriction of language. Reliance was placed , inter alia , on decisions emphasising that common phrases face a heightened threshold for registration unless secondary meaning is clearly established. The learned Single Judge also noticed the submission that “ONE FOR ALL” is popularly associated with the phrase “All for one and one for all”, traditionally Signature Not Verifiedlinked to “ The Three Musketeers” , and treated the said association as Digitally Signed By:AJIT KUMAR LPA 571/2025 Page 3 of 14 Signing Date:15.0 2.20 26 20:58

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indicative of the common and widely known character of the expression.

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7. The appellant is, therefore, before this Court by way of the present Letters Patent Appeal, submitting that the impugned judgment suffers from errors of law and that the conclusions returned therein are unsustainable on a proper application of the Act and settled principles of trademark jurisprudence.

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8. Mr. Abhishek Malhotra, learned Counsel for the appellants urges that the mark is inherently distinctive, particularly as the examination report cited no similar marks on the Register. Reliance is placed on Abu Dhabi Global Market v. Registrar of Trade Marks⁴ , to submit that in the absence of similar marks in the relevant class, non-distinctiveness cannot ordinarily be presumed merely because the mark appears common.

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9. Without prejudice, it is contended that the mark has acquired distinctiveness under the proviso to Section 9(1) of the Act. The appellant disputes the finding of descriptiveness, submitting that “ONE FOR ALL”, taken as a whole, does not describe the kind, nature, quality, purpose or characteristics of books and requires a mental pause to connect it with the goods. Reliance is placed on Anil Verma v. R.K. Jewellers⁵ and Disruptive Health Solutions Pvt. Ltd. v. Registrar of Trade Marks.⁶

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42023:DHC:3476

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52019:DHC:2276

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Signature Not Verified 62022:DHC:2545. Digitally Signed By:AJIT KUMAR LPA 571/2025 Signing Date:15.0 2.20 26 20:58

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Page 4 of 14

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10. It is further urged that even descriptive marks may be protected if they have become distinctive and no other trader has used them, relying on Procter & Gamble Manufacturing (Tianjin) Co. Ltd. v. Anchor Health & Beauty Care Pvt. Ltd .⁷

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11. The appellant submits that the impugned judgment applied a legally flawed test for secondary meaning by requiring association by the “public at large”, whereas the correct test is association by the relevant consumer class, namely students, parents and teachers.

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12. It is contended that the learned Single Judge wrongly rejected the mark merely because it comprises common English words, despite precedent protecting such combinations. Reliance is placed on decisions of the learned Single Bench of this Court in A Dot Limited v. Registrar of Trade Marks⁸ , Kohler Co. v. Registrar of Trade Marks⁹ , Grey Matters Educations Trust v. Examiner of Trade Marks¹⁰ , and in the decision of the Madras High Court in Just Lime My Child Foundation v. Registrar of Trade Marks¹¹ .

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13. The appellant submits that the impugned judgment violates the anti-dissection rule by dissecting the mark word-by-word instead of assessing it as a whole. Reliance is placed on Grey Matters Educations Trust (supra) and Ticona Polymers, Inc. v. Registrar of Trade Marks .¹²

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7 2016 SCC OnLine Del 5669

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8 C.A.(COMM.IPD-TM) 25/2021

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9 C.A.(COMM.IPD-TM) 34/2022

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10 2024 SCC OnLine Del 7390

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11 CMA (TM) No. 5 of 2024

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Signature Not Verified 12 2023 SCC OnLine Del 1234

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Digitally Signed By:AJIT KUMAR LPA 571/2025 Signing Date:15.0 2.20 26 20:58

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Page 5 of 14

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14. The appellant also submits that the refusal order is mechanical and violates Section 18(5) of the Act and Rule 36 of the Trade Marks Rules 2017. It is further contended that sub-brands remain independently registrable, and that the goodwill of the house mark extends to such sub-brands, relying on Pidilite Industries Ltd. v. Jubilant Agri & Consumer Products Ltd.¹³ . The Appellant further submits that the mark was wrongly treated as a mere slogan, and that reliance on a literary phrase from The Three Musketeers is wholly irrelevant.

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15. Therefore it is urged that the impugned order is to be set aside.

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16. Per Contra, Mr. Gaurav Barathi learned SPC for the respondents submits that to overcome Section 9(1)(a), the applicant must prove acquired distinctiveness through long, continuous and extensive use such that the mark is recognised by the public as an exclusive source identifier. It is contended that adoption in 2020 and the alleged sales and promotional figures are insufficient to confer secondary meaning.

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17. Mr. Barathi relies on the order dated 08.04.2024, wherein the Ld. Single Judge recorded a prima facie view that the Senior Examiner may have been correct in holding the mark to be devoid of distinctiveness, and that the appellant must cross the threshold of proving significance and distinctiveness in its favour. It is contended that “ ONE FOR ALL ” is a common, laudatory slogan, used

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Signature Not Verified 13 2014 SCC OnLineBom 50

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Digitally Signed By:AJIT KUMAR LPA 571/2025 Signing Date:15.0 2.20 26 20:58

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Page 6 of 14

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descriptively in relation to books to convey that the appellant’s publications cater to all boards and examinations, and that such expressions carry a heightened threshold for registration; absent clear secondary meaning, their monopolisation would impermissibly restrict language in trade and confer an unwarranted monopoly on a single trader.

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18. It is contended that the evidence relied upon by the appellant was duly examined and correctly rejected in paragraphs 12-20 of the impugned judgment. Mere sales figures and promotional expenditure, without cogent documentary substantiation, cannot confer exclusivity. The respondent submits that the mark is not shown to be used prominently or independently; rather it appears sporadically, in combination with the house mark “OSWAAL BOOKS” or as part of promotional phrases.

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19. Reliance is placed on Marico Limited v Agro Tech Foods Limited¹⁴ , to contend that trademark protection cannot be extended to common descriptive expression which is not inherently distinctive enough to grant an exclusive trademark right.

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20. Having heard Mr. Abhishek Malhotra, learned Counsel for the appellants and Mr. Gaurav Bhatia learned Counsel for the respondents and having perused the record, we proceed to weigh the rival submissions and the legality of the impugned judgment.

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21. At the outset, we are conscious of the scope of review available

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Signature Not Verified 142010:DHC:5337-DB Digitally Signed By:AJIT KUMAR LPA 571/2025 Signing Date:15.0 2.20 26 20:58

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Page 7 of 14

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within this intra-court appeal.

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22. To begin with, we find that this appeal does not entail any contentious factual inquiry nor any knotty question of law. This court vide order dated 09.09.2025 had recorded that “ The short issue that arise for consideration, therefore, is whether the wordmark “ONE FOR ALL” was disentitled to registration on the ground of want of distinctiveness ”

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23. The controversy in the present appeal lies in a narrow compass. The appellant seeks registration of the mark “ONE FOR ALL” in Class 16 for educational books and allied publications. The Trade Marks Registry refused the application under Section 9(1)(a) of the Act, holding the mark to be devoid of distinctive character and the appellant to have failed in establishing acquired distinctiveness/secondary meaning. The learned Single Judge, by the impugned judgment dated 28.05.2025, affirmed the refusal, principally on the reasoning that the expression is a common, laudatory phrase, descriptive of the appellant’s publications being a “one-stop solution”, and that the evidence led by the appellant did not demonstrate that the mark had acquired distinctiveness in trade.

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24. Needless to state, the legal position in such matters is wellsettled. Section 9(1)(a) proscribes registration of marks which are incapable of distinguishing the goods of one person from those of another. The proviso, however, statutorily preserves registrability where, before the date of application, the mark has acquired a Signature Not Verifieddistinctive character as a result of use. The inquiry, therefore, is

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Digitally Signed By:AJIT KUMAR LPA 571/2025 Signing Date:15.0 2.20 26 20:58

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Page 8 of 14

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twofold; (i) whether the mark is inherently distinctive; and; (ii) if it is not, whether the evidence demonstrates acquired distinctiveness sufficient to attract the proviso.

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25. Further, this court speaking through one of us (C.Hari Shankar J) in the decision of Leayan Global Pvt ltd. vs Bata India Ltd.¹⁵ had laid down as follows :

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“ 34.4.1Though Section 17(2)(b) does not permit any claim of exclusivity over a mark which is not distinctive, it does not contain any guideline as to how to decide whether a particular mark is, or is not, distinctive. The Trade Marks Act is, however, thankfully not silent in this regard, as the answer to this query is to be found in Section 9(1)(a)46 of the Trade Maks Act. Section 9 contains the absolute grounds on which registration of a trademark may be refused. Clause (a) of Section 9(1) does not allow registration of trademarks which are devoid of any distinctive character. The expression “devoid of any distinctive character” is explained, in the same clause, as “not capable of distinguishing the goods or services of one person from those of another person”. There is no reason as to why this explanation for the expression “devoid of any distinctive character” should not be applied to understand the expression “non-distinctive character” in Section 17(2)(b).

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34.4.2Thus, by virtue of Section 17(2)(b), no exclusivity can be claimed over a mark which is not capable of distinguishing the goods of one person from those of another. The aspect of distinctiveness, or the absence of it, has, therefore, to be assessed not merely by referring to the mark in vacuo, but in the context of the goods or services for which it is used. A common dictionary word, which may be part of daily usage, may become distinctive when used for goods or services with which it has no immediate connection.

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34.4.3We, in this context, are in entire agreement with the learned Single Judge’s observation that the word “POWER” does not evoke a connect, in the mind, between the mark and footwear, as it may, for example, evoke, if it were to be used in the context of boxing gloves. While the mark POWER may, therefore, arguendo, not be distinctive when used for an item such a boxing

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Signature Not Verified 152025:DHC:11331-DB Digitally Signed By:AJIT KUMAR LPA 571/2025 Signing Date:15.0 2.20 26 20:58

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Page 9 of 14

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gloves or, for that matter, an electric plug, it is distinctive when used for footwear.

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34.4.4Leayan’s contention that the mark POWER was lacking in distinctiveness cannot, therefore, be accepted.

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34.5 Re. plea that POWER FLEX is a descriptive mark, and cannot be injuncted – Section 35

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34.5.1In the impugned judgment, the learned Single Judge has also gone on to distinguish between descriptive marks and suggestive marks. Marks which are descriptive are not capable of being registered, in view of Section 9(1)(b)47 and cannot be injuncted because of Section 35; however, marks which, though not descriptive, are merely suggestive, may be registered, and can be injuncted. The position in law, in this regard, stands settled by the judgment of the Supreme Court in T.V. Venugopal v. Ushodaya Enterprises.¹⁶

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34.5.2The learned Single Judge has referred to various tests that have been evolved from time to time to decide whether a mark is distinctive or suggestive. In the facts of the present case, we do not deem any detailed discussion on that aspect to be necessary as, in our view, the word POWER FLEX is not even suggestive of footwear. The mark POWER FLEX does not bring, to mind, footwear. It cannot, therefore, be regarded as “(descriptive) of the character or quality” of the leather footwear of Leayan, within the meaning of Section 35.

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34.6 Even if it were to be assumed that Leayan’s POWER FLEX footwear was flexible in nature, which is one of Mr. Bansal’s contentions, that would, at the highest, render the mark POWER FLEX suggestive of the characteristics of the leather footwear used by Leayan, and not descriptive thereof. The applicable test, to determine whether a mark is descriptive, or suggestive, of the goods in respect of which it is used, or neither, is, to our mind, the extent to which the imagination must be strained to draw a connect between the mark and the goods. If the connect is immediate, the mark is descriptive; if, by straining the imagination, a connection can be found, the mark may be suggestive; if, however, there is no connect at all – such as, for example, the mark TODAY for perfumes – the mark is neither. Illuminatingly, Pernod Ricard refers to marks such as Air India, Mother Dairy, HMT, Windows, Doordarshan, LIC and SBI as being descriptive .

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16(2011) 4 SCC 85 (2011) 4 SCC 85

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Signature Not Verified 16(2011) 4 SCC 85 (2011) 4 SCC 85 Digitally Signed By:AJIT KUMAR LPA 571/2025 Signing Date:15.0 2.20 26 20:58

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Page 10 of 14

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34.7 As the mark POWER FLEX is not descriptive of the characteristics of the leather footwear for which it was used by Leayan, Leayan cannot claim the protection of Section 35.“

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26. It could be understood from the above reading that a mark is descriptive or not has to be assessed in the context of the goods and services it is being used. Also, a common word may also become distinctive if used for goods or services with which it has no immediate connection.

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27. Additionally, it is undisputed that the slogans are clearly capable of constituting a “trade mark” within the meaning of Sections 2(m) and 2(zb) of the Act. These slogans can be represented graphicallyand can be used in distinguishing the goods of one person from those of another. In some cases, these slogans are used to indicate, in the course of trade, a connection between the goods and the person entitled to use the mark.

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28. Also, with the rise of heavily digitised marketplace, with digital marketing expanding rapidly, slogans and taglines often perform a source-identifying function and, in many cases, may be more readily recognised than the brand or trade name itself. Slogans, taglines, and similar expressions have therefore become an integral component of source identification.

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29. Adverting to the facts of the present case, the learned Single Judge, in the impugned judgment, has proceeded substantially on the premise that “ONE FOR ALL” is a combination of common English

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Signature Not Verified

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Digitally Signed By:AJIT KUMAR LPA 571/2025 Signing Date:15.0 2.20 26 20:58

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Page 11 of 14

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words, and that permitting its registration would result in monopolisation of language.

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30. The learned Single Judge has held the mark to be descriptive, on the reasoning that it conveys the impression that the appellant’s books cater to all boards and examinations and are a universal solution. The finding of the learned single judge on the aspect of the applied mark in context of books are as follows:

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“27. In the present case, the phrase “ONE FOR ALL” is a common, laudatory slogan, clearly suggestive of the appellant’s intention to project its books as a universal solution for various academic needs. The appellant’s own submission that its‟ publications cater to multiple school boards and national level competitive examinations, when juxtaposed with the applied mark “ONE FOR ALL”, confirms that the mark functions descriptively conveying that the appellant’s books are suitable for everyone, across all exams and boards. Such use of the phrase directly describes the intended utility of the goods, and hence, is not arbitrary in the context of the appellant’s business.”

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31. In this regard, we respectfully disagree with the findings of the learned Single Judge, we find that the applied mark “ONE FOR ALL” in any manner cannot be associated with the trade or business of books or any other goods or services related to class 16. As mentioned above, the applied mark is used when a singular remedy is capable of dispensing with the requirement of multiple or parallel processes.

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32. The intended use of applied mark/slogan “ONE FOR ALL” is for goods falling under class 16. Class 16 covers tangible printed and paper-based goods. As mentioned above, “ONE FOR ALL” slogan is Signature Not Verified Digitally Signed By:AJIT KUMAR LPA 571/2025 Page 12 of 14 Signing Date:15.0 2.20 26 20:58

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Page 12 of 14

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used when a singular remedy is capable of dispensing with the requirement of multiple or parallel processes. The applied mark “ ONE FOR ALL” is not a common-way or slogan used in class 16 to describe goods and services.

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33. In addition, the respondent has failed to showcase the commercial use of any mark either identical or deceptively similar to the applied mark, especially in class 16. Moreover, there was no objection raised under Section 11 of the Act by the respondent in its Examination Report.

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34. We find that the applied mark “ONE FOR ALL” does not evoke a connect, in the mind, between the mark and books. The mark has no relation with books and can be used in any situation to communicate broad coverage or universality. “ONE FOR ALL” does not directly and unequivocally describe books. The applied mark is, at the highest, suggestive in nature. Therefore, satisfies the statutory requirement and is capable of registration.

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35. Additionally, applying the test mentioned above, the connect between books and “ONE FOR ALL” is not immediate. Even assuming that the appellant’s intention is to project its books as a universal solution for various academic needs, that would, at the highest render the mark suggestive and not descriptive.

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36. Therefore, according to us, the appellant cannot be refused registration in view of Section 9(1)(a) of the Act.

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Signature Not Verified

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Digitally Signed By:AJIT KUMAR LPA 571/2025 Signing Date:15.0 2.20 26 20:58

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Page 13 of 14

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37. In view of the facts and circumstances, the impugned orders of the learned Single Judge as well as of the Registrar of Trade Marks are set aside.

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38. The application of the appellant for registration of the mark is restored to the position as it was at the time when the order was passed and shall, thereafter proceed from that stage onwards.

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39. The appeal stands allowed accordingly with no orders as to costs.

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OM PRAKASH SHUKLA, J.

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C. HARI SHANKAR, J.

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FEBRUARY 10, 2026/pa

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Signature Not Verified Digitally Signed By:AJIT KUMAR LPA 571/2025 Signing Date:15.0 2.20 26 20:58

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Oswaal Books and Learnings Private Limited v. the Registrar of Trade Marks

Case brief

What is this about?

What did the court decide?

Oswaal Books and Learnings Private Limited v. the Registrar of Trade Marks

Case brief

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What the court decided

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