On March 26, 2025, the Delhi High Court, in the case of M/S. Mocemsa Care v. The Registrar of Trade Marks, 2025, overturned a refusal by the Trademark Registry to register the device mark “OH THAT! NATURAL (Device Mark).” The Registry had rejected the application on the grounds that the mark lacked distinctiveness and that a single invoice filed as proof of prior use was inadequate.
However, the Court took a more contextual approach, holding that the combination and stylization of common English words could indeed create a distinctive mark. It also accepted that the single invoice submitted was sufficient, considering the short period between the claimed use and the date of application. This decision reaffirmed key principles under trademark law and clarified how distinctiveness and evidence of use should be assessed.
This case sets the stage for revisiting the broader framework surrounding trademark refusal in India—how it works, when it applies, and what options applicants have to challenge a refusal.
Understanding Grounds for Trademark Refusal in India
Under the Trade Marks Act, 1999, a trademark application may be refused based on either absolute or relative grounds. These are considered during the examination phase by the Indian Trademark Registry.
1. Absolute Grounds – Section 9
Section 9 deals with the intrinsic qualities of the trademark. Refusal under this section can occur if the trademark:
- Lacks a distinctive character, making it incapable of distinguishing the goods or services of one person from those of another.
- Merely describes the kind, quality, quantity, intended purpose, or geographical origin of the goods or services.
- Is deceptive, scandalous, or contrary to public morality or law.
The core idea is that generic or purely descriptive marks do not function as source identifiers and should remain available for public use.
2. Relative Grounds – Section 11
Section 11 protects against confusion and infringement of prior rights. A trademark may be refused if:
[1] C.A. (COMM.IPD-TM) 20/2024
- It is identical or deceptively similar to an earlier trademark.
- There is a likelihood of confusion due to similarity in the marks and/or the goods and services.
- It may exploit the reputation of an earlier well-known trademark.
Relative grounds are evaluated in the context of existing marks and the risk they pose to both the earlier right holder and the public.
Duty of the Registrar Under Section 18(5)
A significant procedural safeguard under Indian trademark law is Section 18(5) of the Trade Marks Act. It requires the Registrar to provide:
- A written order stating the specific grounds of refusal or conditional acceptance.
- The material relied upon in making the decision.
This requirement ensures that applicants have a clear understanding of the Registry’s reasoning, allowing them to respond or challenge it appropriately.
In Intellectual Property Attorneys Association v. The Controller General of Patents, Designs & Trade Marks & Anr (Delhi High Court, 2019), the Court emphasized that this statutory duty cannot be bypassed. It ruled that Rule 36 of the Trade Marks Rules, 2017—which permitted decisions to be communicated without reasoning—was inconsistent with the Act. Thus, Section 18(5 prevails, and the Registrar must share a reasoned order with the applicant.
Remedies Available Against Trademark Refusal
Receiving a refusal does not mean the end of the application process. The law offers several options to overcome or challenge the refusal:
1. Filing a Review Petition – Section 127(c)
Under Section 127(c) of the Trade Marks Act, and as per Rule 119 of the Trade Marks Rules, 2017, an applicant may:
- File a review petition using Form TM-M within 30 days of receiving the refusal order.
- Request an extension of up to one additional month, if justified.
- Submit a statement of grounds explaining why the Registrar’s decision should be reviewed.
This review gives the applicant a chance to present further arguments, correct errors, or clarify misunderstandings.
[1] https://indiankanoon.org/doc/140186939/
2. Appeal to the High Court – Section 91
If the review is unsuccessful, the applicant may appeal under Section 91 of the Trade Marks Act. While appeals were earlier filed before the Intellectual Property Appellate Board (IPAB), such matters are now heard by the respective High Courts, following the dissolution of the IPAB.
The appeal must be filed within three months of the decision/order and not the date on which communication is received, and the High Court has the power to re-examine both factual and legal aspects of the case.
In 2021, the IPAB was dissolved vide Tribunal Reform Ordinance 2021 and the Appellate Authority returned to the concerned High Courts. This time, however, special and separate Intellectual Property Rights Division (“IPRD”) and Intellectual Property Rights Division Benches have been announced for dealing with various original and appellate matters arising from trademarks and other intellectual properties.
Conclusion
The Mocemsa Care judgment underscores a vital message: the distinctiveness of a trademark must be assessed holistically, and even limited evidence of use can suffice, depending on the facts of the case. Moreover, the decision reiterates the need for the Registry to provide reasoned orders in compliance with Section 18(5).
Understanding the statutory grounds for refusal—both absolute and relative—is essential for businesses, legal practitioners, and startups seeking to build and protect their brand. More importantly, knowing the remedies and rights available when a trademark is refused ensures that applicants are not left without recourse.
Whether it’s responding to objections, filing a review, or appealing to the High Court, an informed and strategic approach can often turn a setback into a successful registration.
Click Here to Read Judgement Copy –
[1] https://ipindia.gov.in/writereaddata/Portal/News/728_1_Dissolution_notification_0001.pdf
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By Rishita Pandey