ADS Spirits Pvt. Ltd. v. The Registrar of Trade Marks

High Court of Delhi at New Delhi, Single Judge | Date of Decision: 21st July, 2026 Case Number: C.A.(COMM.IPD-TM) 8/2026 and I.A. 3697/2026, Bench: Hon’ble Ms. Justice Jyoti Singh

BACKGROUND

The Appellant, ADS Spirits Pvt. Ltd., incorporated in 2010 and part of the ADS Group of Companies described as a fast-growing liquor conglomerate in the Indian alcohol beverage space with a total liquor sale figure of over ₹7,500 crores as of March 2025 and ownership of brands such as Royal Green Whisky, Double Blue Whisky, Episode Gold Whisky and High Impact Deluxe Whisky, filed Trade Mark Application No. 5514779 on 03.07.2022 seeking registration of the mark “OFFER” in Class 33 for “alcoholic beverages, except beers; alcoholic preparations for making beverages,” on a “proposed to be used” basis. The Respondent, Registrar of Trade Marks, issued an Examination Report dated 18.11.2022 raising an objection under Section 9(1)(a) of the Trade Marks Act, 1999, in standard pre-drafted language stating that the mark was “a common surname/personal name/geographical name/ornamental or a non-distinctive geometrical figure” without specifying which category applied. The Appellant filed a reply dated 14.12.2022 (recorded elsewhere in the judgment as filed on 26.12.2022) rebutting the objection, followed by hearing notices on 16.03.2024, 25.06.2024, 21.10.2024 and 02.04.2025, and an additional reply on 24.06.2025 (in advance of the hearing scheduled for 25.06.2024) citing case law and a list of 31 registered marks incorporating the word OFFER with prefixes or suffixes (e.g., OFFER SALE, offerME, Grab Offers, OFFERUP). By order dated 30.10.2025, the Respondent rejected the application under Section 9(1)(a), holding that the word OFFER, being commonly used in demanding a discount on the purchase of goods or services, was devoid of “uniqueness” and hence not registrable. The Appellant filed the present statutory appeal under Section 91 of the Trade Marks Act, 1999, challenging this rejection as illegal, perverse and non-speaking, contending that the Respondent had failed to consider any of its submissions, documents, or cited case law, and had applied a legally incorrect test (uniqueness) rather than the statutory test of distinctiveness.

ISSUES FOR DETERMINATION

1. Whether the impugned order dated 30.10.2025 is vitiated for being non-speaking, unreasoned and cryptic, insofar as it failed to consider the Appellant’s submissions, documents and cited judgments in its reply and additional reply to the Examination Report.
2. Whether the Respondent applied the correct legal test under Section 9(1)(a) of the Trade Marks Act, 1999 in refusing registration of the mark OFFER, or erroneously substituted a test of “uniqueness” for the statutory test of “distinctive character.”
3. Whether the mark OFFER, considered in relation to the specific goods for which registration was sought (alcoholic beverages and alcoholic preparations for making beverages in Class 33), is devoid of distinctive character within the meaning of Section 9(1)(a).

KEY HOLDINGS OF THE COURT

1. On the first issue, the Court held that the impugned order was wholly non-speaking, unreasoned and cryptic, as it failed to engage with any of the Appellant’s submissions in its reply to the Examination Report and its additional reply of 24.06.2025 — including the list of 31 registered marks incorporating the word OFFER and the Appellant’s reliance on Abu Dhabi Global Market v. Registrar of Trademarks, Delhi (2023 SCC OnLine Del 2947). The Court held, relying on I Am the Ocean, LLC v. Registrar of Trade Marks (Bombay High Court, 2023 SCC OnLine Bom 3341) and this Court’s own decisions in Psychotropic India Limited v. Registrar of Trade Marks, ABC Mechanicals v. ABC Trade Agencies and Ors., and Cargill Incorporated v. The Registrar of Trade Marks, that the Registrar, as a quasi-judicial authority, is bound to consider all material, submissions and judgments placed on record and to pass a reasoned, speaking order, and that failure to do so constitutes an abdication of the Registrar’s quasi-judicial function under the 1999 Act and the 2017 Rules. The Court found the order liable to be quashed on this ground alone.
2. On the second and third issues, the Court held that the Respondent had applied an incorrect legal test, since Section 9(1)(a) proscribes registration only where a mark is “devoid of any distinctive character” meaning incapable of distinguishing the applicant’s goods or services from those of another person and does not import any requirement of “uniqueness,” novelty, or inventiveness. The Court held that distinctiveness cannot be assessed in the abstract but must be tested in relation to the specific goods for which registration is sought, since a mark may be descriptive or generic for one category of goods yet arbitrary for another (citing Mohd. Rafiq & Others v. Modi Sugar Mills Ltd., Disruptive Health Solutions Private Limited v. Registrar of Trade Marks, and the spectrum-of-distinctiveness analysis in Bata India Limited v. Chawla Boot House and People Interactive (India) Private Limited v. Vivek Pahwa). Applying this framework, the Court held that the Respondent had not undertaken any exercise of examining whether OFFER was distinctive specifically in relation to alcoholic beverages, and had instead refused registration solely on the ground that OFFER is commonly used in connection with discounts — a finding the Court also held to be factually imprecise, since “offer” and “discount” are not synonymous and the word “offer” is not ordinarily used as a standalone term to signify a discount (which is typically qualified by words such as “special,” “limited,” “exclusive,” or “holiday”).
3. The Court distinguished the authorities relied upon by the Respondent – Venus Worldwide Entertainment Private Limited v. Popular Entertainment Network (Pen) Private Limited and Another (mark KHILADI held generic, having been used in at least 40 films/TV shows), IHHR Hospitality Pvt. Ltd. v. Bestech India Pvt. Ltd. (mark ANANDA held to evoke a widely shared cultural association with peace/abode), and Pernod Ricard India Private Limited and Another v. Karanveer Singh Chhabra (word PRIDE held to be in common usage within the alcoholic beverages trade itself, citing McDowell’s Pride, Highland Pride, Royal Pride and Pride of India) – on the basis that in each of those cases, the correct test had been applied and a specific finding made as to common usage in the relevant trade, which had not occurred here.
4. The final operative order: the impugned order dated 30.10.2025 was quashed and set aside, and the Respondent was directed to reconsider Trade Mark Application No. 5514779 within four months from the date of the judgment, after granting the Appellant an opportunity of hearing and considering the replies and documents on record, with the Court expressly clarifying that it had not expressed any opinion on the merits of whether the mark OFFER is in fact registrable.

STATUTORY PROVISIONS INVOLVED

Section 9(1)(a) of the Trade Marks Act, 1999, which bars registration of trade marks “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,” was the central provision in the appeal. The Court held that the Respondent had misapplied this provision by testing the mark against an extraneous standard of “uniqueness” rather than the statutorily defined concept of distinctive character, and by failing to assess distinctiveness relative to the specific goods (alcoholic beverages) for which registration was sought.

Section 91 of the Trade Marks Act, 1999, under which the present statutory appeal was filed against the Registrar’s order, was referenced as the jurisdictional basis for the appeal but was not itself the subject of substantive interpretation in the judgment.

Section 11 of the Trade Marks Act, 1999, concerning relative grounds for refusal of registration (i.e., conflict with earlier marks), was referenced in the discussion of Oswaal Books and Learnings Private Limited v. Registrar of Trade Marks as a contextual factor (the absence of any Section 11 objection in that case), but was not independently applied to the facts of the present case, since no Section 11 objection had been raised against the OFFER mark.

REASONING OF THE COURT

The Court’s reasoning proceeded in two connected stages.
First, addressing the adequacy of the Registrar’s order as a quasi-judicial decision, the Court reasoned that the Examination Report itself betrayed non-application of mind by reciting a standard, multi-ground objection (surname, personal name, geographical name, ornamental character, non-distinctive geometrical figure) without identifying which, if any, actually applied to the word OFFER. This defect was, in the Court’s reasoning, compounded by the impugned order’s failure to engage with the Appellant’s specific submissions and evidence – particularly the list of 31 comparable registered marks incorporating “OFFER” and the cited precedent – which the Court treated as material the Registrar was statutorily obliged to consider and address, drawing on the Bombay High Court’s reasoning in I Am the Ocean and this Court’s consistent line of authority holding that a cryptic, non-engaging order defeats the very purpose of inviting a response to an Examination Report.

Second, and independently, the Court reasoned through the substantive legal standard under Section 9(1)(a), emphasizing that the statute defines “distinctive character” solely by reference to capacity to distinguish goods/services of one trader from another, with no textual basis for a “uniqueness” requirement. The Court reasoned, by reference to the established spectrum-of-distinctiveness framework (arbitrary/fanciful, suggestive, descriptive, generic), that the assessment of distinctiveness is inherently relative to the goods in question – an ordinary word may be devoid of distinctiveness for goods to which it directly relates in common usage, yet be arbitrary and fully protectable for unrelated goods, as illustrated by “SUN” for lanterns (held not descriptive) and by analogous examples such as “ivory” for soaps or “gap” for clothes. Applying this, the Court reasoned that the Registrar’s finding that OFFER is commonly used in connection with discounts – even if accepted, addressed only OFFER’s use in a discount/commercial-promotion context generally, and did not amount to any finding that OFFER lacks capacity to distinguish alcoholic beverages specifically, which was the relevant inquiry the Registrar never undertook. The Court further reasoned that the equation of “offer” with “discount” was itself questionable, since the two words are not synonymous and “offer” is not typically used unqualified to signal a discount, undermining even the factual premise of the Registrar’s reasoning. Having found the Registrar’s test and analysis deficient on both procedural and substantive grounds, the Court considered it necessary to remit the matter for fresh consideration applying the correct legal standard, rather than itself pronouncing on the ultimate registrability of the mark.

DOCTRINAL SIGNIFICANCE

Within the bounds of what was actually decided, this judgment reinforces two related, well-established strands of trade mark jurisprudence rather than establishing new doctrine. First, it reaffirms the growing body of Delhi High Court authority (and the Bombay High Court’s parallel view in I Am the Ocean) holding that orders of the Registrar of Trade Marks refusing registration must be reasoned and must engage with the applicant’s specific submissions, evidence and cited precedent, failing which the order is liable to be quashed on procedural grounds alone. Second, it reaffirms that the statutory test under Section 9(1)(a) is one of “distinctive character” capacity to distinguish goods/services of one trader from another and not “uniqueness,” novelty or inventiveness, and that this assessment must be conducted relative to the specific goods or services for which registration is sought, consistent with the spectrum-of-distinctiveness framework applied in Disruptive Health Solutions, Bata India, and related authorities. The judgment does not itself determine whether OFFER is in fact a registrable mark for alcoholic beverages; that question was expressly left open and remitted to the Registrar for fresh determination applying the correct legal test, with the Court taking no position on the eventual outcome. As a short, single-issue statutory appeal disposed of on procedural and threshold-legal-test grounds, its significance is properly confined to these narrow points of trade mark registration procedure and standard, rather than any substantive pronouncement on the distinctiveness of common English words as applied to alcoholic beverages generally.

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