Slogans Are Inherently Non-Distinctive And Must Meet A High Threshold To Qualify For Trademark Registration

This case pertains to the registrability of the phrase “ONE FOR ALL” as a trademark in respect of educational books under Class 16. The appellant, Oswaal Books and Learnings Pvt. Ltd., challenged the refusal of its application by the Registrar of Trade Marks on the ground that the mark lacked distinctive character as per Section 9(1)(a) of the Trade Marks Act, 1999. The High Court of Delhi, in appeal, considered whether the slogan had acquired distinctiveness or secondary meaning sufficient for registration.

Factual Background: Oswaal Books and Learnings Private Limited is engaged in publishing help books for a variety of academic boards like CBSE, ICSE, ISC, Karnataka Board, and national-level examinations including NEET, JEE, CAT, CLAT, and RRB-NTPC. On October 20, 2020, the appellant applied to register the mark “ONE FOR ALL” under Class 16, claiming usage from August 20, 2020. The phrase was used as a tagline accompanying the “OSWAAL BOOKS” brand to indicate its books’ comprehensive utility for all educational boards and exams. Despite extensive marketing, including online sales through Amazon and Flipkart, and a promotional spend of over ₹96 lakhs, the application was rejected by the Registrar.

Procedural Background: The Registrar issued an examination report objecting to the mark under Section 9(1)(a) for lacking distinctiveness and requested supporting documents, including a user affidavit. The appellant responded with evidence, written submissions, and appeared in a hearing. However, on December 14, 2023, the Senior Examiner refused the application, holding that “ONE FOR ALL” was composed of common words and lacked inherent or acquired distinctiveness. The appellant filed the present appeal under Section 91 of the Trade Marks Act.

Legal Issue: The core legal issue was whether the mark “ONE FOR ALL” possessed inherent distinctiveness or had acquired a secondary meaning through usage, thereby qualifying for registration under the proviso to Section 9(1) of the Trade Marks Act?

Discussion on Judgments: The appellant relied on Evergreen Sweet House v. Ever Green and Others, 2008 SCC OnLine Del 1665, to argue that arbitrary combinations of common words can be registrable without proof of secondary meaning if they are unrelated to the product’s nature. It also cited Telecare Network India Pvt. Ltd. v. Asus Technology Pvt. Ltd., 2019 SCC OnLine Del 8739, for the proposition that even suggestive marks are inherently distinctive.

However, the Court found those judgments inapplicable. It referred to Ilua Sole Proprietorship v. Asian Hobby Crafts LLP, 2024 SCC OnLine Del 8299, which reiterated that generic or descriptive words cannot be monopolized unless they acquire a secondary meaning. The Court also cited Institute of Directors v. Worlddevcorp Technology and Business Solutions Pvt. Ltd., 2023 SCC OnLine Del 7841, to reinforce that common English expressions like “ONE FOR ALL” fall within the bar of Section 9(1)(a) unless distinctiveness is proved.

The Court further drew from McCarthy on Trademarks and Unfair Competition (5th Ed.), which explains that slogans that merely convey an informational or promotional message rather than indicating the source of goods are not registrable as trademarks. Examples included “Drive Safely” and “Proudly Made in USA”, which were not considered capable of distinguishing goods.

Reasoning and Analysis of the Hon’ble Judge: The Court examined the evidence provided by the appellant to substantiate the acquired distinctiveness of the phrase “ONE FOR ALL”. The CA certificates and invoices submitted by the appellant were found inadequate, as they either related generally to “OSWAAL BOOKS” or made only scant reference to the slogan. The promotional materials did not show consistent and prominent standalone use of “ONE FOR ALL” as a source identifier.

The Court found that the phrase had been used primarily alongside the main mark “OSWAAL BOOKS” and had not developed an independent commercial identity. It also noted that the earliest evidence of public usage, such as YouTube reviews, dated only to mid-2022, not supporting the claimed usage from 2020.

Further, the phrase “ONE FOR ALL” was held to be descriptive in context. Given that the books were intended for a wide range of exams and boards, the phrase merely conveyed that the books catered to everyone. Thus, it functioned as a marketing slogan rather than a distinctive identifier of trade origin.

The Court acknowledged the cultural familiarity of the phrase through its association with Alexandre Dumas’ The Three Musketeers, reinforcing its commonality and generic appeal.

Final Decision: The High Court dismissed the appeal and upheld the Registrar’s decision refusing registration of the mark “ONE FOR ALL”. It held that the phrase lacked inherent distinctiveness, and the appellant had failed to demonstrate secondary meaning or acquired distinctiveness through evidence. Mere promotional expenditure and limited use were insufficient to override the statutory bar under Section 9(1)(a).

Law Settled in This Case: This case reinforces the principle that common phrases or slogans are inherently non-distinctive and must meet a high threshold to qualify for trademark registration. Mere usage in advertising or in conjunction with a primary trademark does not establish secondary meaning. A slogan like “ONE FOR ALL” that directly describes the utility of a product cannot be monopolized unless it is shown to have acquired distinctiveness through sustained, exclusive, and recognizable use. The burden of proving secondary meaning lies firmly on the applicant, and generic or laudatory phrases, even if cleverly marketed, are not inherently registrable.

Case Title: Oswaal Books and Learnings Private Limited Vs. The Registrar of Trade Marks
Date of Order: May 28, 2025
Case Number: C.A.(COMM.IPD-TM) 19/2024
Neutral Citation: 2025:DHC:4519
Name of Court: High Court of Delhi
Name of Judge: Hon’ble Ms. Justice Mini Pushkarna

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor – Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539

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