Brief Introduction
This case arises out of an appeal under Section 91 of the Trade Marks Act, challenging the refusal of registration of the “SoEasy” trademark. Ashim Kumar Ghosh vs. The Registrar of Trade Marks dealt with the refusal of registration for the trademark “SoEasy” in respect of instructional and teaching materials (Class 16) after it had initially been accepted and advertised.
The case examines the powers of the Registrar under Section 19 of the Trade Marks Act, 1999 to withdraw acceptance of a trademark application and considers whether “SoEasy” is distinctive or only descriptive and generic, impacting its eligibility for registration. Ashim Kumar Ghosh filed a trademark application for “SoEasy” (No. 5799569), meant for instructional and teaching materials. His application was first accepted and published, but later the Registrar issued notice for withdrawal of acceptance, claiming the mark lacked distinctiveness. Following a hearing, the application was formally refused under Sections 9(1)(a) and 9(1)(b), as the mark was argued to be generic, descriptive, and laudatory.
Procedural Detail
The application was filed on February 2, 2023, on a proposed-to-be-used basis. The Registrar examined it and initially accepted it, subject to use as a whole, publishing it in the Trade Mark Journal in April 2024. No opposition was filed after publication. However, in December 2024, a notice under Section 19 sought to withdraw acceptance, citing that the mark was not distinctive. The appellant responded, but after a hearing in February 2025, the Registrar issued a fresh refusal in May 2025. The applicant then appealed to the High Court of Delhi.
| Event | Date |
|---|---|
| Trademark Application Filed | 02 February 2023 |
| Accepted & Published | April 2024 |
| Notice for Withdrawal of Acceptance (Sec 19) | December 2024 |
| Hearing | February 2025 |
| Fresh Refusal | May 2025 |
| Appeal to Delhi High Court | 2025 |
Core Dispute
The central dispute is whether the Registrar could lawfully withdraw the acceptance of “SoEasy” and refuse its registration as a trademark. Secondly, the dispute was whether “SoEasy” is inherently distinctive or merely descriptive or generic in connection to the goods/services, and thus ineligible for protection under Section 9(1) of the Act.
Detailed Reasoning
The Court outlined the relevant statutory scheme. Section 19 allows the Registrar to withdraw acceptance of an application before registration, even if accepted and advertised without opposition. This power, the Court noted, is to preserve the purity of the Register but is not unfettered.
- On the argument about procedural fairness, the Court found that the Registrar was indeed within rights to revisit the acceptance, and there was no vested right to registration in the absence of an opposition.
The significant legal debate centered around Section 9(1), which bars registration of marks lacking distinctiveness (Clause (a)), or which consist exclusively of marks that designate the kind, quality, etc., of goods/services (Clause (b)). The Registry’s position was that “SoEasy” is laudatory, generic, and merely descriptive.
To interpret distinctiveness, the High Court relied extensively on established legal principles from decisions such as Teleecare Network India Pvt Ltd v. Asus Technology Pvt Ltd (2019 SCC OnLine Del 8739), which, following the US landmark Abercrombie classification, defined categories:
- Generic
- Descriptive
- Suggestive
- Arbitrary
- Fanciful
Suggestive, arbitrary, and fanciful marks are considered inherently distinctive.
The Court explained that for a mark to be suggestive, it must require some imagination or thought for a consumer to connect the mark with the goods. A descriptive mark, in contrast, immediately conveys a quality or characteristic of the goods.
Applying this to “SoEasy,” especially in the context of learning/educational materials, the Court observed the mark does not directly describe the goods’ kind or quality. Instead, it subtly suggests ease of use, thus needing consumer imagination. Therefore, the mark was classified as “suggestive” rather than descriptive or generic, making it inherently distinctive and entitled to registration.
Therefore, although the Registrar followed proper process and procedure under the Act, on the facts of the case, his reasoning about lack of distinctiveness was incorrect. The Court set aside the refusal, holding the mark to be registrable.
Decision
The High Court allowed the appeal. It set aside the impugned order of the Registrar, directed the Registry to proceed with the registration of “SoEasy,” and disposed of pending applications.
Concluding Note
This judgment clarifies that the Registrar can revisit acceptance of trademark applications before registration, but must do so with sound reasoning grounded in statutory and judicial principles. Importantly, it underscores that coined or suggestive marks—even if composed of ordinary words—can be inherently distinctive if they compel consumers to make a mental leap connecting the mark to the goods. The decision strengthens the doctrine protecting inventive and suggestive marks, while restraining the arbitrary rejection of applications based solely on dictionary meanings.
Case Details
| Field | Information |
|---|---|
| Case Title | Ashim Kumar Ghosh Vs. The Registrar of Trade Marks |
| Order Date | 24 November 2025 |
| Case Number | C.A.(COMM.IPD-TM) 48/2025 |
| Neutral Citation | 2025:DHC:10350 |
| Court Name | High Court of Delhi |
| Name of Hon’ble Judge | Hon’ble Mr. Justice Tejas Karia |
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 Written By: Advocate Ajay Amitabh Suman,
IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
