Introduction

In the case of Oswaal Books and Learnings Private Limited vs. The Registrar of Trade Marks, Case Number: C.A. (COMM.IPD-TM) 19/2024, the appellant is involved in publishing educational books for various boards and competitive exams. Oswaal Books applied for the registration of the mark "ONE FOR ALL" under Class 16 for printed books and provided evidence of its usage since August 2020. However, the Senior Examiner of Trade Marks denied the registration, stating that the phrase lacks distinctiveness, as it is a common combination of words and is descriptive. In response, the appellant filed an appeal, arguing that the mark had acquired distinctiveness and secondary meaning, supported by evidence of usage, sales, and public recognition. The matter at hand concerns whether "ONE FOR ALL" is inherently distinctive or if it has acquired distinctiveness, also known as secondary meaning, pursuant to Section 9(1)(a) of the Trade Marks Act, which would justify its registration as a trademark. Additionally, it is essential to evaluate whether the evidence provided by the appellant is adequate to demonstrate that acquired distinctiveness exists.

Arguments

Appellant

The appellant contended that the mark "ONE FOR ALL" has been in continuous and extensive use since its adoption, gaining significant popularity and receiving considerable investment in promotion. To support its claim, evidence of sales, promotions, and usage has been submitted, all aimed at demonstrating the mark's secondary meaning and distinctiveness. It’s argued that "ONE FOR ALL" is an arbitrary phrase that goes beyond being merely descriptive, as it effectively functions as a source identifier. Furthermore, it was noted that the Examiner did not fully consider this evidence and may have overlooked principles of natural justice. The appellant also relies on precedents where unique combinations of common words have been granted protection, when they are deemed arbitrary and distinctive, highlighting the importance of the mark in its specific context.

The mark in question is quite unique and serves as a source identifier specifically for educational books. There's been a significant investment in its promotion, leading to widespread use and strong consumer recognition, which showcases its acquired distinctiveness. Additionally, it’s also important to note that there’s been an alleged violation of natural justice, as the respondent did not adequately engage with the evidence presented about the secondary meaning of the mark.

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Respondent

The respondent contended that the phrase in question is quite common and generally considered laudatory and descriptive, which means it doesn’t have a unique identity on its own. That unfortunately, the evidence supporting its distinctiveness isn’t very strong, as much of the documentation refers more to "OSWAAL BOOKS" rather than "ONE FOR ALL" itself. Additionally, the respondent also argued that this phrase is widely used and recognized in popular culture, including references from well-known works like "The Three Musketeers," making it difficult for any one entity to claim exclusive rights to it.

Decision

The High Court upheld the denial of registration for "ONE FOR ALL" by the Registrar and dismissed the appeal. In examining the registration of trademarks, it's important to note that Section 9(1)(a) prevents the registration of marks that lack distinctive character, unless the applicant can demonstrate acquired distinctiveness or secondary meaning. The phrase "ONE FOR ALL" is considered descriptive in the context of educational books, suggesting that the books cater to all boards or students, which makes it inherently non-distinctive. While the evidence provided by the appellant largely focused on the brand "OSWAAL BOOKS," it didn't effectively support "ONE FOR ALL" as a standalone mark. Instances where "ONE FOR ALL" was used tended to be alongside other marks or slogans, not providing enough exclusivity. Additionally, showing sales and advertising figures without a clear connection to this specific phrase isn't adequate to establish acquired distinctiveness. Since "ONE FOR ALL" is rooted in common English usage and has literary origins, it can't be claimed as exclusive unless it demonstrates secondary significance in the marketplace. Both parties referenced relevant case law that clarifies the distinction between arbitrary and descriptive marks, typically siding with the rejection of registration when descriptive meanings are present and secondary meanings remain unproven.

Conclusion

Descriptive or common phrases typically face significant challenges when it comes to trademark registration, as they often require proof of secondary meaning through clear and direct evidence. When such phrases are combined, particularly in descriptive contexts, the threshold for obtaining registration becomes even more stringent. Simply investing in advertising and sales is not enough to secure a trademark if there isn’t a clear, demonstrable association between the mark and the goods or services offered. In assessing trademark applications, courts conduct a careful evaluation that considers both the inherent distinctiveness of the mark and the factual context of how it is used and recognized within relevant trade circles. This thorough judicial scrutiny ensures that only distinctive marks receive protection under trademark law.