Introduction
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A trademark application should not fail because the examiner refused to read the applicant’s reply. That is what the case of Purpos Planet v. The Registrar of Trade Marks, decided by the Hon’ble Delhi High Court establishes. Purpos Planet is a partnership firm with over 27 years of presence in the beauty, fashion, and fragrances sector. They applied for registration of the word mark BIG INDIA in Class 05 in November 2021, covering pharmaceuticals, dietary supplements, disinfectants, fungicides, and related preparations. The Trade Marks Registry issued an objection under Section 9(1)(a) of the Trade Marks Act, 1999, calling the mark geographical and non-distinctive. The applicant responded with detailed submissions. The Registry then refused the application through an order that did not address a single one of those submissions. The Delhi High Court quashed the refusal order and remanded the matter for fresh consideration, holding that the impugned order violated the principles of natural justice and showed total non-application of mind.
Background of the Mark
Purpos Planet filed the Application on 18 November 2021 for registration of the word mark BIG INDIA in Class 05 on a proposed-to-be-used basis. The goods covered by the application included pharmaceuticals, medical and veterinary preparations, sanitary preparations for medical purposes, dietetic food and substances adapted for medical or veterinary use, food for babies, dietary supplements for human beings and animals, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, and herbicides.
The Trade Marks Registry issued an Examination Report on 22 December 2021, raising a single objection under Section 9(1)(a) of the Trade Marks Act, 1999. The objection stated that the mark was a geographical name or a non-distinctive mark and was thus not capable of distinguishing the goods of one person from those of another. Purpos Planet filed a detailed reply on 19 January 2022, disputing the objection and providing reasons why it was untenable. The Registry granted the applicant an opportunity of hearing. Thereafter, through an order dated 27 May 2025, the Senior Examiner of Trade Marks refused the application. The grounds stated in the refusal order were that the mark BIG INDIA was common and non-distinctive, and that granting exclusive rights over those two words would unfairly restrict others from using them. The refusal order also referred to the fact that Purpos Planet’s device mark incorporating the stylized words BIG INDIA had been separately accepted in the same Class 05, with conditions restricting exclusive use of the constituent words. The examiner distinguished the device mark from the word mark on the basis that the stylized representation, taken as a whole, was capable of functioning as a trademark, whereas the word mark BIG INDIA, stripped of stylization and graphical features, did not meet the threshold of distinctiveness. Purpos Planet challenged that order before the Delhi High Court under Section 91 of the Trade Marks Act, 1999.
The Appellant’s Case
Purpos Planet’s challenge rested on a set of arguments that, taken together, amounted to a comprehensive critique of how the Registry had approached the examination.
The first argument invoked the anti-dissection rule. The mark BIG INDIA had been examined by separating the two constituent words and concluding that each word, individually, was generic, common, and non-distinctive. Purpos Planet submitted that this approach was incorrect in law. A trademark must be considered in its entirety, not dissected into its components for the purpose of scrutiny for registration. When examined as a whole, BIG INDIA was uncommon, unique, and distinctive. The Registry had failed to ask the right question.
The second argument went to the context-specific nature of the distinctiveness inquiry. Section 9(1)(a) of the Trade Marks Act, 1999 does not prohibit registration of all marks that lack inherent distinctiveness in the abstract. The provision bars registration of marks that are not capable of distinguishing the goods of one person from those of another. The distinctiveness examination, the applicant argued, must be conducted in relation to the specific goods for which registration is sought. BIG INDIA, applied to goods such as pharmaceuticals, dietary supplements, disinfectants, and fungicides, has no descriptive or geographical meaning whatever. The expression is wholly arbitrary in relation to those goods, and an arbitrary mark in relation to its goods is, by definition, distinctive.
The third argument pointed to consistency within the Registry’s own record. Purpos Planet had already obtained registrations for the word mark BIG INDIA in Classes 31 and 43, albeit with appropriate disclaimers clarifying that those registrations conferred no exclusive right to use the word INDIA separately. Those earlier registrations demonstrated that the Registry had, on prior occasions, examined the mark in relation to the goods in question and found it to meet the required standard. No objection under Section 11 of the Trade Marks Act, 1999, relating to conflicting marks, had been raised against any of those applications. Refusing the Class 05 application on different reasoning, without addressing the fact of those earlier registrations, was internally inconsistent.
The fourth argument addressed the disclaimer mechanism. Purpos Planet stated unequivocally that it did not seek exclusive rights over the word INDIA separately. It was seeking registration of the combined mark BIG INDIA as a whole, and it was willing to accept a disclaimer confirming that the registration conferred no monopoly over the geographical term in isolation. The Registry had recognised this mechanism in granting registrations for numerous other marks incorporating the word INDIA with a similar disclaimer. A list of such marks, including trademarks that had been declared well-known and incorporated the word INDIA, was placed before the Court.
The fifth argument rested on precedent. In Jain Shikanji Private Limited v. Satish Kumar Jain, (2023) 303 DLT 729, the Delhi High Court held that a mark comprising two generic and commonly used words may, in a given case, be distinctive and unique and capable of distinguishing the goods, and thus registrable. The ratio of that judgment, applied to BIG INDIA, led to the same conclusion: the combination of two individually generic words does not automatically produce a generic composite mark, particularly when the combination has no descriptive connection to the goods in question. Additionally, in Radico Khaitan Limited v. Union of India and Another, 2020 SCC OnLine Del 2832, the Delhi High Court held that the mere inclusion of a geographical name as part of a trademark did not disentitle the mark from registration or protection.
The Registry, arguing in support of its refusal order, maintained that each mark must be separately examined on its own merits, that the word mark BIG INDIA was generic and common, and that granting exclusive rights over those two words would unfairly restrict others from using them. The difference between the device mark and the word mark, the Registry submitted, was legitimate: the stylized device had distinctive graphical features that rendered the combination capable of functioning as a trademark, whereas the word mark, standing alone, did not.
For a closer look at how Indian courts approach the natural justice dimension of IP office decisions in a closely related context, the post on patent application rejection and the principles of natural justice draws out the same set of procedural obligations that bind every quasi-judicial authority in the IP system.
What the Court Found
Hon’ble Justice Jyoti Singh examined the refusal order dated 27 May 2025 and identified what was the central defect. The Court accepted, at the outset, that the two words BIG and INDIA, taken separately and individually, were generic, common, and non-distinctive. Purpos Planet itself did not dispute that position. The critical question was not whether each constituent word was distinctive on its own; the question was whether the combination BIG INDIA, considered as a whole and in relation to the Class 05 goods, was capable of distinguishing the applicant’s goods from those of others, and whether the Registry had carried out that examination in a legally sufficient manner.
On that question, the Court found that the Registry had failed to perform any meaningful examination at all. Purpos Planet had, in its reply to the Examination Report, raised seven distinct and substantive submissions in support of its application. Those submissions went to the anti-dissection rule, the context-specific nature of the distinctiveness test, the prior registrations in other classes, the disclaimer offer, the Jain Shikanji case, the Radico Khaitan case, and the practice of granting registrations for marks incorporating INDIA with appropriate disclaimers. The refusal order addressed none of these submissions. It did not mention them. It did not distinguish them. It did not say why they failed to persuade the examiner. It simply restated the original objection and added the distinction between the device mark and the word mark.
The Court held that this methodology violated the principles of natural justice. An order that adjudicates on the rights and contentions of a party must be reasoned and speaking. The applicant has a right to know why the decision went against it and why the specific points it raised did not find favour with the authority. That right, the Court observed, is not merely a procedural nicety: it is the mechanism through which appellate review becomes possible and through which the integrity of the adjudicatory process is maintained. When the authority refuses to engage with the applicant’s submissions, it defeats the entire purpose of calling for a response to the Examination Report and granting an opportunity of hearing. Those procedural steps exist precisely so that the examiner can consider and respond to the applicant’s case. An order that treats those submissions as if they had never been made renders the hearing a formality rather than a genuine opportunity to be heard.
The Court therefore quashed the refusal order dated 27 May 2025 and directed the Senior Examiner of Trade Marks to reconsider the said Application, taking into account all of Purpos Planet’s submissions and granting the applicant a fresh opportunity of hearing. The reconsideration was to be completed within four months of receipt of the order. Importantly, the Court made explicit that it expressed no opinion on the merits of BIG INDIA’s registrability. That question remains entirely open for the Registry to decide, correctly this time, after engaging with the full breadth of the applicant’s case.
The Doctrine
Three doctrinal threads run through the judgment, each of which deserves attention from practitioners who work in trademark prosecution.
The first is the anti-dissection rule. Indian trademark law, following the general principle applicable in many jurisdictions, requires that a composite mark be evaluated as a whole. This rule has direct practical significance for applicants whose marks combine words or elements that are individually non-distinctive. The fact that each component of a composite mark is generic or descriptive does not automatically make the combination generic or descriptive, particularly where the combination produces an expression that is arbitrary in relation to the relevant goods. The Registry’s approach in this case, evaluating BIG and INDIA as two separate words and concluding that because each was non-distinctive the combination must also be non-distinctive, is precisely the kind of analytical error that the anti-dissection rule is designed to prevent. That error infected the examination from the start.
The second is the goods-relative nature of the distinctiveness inquiry under Section 9(1)(a). The provision does not ask whether a mark is abstract, distinctive or non-distinctive in isolation. It asks whether the mark is not capable of distinguishing the goods or services of one person from those of another. That comparison is between the mark and the goods it will identify. A mark that is generic in relation to one category of goods may be arbitrary and therefore distinctive in relation to another. BIG INDIA has no descriptive or referential meaning in relation to pharmaceuticals, dietary supplements, fungicides, or dental wax. When examined against those goods rather than in isolation, the mark may well pass the Section 9(1)(a) test. The Registry’s order made no attempt to conduct that examination, and the Court identified that failure as one of the central deficiencies in the impugned order. The broader framework of trademark registration in India, including how the Trade Marks Act, 1999 handles these distinctions, is set out in the complete guide to trademark law in India.
The third is the disclaimer mechanism and its relationship to geographical names. Indian trademark law, like trademark law in most common law systems, treats geographical names with caution. The concern is that granting exclusive rights over a place name allows one trader to monopolise terminology that other traders may legitimately need to use. However, the solution that the Trade Marks Act, 1999 provides is not categorical refusal: it is registration of the composite mark as a whole, with a disclaimer confirming that the registration confers no exclusive right to the geographical element in isolation. The Registry’s own practice reflects this approach; it has granted registrations to numerous composite marks incorporating the word INDIA, including marks subsequently declared well-known, on exactly this basis. To refuse BIG INDIA as a word mark without engaging with the disclaimer mechanism, and without explaining why the mechanism that has been accepted in other cases was inapplicable here, was to apply an inconsistent and unexplained standard. The condonation case covered in the post on trademark registration delays and how the Registry handles them reflects a different but related dimension of how procedural propriety at the Registry level directly affects trademark applicants’ substantive rights.
The Problem with Unreasoned Registry Orders
This case is not an isolated incident. Practitioners who regularly appear before the Trade Marks Registry know that examination orders and refusal orders often fail to engage with the specific submissions made in reply to examination reports. The machinery works as follows, an examination report is issued, the applicant responds with a written reply and in most cases appears for a personal hearing, and an order is passed thereafter. The order is supposed to reflect genuine consideration of what the applicant said. Too often, the order merely restates the original objection in different words, or adds a brief distinguishing observation, without addressing the substantive arguments the applicant has made.
This failure has significant consequences. It defeats the purpose of the reply and hearing process. It deprives applicants of reasoned decisions against which they can assess whether an appeal is merited. It forces applicants to approach courts for relief that could have been resolved at the Registry level. And it contributes to the backlog of trademark appeals in the Delhi High Court, which is already substantial.
Section 91 of the Trade Marks Act, 1999, the provision under which Purpos Planet approached the Delhi High Court, allows an appeal from any decision of the Registrar. That provision exists because Registry decisions affect private rights, and a body that affects private rights must exercise its power with procedural regularity. The Delhi High Court has consistently held that a quasi-judicial authority must pass reasoned, speaking orders.
Also Read: Bombay HC: Corporate Restructuring and Trademark Rights
Conclusion
The outcome in this case did not resolve the question of whether BIG INDIA deserves registration in Class 05. That question goes back to the Registry, which now must do what it failed to do the first time, read the applicant’s submissions, apply the anti-dissection rule, assess distinctiveness in relation to the goods, address the prior registrations in other classes, consider the disclaimer mechanism, and then pass a reasoned order that tells the applicant why it succeeded or why it did not.
What the case does settle, at least for the purposes of the trademark prosecution, is the minimum standard that any Registry order must meet before it can withstand scrutiny. That standard is not demanding in an abstract sense. It requires that the authority read and respond to what the applicant said. It requires that the examination be conducted against the right legal framework, meaning the mark as a whole assessed against the goods it will identify, not the constituent words assessed in the abstract. And it requires that the result be explained in terms that make appellate review meaningful.
