Baskin Robbins Licensee Seeks Trademark Over ‘ICE CREAM ROCKS’; Bombay High Court Finds Words Generic and Descriptive, Upholds Registrar’s Refusal of Registration
‘ICE CREAM ROCKS’ Lacks Distinctiveness: Bombay High Court Upholds Registrar’s Refusal to Grant Trademark Monopoly Over Generic Expression
Facts
Graviss Foods Private Limited, associated with the Baskin Robbins ice-cream brand, applied on 17 January 2024 to register the word mark “ICE CREAM ROCKS” in Classes 29 and 35. The mark was stated to have been used since 10 June 2023 for bite-sized coated ice-cream treats with flavoured centres and coatings such as brownie crumbles, hazelnut pieces and rice crispies.
The Registrar of Trade Marks rejected both applications on 23 December 2025. For Class 29, objections were raised under Sections 9(1)(a) and 11(1) of the Trade Marks Act, 1999, including lack of distinctiveness and similarity with the registered mark “ICE CREAM WORKS.” The Class 35 application faced objections under Sections 9(1)(a) and 9(1)(b).
Graviss Foods challenged those refusals before the Bombay High Court under its appellate jurisdiction.
A significant factual distinction noticed by the Court was that the petitioner actually marketed the product as “BR ICE CREAM ROCKS”, whereas the monopoly sought through registration was over the standalone words “ICE CREAM ROCKS”, without “BR” or “Baskin Robbins.”
Issues
The principal issues were whether “ICE CREAM ROCKS”, considered as a whole, possessed sufficient inherent or acquired distinctiveness to qualify for registration; whether the expression was generic, descriptive or laudatory and therefore prohibited by Sections 9(1)(a) and 9(1)(b); whether approximately seven months of use before the applications could establish acquired distinctiveness; and whether the Registrar’s inadequately reasoned orders required remand or could nevertheless be sustained by the High Court exercising its co-extensive appellate jurisdiction.
A further issue arose under Section 11 concerning the alleged similarity between “ICE CREAM ROCKS” and the earlier registered “ICE CREAM WORKS” marks.
Petitioner’s Arguments
Graviss Foods principally attacked the Registrar’s orders as containing conclusions rather than reasons. It argued that the orders essentially reproduced statutory language without explaining what characteristic, quality or intended purpose of the goods was allegedly described by “ICE CREAM ROCKS.”
The petitioner accepted that no monopoly could be claimed over “ICE CREAM” standing alone, but argued that adding “ROCKS” created a distinctive expression. According to it, “ICE CREAM ROCKS” had no dictionary meaning as a complete phrase and was an unusual combination that had to be assessed as a whole rather than dissected into individual words.
It argued that “ROCKS” could mean stones, movement, or colloquially that something is excellent, none of which directly described dairy products. At most, the expression was suggestive and required a mental step by the consumer to connect it with the product.
The petitioner also relied upon approximately 130 registered marks incorporating “ICE CREAM”, contending that the applications should at least have been advertised so that any genuine objections could emerge through opposition proceedings.
Respondent’s Arguments
The Registrar defended the refusals, contending that the orders sufficiently identified the statutory objections and explained why the mark lacked inherent and acquired distinctiveness.
It was argued that the appellate jurisdiction under Section 91 was not intended merely to substitute the Court’s view for that of the Registrar and that interference was unwarranted unless the exercise of statutory discretion was arbitrary, perverse or contrary to law.
The Registrar further submitted that remand would serve no useful purpose because “ICE CREAM ROCKS” was inherently incapable of registration under Section 9.
It was also argued that registration of other marks containing “ICE CREAM” created neither a precedent nor an enforceable right to identical treatment for subsequent applicants.
Analysis of the Law
The Court explained that Section 9(1)(a) imposes a statutory prohibition against registration of marks devoid of distinctive character, while Section 9(1)(b) prohibits registration of expressions consisting exclusively of indications designating the kind, quality, intended purpose or other characteristics of goods or services.
Such expressions must remain available for bona fide use by traders rather than being monopolised by one proprietor.
The crucial distinction was between the mark actually used commercially and the mark sought to be registered. Graviss Foods relied heavily on its Baskin Robbins lineage, but the proposed registration contained neither “Baskin Robbins” nor “BR.”
The Court found that the distinctive element in actual commercial usage was precisely the Baskin Robbins/BR branding. Merely adding “ROCKS” to “ICE CREAM” did not make the standalone expression capable of distinguishing the petitioner’s goods from those of others.
Under Section 9(1)(b), “ICE CREAM” designated the kind of goods, while “ROCKS” could describe either their rock-like shape or, colloquially, their quality or excellence. The expression therefore remained descriptive even when considered as a whole.
Acquired Distinctiveness
The Court also rejected the claim of acquired distinctiveness.
The claimed use commenced on 10 June 2023, while the applications were filed on 17 January 2024—approximately seven months later. Further, the evidence showed use of the wider mark containing the Baskin Robbins/BR differentiator rather than independent use establishing distinctiveness of “ICE CREAM ROCKS” standing alone.
The Court found insufficient evidence that consumers had come to recognise and associate the standalone expression exclusively with Graviss Foods.
It ultimately concluded that the seven-month period did not support the claim that the mark had acquired distinctiveness or become a household name.
Precedent Analysis
The Court considered several authorities.
Gurdial Singh Fijji v. State of Punjab, (1979) 2 SCC 368 and Kranti Associates Pvt. Ltd. v. Masood Ahmed Khan, (2010) 9 SCC 496 were relied upon by the petitioner for the proposition that recording reasons is an element of natural justice and that conclusions cannot substitute for reasons.
Huhtamaki Oyj v. Controller of Patents was cited regarding the standard expected from statutory authorities, while Bidisha Ghoshal v. Registrar of Trade Marks was relied upon against cryptic and boilerplate trademark refusal orders.
The Court also relied upon Pernod Ricard India Pvt. Ltd. v. Karanveer Singh Chhabra, 2025 INSC 981, reiterating that generic, descriptive and laudatory terms ordinarily cannot be monopolised unless they have acquired secondary meaning or distinctiveness in the perception of consumers.
The petitioner additionally relied upon Kleo Consumer Brands Private Limited v. Jeevan Kumar, Senior Examiner of Trade Marks while arguing that advertisement would permit affected proprietors to oppose the applications.
Court’s Reasoning
The Court accepted one important criticism of the Registrar: the impugned orders were not articulately reasoned and came close to being vulnerable on that ground.
However, that defect did not automatically justify remand.
Justice Somasekhar Sundaresan held that the High Court’s appellate jurisdiction under Section 91 was co-extensive with that of the Registrar. The Court could therefore itself examine the material that was before the Registrar and determine whether Section 9 prohibited registration.
Upon undertaking that exercise, the Court reached the same substantive conclusion: “ICE CREAM ROCKS” lacked both inherent and acquired distinctiveness.
The Court found that registration would effectively allow the petitioner to monopolise generic and descriptive words when its own commercial use relied upon “Baskin Robbins” or “BR” to supply the distinguishing character.
The petitioner’s reliance on approximately 130 registrations containing “ICE CREAM” also failed because most contained a separate distinguishing brand element such as Amul or Arun. More fundamentally, the Court held that registration of another mark neither creates a precedent nor gives a later applicant a right to equivalent registration.
Section 11 Became Academic
Interestingly, the Court found the Registrar’s Section 11 analysis deficient because there was no proper comparison between “ICE CREAM ROCKS” and the earlier marks in relation to their respective goods and services.
But the Court declined to decide that issue because failure under Section 9 was independently fatal. Once the mark was absolutely prohibited from registration under Section 9, the correctness of the Registrar’s Section 11 analysis became academic.
Conclusion
The Bombay High Court dismissed both petitions and refused to interfere with the Registrar’s rejection of the trademark applications for “ICE CREAM ROCKS.”
The Court held that the standalone expression lacked inherent and acquired distinctiveness and fell within both Sections 9(1)(a) and 9(1)(b) of the Trade Marks Act. The petitioner could not obtain a statutory monopoly over generic/descriptive words merely because its actual product was marketed under the wider and distinguishable “BR/Baskin Robbins ICE CREAM ROCKS” branding.
Accordingly, the Court found no purpose in remanding the matter merely for advertisement and disposed of both petitions without interfering with the Registrar’s orders.
The judgment also concluded with a significant institutional observation: the Court criticised the quality, formatting, precision and articulation of orders passed by the Trade Marks Registrar and similarly placed intellectual-property authorities, noting that poorly presented orders create difficulties in appellate review. It requested the Registrar’s advocates to place these concerns before the relevant leadership.
Case Details
Case: Graviss Foods Private Limited v. The Registrar of Trade Marks
Court: High Court of Judicature at Bombay, Ordinary Original Civil Jurisdiction, Commercial Division
Case Number: Commercial Miscellaneous Petition No. 20 of 2026 with Commercial Miscellaneous Petition (L) No. 10288 of 2026
Judge: Justice Somasekhar Sundaresan
Date: 16 September 2026
Neutral Citation: 2026:BHC-OS:20268
Result: Petitions dismissed/disposed of without interference. Registrar’s refusal to register “ICE CREAM ROCKS” upheld under Section 9 of the Trade Marks Act, 1999
