Delhi High Court Denies Trademark Registration for “ONE FOR ALL” Used for Educational Books — “No Secondary Meaning or Distinctiveness Established Under Section 9(1)(a) of the Trade Marks Act”

Court’s Decision

The Delhi High Court dismissed the appeal filed under Section 91 of the Trade Marks Act, 1999, upholding the Registrar of Trade Marks’ refusal to register the mark “ONE FOR ALL” for educational books. The Court held that the phrase was:

“devoid of any distinctive character and… a combination of very common words and cannot be monopolized by an individual.”

It concluded that the applied trademark had failed to acquire distinctiveness or secondary meaning and hence did not qualify for registration under the proviso to Section 9(1) of the Trade Marks Act.

Facts

• The appellant, a publisher of educational books, applied on 20 October 2020 to register the mark “ONE FOR ALL” in Class 16.
• Objections under Section 9(1)(a) of the Trade Marks Act were raised in the examination report dated 4 November 2020, citing lack of distinctiveness.
• The appellant submitted a reply with user affidavit, written submissions, and evidence including promotional materials, invoices, and CA certificates.
• Despite these submissions, the Senior Examiner of Trade Marks, by order dated 14 December 2023, rejected the application.
• The appellant then filed this appeal under Section 91 of the Trade Marks Act.

Issues

1. Whether the mark “ONE FOR ALL” is inherently distinctive or had acquired distinctiveness.
2. Whether the impugned refusal violated the principles of natural justice.
3. Whether the submitted documents adequately proved distinctiveness and secondary meaning under Section 9(1) proviso.

Petitioner’s Arguments

• The mark “ONE FOR ALL” was not descriptive and had been used continuously and extensively since August 2020.
• The phrase had acquired a secondary meaning and was associated with the appellant’s products alone.
• Substantial evidence (advertising expense of ₹96.42 lakhs, sales figures, and third-party reviews) was furnished to demonstrate reputation and goodwill.
• The Trade Marks Registry failed to examine this evidence and merely conducted a prima facie assessment.
• Reliance was placed on precedents such as Evergreen Sweet House v. Ever Green and Telecare Network v. Asus Technology to assert that arbitrary use of common words can be protectable without secondary meaning.

Respondent’s Arguments

• The phrase “ONE FOR ALL” is generic, lacking distinctiveness, and not capable of distinguishing the appellant’s goods.
• The appellant failed to produce persuasive evidence to prove that the mark had acquired secondary meaning.
• Most of the documents relied upon were not filed before the Registry and were introduced for the first time in the appeal.
• Evidence of usage pertained primarily to “OSWAAL BOOKS” and not to “ONE FOR ALL” as a standalone mark.
• The mark was used with prefixes/suffixes, further undermining the claim of independent distinctiveness.

Analysis of the Law

• Section 9(1)(a) prohibits registration of trademarks devoid of any distinctive character unless the mark has acquired distinctiveness or is well-known.
• The Court emphasized that mere advertising expenditure or sales figures are insufficient; there must be persuasive evidence that the public associates the mark with a particular source.
• Referring to Ilua v. Asian Hobby Crafts and the principles in McCarthy on Trademarks and Unfair Competition, the Court reiterated that: “Commonly used slogans… face a significantly high threshold for registration unless they have acquired a secondary meaning.”

Precedent Analysis

• Ilua Sole Proprietorship v. Asian Hobby Crafts LLP — Held that descriptive/generic terms cannot be monopolised unless they acquire secondary meaning.
• Institute of Directors v. Worlddevcorp Technology — Words of common English usage, even as phrases, cannot be registered unless proven to have attained distinctiveness.
• McCarthy on Trademarks — A slogan must be used to identify and distinguish the seller’s goods/services and not merely serve as promotional or descriptive content.

Court’s Reasoning

• The CA certificate, invoices, website screenshots, and YouTube videos failed to conclusively show the mark “ONE FOR ALL” was used as an independent indicator of origin.
• “ONE FOR ALL” was either used with “OSWAAL BOOKS” or as part of promotional slogans, not as a standalone trademark.
• The phrase described the appellant’s objective of catering to all boards and exams, rendering the mark descriptive.
• The reference to “All for one, one for all” from The Three Musketeers further illustrated the phrase’s commonplace usage.
• Hence, the mark could not be said to have acquired secondary meaning or distinctiveness as required under the proviso to Section 9(1)(a).

Conclusion

The Court concluded that the appellant had:

“failed to discharge the burden of proving acquired distinctiveness, or secondary meaning through credible and persuasive evidence.”

Accordingly, the appeal was dismissed, and the order refusing registration was upheld.

Implications

• The judgment affirms that descriptive or commonly used phrases like “ONE FOR ALL” require stringent proof of acquired distinctiveness for registration.
• It sets a clear standard that slogans must be shown to serve as source identifiers and not merely as promotional expressions.
• Entities using common or laudatory phrases must demonstrate exclusive, prominent, and continuous use as a trademark to secure registration under Indian trademark law.