In C.M.A.(TM) No.27 of 2025, Kuil Fireworks Industries v. Registrar of Trade Marks, the Madras High Court set aside a trademark refusal, holding that the Registrar had impermissibly dissected a composite device mark and tested only the word element for distinctiveness. The Hon’ble Mr. Justice N. Anand Venkatesh noted that the law on this issue is now too well settled to support the Registrar’s approach.
In this matter, the counsels of Unimarks Legal appeared for the appellant Kuil Fireworks Industries, a Sivakasi-based fireworks manufacturer. The refusal was quashed and the application directed to proceed to advertisement.
The Device Mark vs Word Mark Distinction Why It Matters
When you apply for trademark registration, the character of your mark matters fundamentally to how it is assessed. A pure word mark application claims rights in the word itself, regardless of font, colour, or stylisation. A device mark application claims rights in the specific visual representation the combination of the word as rendered in a particular typeface, with particular graphic elements, colours, and stylistic features.
This distinction carries major practical consequences at the examination. The Registrar may well find that the word “supersonic” assessed as a standalone word is descriptive for certain goods or lacks distinctive character. But that conclusion about the word alone cannot be applied to a device mark application without assessing the visual device as a whole. The two assessments are legally and practically distinct.
The anti-dissection rule requires examiners to assess composite marks including composite device marks in their totality. The examiner must consider the overall commercial impression created by the combination of word and visual elements, not the isolated distinctiveness of any single component.
Key Takeaway: Applying for a device mark is not merely a stylistic choice it changes the legal framework for examining the mark. The Registrar must assess the device in its entirety, not reduce it to its word component and apply Section 9 to the word alone.
The Case: Kuil Fireworks Industries v. Registrar of Trade Marks
The Application
Kuil Fireworks Industries, operating from Sivakasi the heart of India’s fireworks manufacturing industry, filed Application No.5937106 for registration of the composite device mark SUPERSONIC (with device) in Class 13 for fireworks, sparklers, blasting paper, and blasting caps.
The mark as applied for was a composite mark the word “SUPERSONIC” presented within a specific device incorporating graphic elements, creating a visual composite that functions as a unified trademark.
The Examination and Prosecution History
The examination report was issued on 18.09.2023, raising objections. The appellant replied on 11.10.2023 and thereafter attended multiple hearings before the Registrar. Despite the extended prosecution history spanning from the examination report in September 2023 through multiple hearings the Registrar ultimately rejected the application by impugned order dated 01.05.2025 under Section 9(1)(a) of the Trade Marks Act, on the ground that the applied mark lacks distinctive character.
The Appeal
The appellant appealed to the Madras High Court under Section 91 of the Trade Marks Act, 1999 read with Rule 156 of the Trade Marks Rules, 2017. Before the Hon’ble Mr. Justice N. Anand Venkatesh, the central argument was straightforward: the Registrar had refused the application by dissecting the device mark and testing only the word “supersonic” for distinctiveness without considering the composite device mark as a whole.
The Judgment
The Court’s reasoning in paragraph 5 is direct and unambiguous:
“In the considered view of this Court, the appellant had applied for a device mark and not word mark. If an application is submitted for a composite device mark which also contains the word, the authority is expected to consider the combination of the device and the word and the authority cannot dissect the same. In the case in hand, the respondent has dissected the word supersonic, without considering the fact that there was a device mark sought for by the applicant. The law on this issue is now too well settled and hence, this Court finds that the reasoning for the rejection of the application is not sustainable.”
The impugned order was set aside. The Registrar was directed to entertain the application, advertise in the Trade Marks Journal, and proceed in accordance with law.
The Law Is “Too Well Settled” – What That Phrase Signals
The Court’s observation that “the law on this issue is now too well settled” is significant. It is not a tentative or developing legal position it is a settled principle of Indian trademark law that the Registrar is expected to know and apply correctly at the examination stage. When a High Court says the law is too well settled, it is expressing something between frustration and clarity: this error should not be occurring.
The anti-dissection principle has been affirmed repeatedly across Indian trademark jurisprudence. The Madras High Court in the same period has set aside composite mark refusals in the PAKODA POINT case (CMA (TM) No.17 of 2024) on identical grounds. The Delhi High Court affirmed the same principle in Navaid Khan v. Registrar of Trade Marks (2023 SCC Online Del 3273). The consistent judicial response across courts and across different marks tells applicants something important: if you filed for a composite mark and were refused based on word-only analysis, you have strong grounds for appeal.
What Constitutes a Device Mark Under Indian Trademark Law?
A device mark under the Trade Marks Act, 1999 is a mark that includes a visual element a logo, graphic, stylised presentation, or combination of word and visual elements as distinct from a word mark, which claims rights in the word itself irrespective of presentation.
When filing a device mark application, the applicant submits a representation of the mark as it appears with its specific visual elements. The registration, if granted, protects the mark in that visual form. Competitors who use the same word in an entirely different visual presentation may not infringe a device mark registration which is why device marks are often filed alongside word mark applications as part of a layered brand protection strategy.
However, the flip side of this narrower scope is that device marks benefit from the anti-dissection rule. The Registrar cannot extract the word from the device, test the word in isolation, and refuse the device mark on that basis. The visual composition of the device its overall impression is what must be assessed.
Why Fireworks and Consumer Goods Brands Face This Problem Frequently
Fireworks brands particularly those based in Sivakasi, commonly use composite marks that combine an evocative word (SUPERSONIC, THUNDERBOLT, GOLDEN STAR) with a distinctive visual device. The word element, taken alone, might be argued to be evocative of the nature of the product. But the composite mark word plus device creates a brand identity that functions as a source-identifier in the market.
The same pattern arises across FMCG, food products, and consumer goods. Brand owners who use composite marks for commercial products and find their applications refused based on the word element alone are frequently in the same position as Kuil Fireworks with a valid anti-dissection argument that was not adequately addressed by the Registrar.
Key Takeaway: If your composite device mark application was refused on Section 9(1)(a) or 9(1)(b) grounds based only on the word component without any analysis of the visual device the refusal order does not correctly apply the law. The anti-dissection principle is settled, and an appeal under Section 91 is appropriate.
Three Lessons for Brand Owners Filing Device Mark Applications
Lesson 1: File both a device mark and a word mark as part of your strategy
The SUPERSONIC case underscores the strategic importance of the three-layer filing strategy: file a word mark, a device mark, and potentially a composite mark simultaneously. Each registration protects a different aspect of your brand. Device marks benefit from the anti-dissection rule. Word marks provide broader protection against competitors who adopt the same word in a different visual form. Together, they build a layered protection structure.
Lesson 2: Characterise your application correctly in every submission
Every reply to an examination report, every hearing submission, and every ground of appeal should explicitly state what type of mark is applied for. If your mark is a composite device mark, say so clearly and require the Registrar to assess the mark in those terms. Do not allow the examination to proceed as though it were a word mark application without objecting to that characterisation.
Lesson 3: A long prosecution history does not foreclose an appeal
The Kuil Fireworks application went through an examination report in September 2023, a reply in October 2023, multiple hearings, and ultimately a refusal in May 2025 a prosecution history spanning approximately two years. Despite this extended history, the appeal succeeded on a structural legal error that was present throughout. A long prosecution history does not validate the refusal if the refusal itself is based on an error of law.
About This Matter
In C.M.A.(TM) No.27 of 2025, the counsel of Unimarks Legal appeared for the appellant Kuil Fireworks Industries before the Madras High Court. The appeal was allowed by the Hon’ble Mr. Justice N. Anand Venkatesh on 11.12.2025, setting aside the impugned order dated 01.05.2025. The Registrar was directed to advertise the mark in the Trade Marks Journal and proceed in accordance with law.
If your device mark or composite mark application has been refused or if you have received an examination report that isolates only the word element of your composite mark Unimarks Legal Solutions can advise on your reply and appeal strategy.
Speak to Our Trademark Team – Free Consultation → /contact-us/]
About the Author
Advocate Suresh Kumar has a law practice specialising in Intellectual Property Rights, Commercial legal advisory, debt recovery, commercial litigation, and dispute resolution for domestic and international clients. He is enrolled with the Bar Council of Tamil Nadu and Puducherry and represents clients before all courts and forums in Chennai, Tamil Nadu. This article reflects his understanding of the current legal position and is intended solely for informational purposes.
Disclaimer
This article is published by Unimarks Legal for informational purposes only. It is not intended to constitute legal advice or to create an attorney-client relationship. The contents are based on Indian law as applicable at the time of writing and are subject to change. Readers should not act upon the information in this article without seeking independent legal counsel. Every legal situation is unique, and the application of law depends on specific facts and circumstances. Past results do not guarantee future outcomes. This publication is made in compliance with the Bar Council of India Rules, which prohibit advertising or solicitation by advocates. Any information received through this article should not be construed as legal advice.
For specific legal guidance on your matter, you may consult a qualified advocate in your jurisdiction.
