Indian courts especially the Bombay High Court’s IP Division are telling Examiners and Registrars to show their work. Bare-bones refusals under Section 11 or Section 9 that ignore context, evidence, or the statute’s own “safety valves” are being set aside. The Yamaha “WR” ruling is the template: if similarity is arguable, reason it out or advertise-before-acceptance and let opposition test it. A composite-mark ruling for KHADI PRAKRITIK PAINT says the same thing in Section 9 territory: assess the mark as a whole, don’t just label it “descriptive.” And a caution from the TikTok well-known case: mis-citing a section isn’t always fatal if the decision can be sustained on the right grounds – so applicants still need a strong merits record.
Why this matters (Founders, Owners, Litigators)
- For brand owners: Don’t accept a one-paragraph refusal that skips your evidence. Courts are insisting on reasoned orders that grapple with market context and coexistence before killing an application.
- For litigators: The play is to attack unreasoned findings and push for Section 20(1) proviso (“advertise before acceptance”) where context is nuanced.
- For Examiners/Registrars: The bar is reasoned, holistic analysis – particularly for composite/device marks and when applicants put credible evidence on the table.
Anchor Case: Yamaha’s “WR” vs “WR-V” — context defeats a knee-jerk Section 11 refusal
What happened: The Registry refused Yamaha’s “WR” (Class 12) citing similarity with Honda’s “WR-V” under Section 11(1). The High Court called that order “cryptic,” faulted it for ignoring international use, coexistence, and product-space differences (bikes vs. cars), and directed the application to be advertised before acceptance under the proviso to Section 20(1)—so the public can oppose if they wish. Substring overlap isn’t the end of the analysis.
Signal to the Registry: If context is non-trivial, use the Act’s safety valve (advertise-before-acceptance) rather than killing an application by form letter. And if you refuse, write reasons that engage with the applicant’s evidence.
Companion Case : KHADI’s “PRAKRITIK PAINT” device – composite marks must be assessed as a whole
What happened: The Registry refused KVIC’s Hindi device mark “PRAKRITIK PAINT” as descriptive (Section 9(1)(b)). The Bombay High Court set aside the refusal, stressing that composite/device marks are judged holistically – you don’t pull out a word, call it descriptive, and stop. The Court also flagged inconsistency with related approvals (English device/word).
Takeaway: Holistic distinctiveness and consistency are must-address factors in a reasoned order.
The doctrine behind “say why”: Reasoned orders are not optional
From administrative law 101: the Supreme Court in Kranti Associates v. Masood Ahmed Khan holds that reasons are the soul of orders – for judicial, quasi-judicial and administrative decisions. In trade mark practice, this translates to: show your pathway from facts to conclusion; engage the applicant’s evidence; apply the correct statutory route (e.g., Section 20(1) proviso) where appropriate.
Caveat: The TikTok “well-known” ruling reminds applicants that mis-citing a section by the Registrar is not automatically fatal if the outcome is defensible under the Act’s correct criteria (there, Section 11(6) factors and public-policy concerns due to the app ban). You still need substantive merit; don’t bank only on procedural error. (SpicyIP)
Comparison Table — What courts are rewarding (and rejecting)
| Issue | “Cryptic” Refusal (struck down) | Reasoned Path (survives) |
|---|---|---|
| Similarity under s.11 | Substring = confusion → refuse | Contextual analysis (goods, channels, consumers) or advertise-before-acceptance if arguable. |
| Section 9 descriptiveness | Single-word dissection | Composite mark assessed as a whole; consider prior approvals and marketplace association. |
| Use of s.20(1) proviso | Ignored | Applied where evidence/coexistence make outright refusal premature. |
| Engaging applicant’s evidence | Unaddressed | Discussed with reasons (international use, coexistence, segmentation). |
Flowchart — Attacking a bare-bones refusal (Applicant/Litigator SOP)
Receive refusal → Map defects (no reasons / wrong section / no engagement with evidence) → File review/appeal highlighting Kranti duty to give reasons → Ask for advertise-before-acceptance (s.20(1) proviso) if context warrants → If still refused without reasons, move High Court (IPD) → Remand/advertisement → Opposition (if any) → Final decision.
Case Timeline — Typical cadence when you challenge a cryptic refusal
- Week 0–4: Refusal issued; collect your evidence dossier (registrations abroad, use timelines, market segmentation, absence of confusion).
- Week 4–8: Review/appeal to Registrar/IPD; argue context + discretion under s.20(1) proviso; press duty to give reasons.
- Week 8–16: Hearing; if order still ignores context, writ to High Court.
- Post-order: If the Court orders advertisement before acceptance, prepare for opposition on the merits.
Checklist — Building a record that survives “say why”
- Context pack: Goods proximity (bikes ≠ cars), channels, price points, consumer attention levels, coexistence abroad, and lack of confusion. (Yamaha)
- Composite-mark evidence: Device/label elements, stylization, and overall impression; prior approvals of analogous forms. (KHADI device)
- Procedural ask: Explicitly request Section 20(1) proviso when similarity is arguable rather than obvious.
- Reasoning attack: Cite Kranti Associates on the duty to give reasons; point to what the order didn’t consider.
- Realism check: If there’s a public-policy overlay (e.g., statutory bans), be ready that courts may uphold outcomes despite technical errors. (TikTok)
Sparring-partner skeptic check
- Don’t over-read Yamaha: The Court didn’t bless “WR”; it required the Registry to use process properly—i.e., advertise-before-acceptance so the public can oppose. You still have to win the opposition on the merits.
- Not all “crypto-refusals” die: If the substance is sound, a court may salvage the decision despite a wrong statutory label. Build merit, not just procedural criticism. (TikTok)
About the Author
Suresh Kumar, Advocate, is the Managing Attorney at Unimarks Legal Solutions, Chennai. Practising since 2008, he focuses on trademark infringement and passing off, appeals from the Registrar, rectification, and online/platform enforcement before the Madras High Court (IPD), Commercial Courts, and District Courts across Tamil Nadu. His practice is courtroom-first, grounded in robust pleadings, evidence discipline, and post-order enforcement. He frequently speaks on IP law at industrial forums and universities and is associated with SICCI, CII, and the Tamil Nadu Chamber of Commerce.
This article is for information and education. It is not legal advice, does not create a lawyer–client relationship, and avoids case-specific recommendations. Conflicts are screened per firm policy before any engagement.
