CMA (TM) No.4 of 2024 | Madras High Court | 27.02.2025
A Section 9(1)(b) objection is one of the most common examination report objections issued by the Trade Marks Registry in India. The Registrar raises it whenever an examiner believes that a mark consists exclusively of words that designate the intended purpose, quality, or other characteristics of the goods. However, receiving this objection does not mean the mark is unregistrable. A recent Madras High Court judgment C.M.A. (TM) No.4 of 2024 demonstrates precisely why the Registrar’s view at examination is not the final word, and why a well-argued appeal under Section 91 can succee
In this matter, the counsels for the appellant appeared for the appellant before the Hon’ble Mr. Justice Senthilkumar Ramamoorthy. The Court set aside the refusal order and directed the application to proceed to advertisement.
What Is Section 9(1)(b) and Why Does It Matter?
Section 9(1)(b) of the Trade Marks Act, 1999 bars registration of marks that consist exclusively of designations which may serve in trade to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or time of production of the goods. The keyword in the provision is “exclusively”; the mark must be nothing more than a descriptor of the goods before the objection can be sustained.
The distinctiveness spectrum developed through a long line of trademark jurisprudence places marks on a scale from generic through descriptive, suggestive, arbitrary, and fanciful. Only generic and descriptive marks are barred under Section 9(1)(b). Suggestive marks those which require imagination, thought, or perception to connect the mark to the product’s characteristics cross the threshold into registrability.
The difficulty in practice is that examiners frequently conflate “suggestive” with “descriptive.” That conflation is precisely what happened in this case and precisely what the Madras High Court corrected.
Key Takeaway: Section 9(1)(b) only bars marks that are exclusively descriptive. A mark that evokes or suggests a quality without directly describing it falls on the suggestive side of the spectrum and is registrable.
The Case: Saranya Parthiban v. Registrar of Trade Marks
The Application
The appellant, Saranya Parthiban, filed Application No.5150499 on 27.09.2021 for registration of the word mark “RAW SKINN” in Class 3. The goods covered included bleaching preparations, non-medicated soaps, essential oils, non-medicated cosmetics, hair lotions, and dentifrices. The application was filed on the basis of use since 17.08.2021.
The Examination Report Objection
By examination report dated 26.10.2021, the Registrar raised objection under Section 9(1)(b) that the mark consists exclusively of words or indications which may serve in trade to designate the intended purpose or other characteristics of the goods.
The Appellant’s Reply
The appellant replied on 11.11.2021, asserting that the mark is arbitrary that it has no connection to the goods in respect of which it is applied. The reply referenced several supporting judgments establishing the arbitrariness of the mark. At the hearing, the appellant further contended that the mark would qualify as arbitrary or inventive or, at a minimum, as suggestive.
The Impugned Refusal Order
Despite the reply and the hearing, the Registrar issued the refusal order on 19.12.2023. The order referred to the classification of marks as inventive, arbitrary, and suggestive, cited a Bombay High Court judgment and then simply recorded the conclusion that “RAW SKINN” is descriptive. Critically, the Registrar did not engage with or record reasons for rejecting the appellant’s contentions.
What the Madras High Court Held
The Hon’ble Justice Senthilkumar Ramamoorthy allowed the appeal and set aside the refusal order. The Court’s reasoning proceeds in two distinct steps:
Step 1: Contextual assessment of distinctiveness
The Court noted that the appellant was selling soaps, body butter, and scrubs under the mark “RAW SKINN.” It then applied the well-established principle that the placement of a mark on the distinctiveness spectrum cannot be done in isolation it must always be assessed in the specific context of the goods to which the mark is applied.
In relation to Class 3 cosmetics and personal care products, the Court found that the mark “RAW SKINN” cannot be concluded, prima facie, to be arbitrary. However, the Court equally rejected the Registrar’s characterisation of the mark as descriptive. The Court’s finding was specific: “it appears that the mark is suggestive rather than descriptive.”
This is the critical distinction. A suggestive mark evokes or alludes to a quality of the goods it requires the consumer to exercise imagination to make the connection. A descriptive mark immediately and directly conveys a characteristic. “RAW SKINN” for a soap or body scrub does not directly describe the product it evokes the concept of treating, nourishing, or caring for the skin in its natural state. That evocation, requiring imagination to connect mark to product, is the hallmark of a suggestive mark.
Step 2: The failure to give reasons
Independently of the substantive distinctiveness analysis, the Court identified a procedural error in the impugned order that independently justified setting it aside. The Court recorded that the Registrar had not discussed the appellant’s contentions at all, and had not recorded reasons for rejecting them.
This matters enormously as a principle of administrative law. An order that simply records a conclusion without engaging with the applicant’s submissions is not a reasoned order. The absence of reasons for rejecting the applicant’s arguments particularly in a case where the applicant had filed a detailed reply with supporting judgments renders the order unsustainable.
The Court’s direction: The impugned order was set aside and the application directed to proceed for advertisement in the Trade Marks Journal. The Court clarified that the order does not bind any opponent who may file a Notice of Opposition after advertisement.
What This Ruling Means for Brand Owners Facing Section 9(1)(b) Objections
Lesson 1: “Suggestive” is registrable. Push back on the descriptive label.
The spectrum from descriptive to suggestive is the most contested zone in trademark examination. Examiners frequently push marks from suggestive into the descriptive category. The RAW SKINN ruling confirms that Indian courts will independently assess which side of the line a mark falls on and will correct the Registrar when the assessment is wrong.
If your examination report raises Section 9(1)(b), the first question to answer is not “is my mark descriptive?” but rather: “does the consumer need to exercise imagination to connect my mark to the characteristic the Registrar says it describes?” If the answer is yes, even partially, the mark is suggestive, not descriptive.
Lesson 2: Context governs. The same word can be descriptive for one product and suggestive for another.
The Court’s emphasis on contextual assessment is a practical tool for applicants. “RAW SKINN” is not the same mark for a cosmetic product as it would be, say, for a medical skin treatment. The relationship between the word and the goods determines its classification and that relationship requires analysis, not assumption. Your reply to an examination report should always include a contextual analysis of how the mark functions in relation to your specific goods.
Lesson 3: The Registrar’s failure to give reasons is itself an appealable error.
An order that does not engage with your submissions is procedurally infirm. If your hearing resulted in a refusal that simply recorded the outcome without addressing your arguments, that failure is an independent ground of appeal, regardless of whether you are confident about the substantive distinctiveness argument.
Lesson 4: Evidence of use strengthens the appeal record.
The Court noted that invoices placed on record by the appellant showed her selling soaps, body butter, and scrubs under the mark. This factual record of use demonstrating how the mark functions in the marketplace is valuable evidence in the appeal context. Acquired distinctiveness through use (Section 32 of the Trade Marks Act) can also be invoked where the period of use is substantial.
Key Takeaway: A Section 9(1)(b) refusal order is not the end of the road. The Madras High Court will independently assess the distinctiveness classification and will set aside orders that fail to engage with the applicant’s submissions. A well-argued Section 91 appeal with a clear record of use and a focused analysis of the suggestive-descriptive distinction has real prospects of success.
Practical Guide: Responding to a Section 9(1)(b) Trademark Examination Report
If your trademark examination report raises a Section 9(1)(b) objection, respond systematically:
- Identify the characteristic the Registrar says the mark describes. The examination report should specify what quality, purpose, or characteristic the mark allegedly designates. Identify it precisely.
- Apply the imagination test. Would an average consumer need to exercise imagination, thought, or perception to connect the mark to that characteristic? If yes, the mark is suggestive, not descriptive.
- Analyse the mark in context of your specific goods. Do not argue abstractly. Explain what the goods actually are and why the mark does not directly describe them.
- Locate comparable marks on the register. Search for marks of a similar character in your class that have been registered. Inconsistent registration practice by the Registrar is a legitimate ground of objection and a supporting argument in your reply.
- File evidence of use. Tax invoices, purchase orders, and marketing materials demonstrating commercial use of the mark establish that consumers associate it with your business, supporting an acquired distinctiveness argument under Section 32.
- Request and attend the hearing. Never let an examination report proceed to refusal without a substantive hearing response. The hearing is your opportunity to develop the oral argument and to ensure your submissions are recorded before the Registrar.
- If refused, file a Section 91 appeal promptly. Appeals under Section 91 of the Trade Marks Act lie to the High Court. The limitation period is prescribed act within it. A refused application is not a permanently lost application.
About This Matter
In C.M.A. (TM) No.4 of 2024, Mr. Suresh Kumar, Advocate with his counsels of Unimarks Legal Solutions appeared for the appellant before the Madras High Court. The appeal was allowed by the Hon’ble Mr. Justice Senthilkumar Ramamoorthy on 27.02.2025, setting aside the refusal order dated 19.12.2023. The application was directed to proceed for advertisement in the Trade Marks Journal.
If you have received a Section 9(1)(b) objection or a refusal order from the Trade Marks Registry, our team at Unimarks Legal Solutions can advise on the merits of a reply or an appeal.
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.
