The Bombay High Court told the Trade Marks Registry to stop dissecting a composite/device mark into bits, and to judge it as a whole. In KVIC “Prakritik Paint” (Hindi device), a Section 9(1)(b) refusal (descriptiveness) was set aside because the Registrar focused on the words “Prakritik Paint” (natural paint) instead of the entire device with stylization and source cues—and ignored real-world use and related approvals. The Court directed that the device be registered, reiterating the classic rule from Ashok Chandra Rakhit: you don’t cut up a label to test distinctiveness; you assess the overall commercial impression.
Why this case matters (for founders, owners, and litigators)
- Composite ≠ sum of parts. If a label/logo (device) includes some descriptive words, the question is whether the whole device is distinctive—not whether one word could be descriptive in isolation. The High Court faulted a Section 9 refusal that ignored this.
- Evidence of use counts. KVIC had open, public use of the device and related registrations—material the Registrar overlooked. Courts expect examiners to actually engage with such evidence.
- Consistency matters. When close variants have been allowed (e.g., English device/connected word marks), a contrary refusal for the Hindi device demands reasons—not a form paragraph.
The case in a page
- Case: Khadi & Village Industries Commission (KVIC) v. Registrar of Trade Marks – “Prakritik Paint” (Hindi device), Class 2 (paint)
- Court/Bench: Bombay High Court (IP Division)
- Posture & Result: Section 9(1)(b) refusal set aside; Registry directed to register the device mark.
- Core holding: The Registry erred by treating “Prakritik Paint” as a descriptive word mark instead of assessing the device as a whole (stylisation + layout + overall impression); it also ignored evidence of use and related approvals. The Court leaned on settled law that device marks are judged in their entirety—you don’t do a word-by-word autopsy.
What the Court actually emphasised (and why it’s useful)
1) Don’t dissect a composite mark. The judgment aligns with Registrar of Trade Marks v. Ashok Chandra Rakhit (SC): a label/device must be viewed in its entirety. Even if a word in the device has descriptive flavour, the composite may still function as a badge of origin.
2) Look at real-world distinctiveness. The Court noted open, public use of the device for KVIC’s cow-dung-based paint; the refusal had ignored that marketplace context, which pointed to source association beyond bare dictionary meaning.
3) Be consistent—or explain the difference. With related marks/variants previously allowed, the Registry owed a reasoned explanation for denying this Hindi device. Absent that, the refusal was vulnerable.
Timeline (compressed)
- Jan 2021–2023: KVIC launches and uses Prakritik Paint branding; files device applications.
- Refusal: Examiner objects under Section 9(1)(b) (descriptive).
- Jan–Feb 2025: Bombay HC sets aside the refusal; notes holistic device assessment, overlooked evidence, and inconsistency; directs registration of the device.
Comparison table – Registry’s error vs Court’s course-correction
| Issue | Registry’s approach (refusal) | High Court’s correction |
|---|---|---|
| Method | Dissected the words “Prakritik Paint” as descriptive | Assessed the device as a whole (stylisation + layout + overall impression) |
| Evidence | Overlooked open/public use showing source association | Required engagement with use evidence and market context |
| Consistency | Ignored related/analogous approvals | Demanded consistency or reasoned differentiation |
| Outcome | Section 9(1)(b) refusal | Refusal set aside; registration directed |
Sources: SCC OnLine case brief; LegalEra; law-firm analyses.
Flowchart — How to argue a descriptive-words / distinctive-whole case
Map your device → Prove distinctiveness-in-the-whole → Show use → Expose inconsistency → Ask for the right remedy
- Map the device: Identify visual hooks (script, logo device, layout, colour blocking).
- Whole > parts: Frame the legal test: device marks are judged in entirety; cite Ashok Chandra Rakhit.
- Use & association: File dated artwork, packaging photos, ad spend, sales, press, and enforcement history – show the public links the device to you.
- Consistency audit: Put on record any related registrations/approvals (even in English/other scripts). Ask the Registry to explain any departure.
- Remedy: If the issue is arguable, ask at least for advertise-before-acceptance (proviso to Section 20(1)) or a reasoned re-evaluation; where warranted (as here), seek registration. (See also Yamaha’s “WR” pathway for using the Section 20(1) proviso in Section 11 contexts.)
Checklist — Drafting & evidence (plaintiff/applicant playbook)
- Device is the hero: Lead with label/device artwork and the overall impression. Avoid arguing word-by-word first.
- Usage dossier: Dated packs, shelf photos, e-com listings, press coverage, ad spends, consumer-facing use demonstrating source link.
- Consistency pack: List existing registrations (word/device; Hindi/English), show visual continuity across variants.
- Legal spine: Cite Ashok Chandra Rakhit (composite assessment). If the Registry won’t engage, rely on duty to give reasons lines of authority to challenge unreasoned refusals.
- Fallback route: If the Registrar hesitates, request advertise-before-acceptance under s.20(1) proviso so the public can test it in opposition (Yamaha logic).
Skeptic corner (sparring-partner check)
- “But the words are descriptive!” True—sometimes. But the law asks whether the entire device (design, script, layout) is source-identifying. The refusal here failed because it never did that analysis.
- “One inconsistent approval proves everything.” Careful. Prior approvals help, but they aren’t conclusive; they do raise a consistency burden the Registry must meet with reasons.
- “This guarantees registration for any fancy label with a descriptive term.” No. You still need use-based distinctiveness, coherent design features, and clean record; the Court intervened because the Registry didn’t apply the correct test or engage the evidence.
Related reading (context you can cite in your own replies)
- Device marks: judge the whole — Registrar of Trade Marks v. Ashok Chandra Rakhit (SC, 1955).
- Reasoned orders & process-fidelity — Yamaha “WR” (Bombay HC, 2025) used Section 20(1) proviso instead of killing a borderline case at examination.
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.
Sources: Bombay HC order directing registration of KVIC’s “Prakritik Paint” device; companion analyses explaining the composite-mark standard and the Registrar’s errors; Ashok Chandra Rakhit on assessing labels as a whole; Yamaha’s Section 20(1) proviso pathway for borderline similarity cases.
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.
