Court affirms refusal under Sections 9(1)(a), 9(1)(b) of Trade Marks Act, 1999; finds mark generic, descriptive, and unable to distinguish petitioner's goods from others
In a significant judgment dated September 16, 2026, the Bombay High Court dismissed the appeals filed by Graviss Foods Private Limited challenging the Registrar of Trade Marks' orders rejecting their trademark applications for the mark "ICE CREAM ROCKS." The Court upheld the Registrar's decision to refuse registration under Sections 9(1)(a) and 9(1)(b) of the Trade Marks Act, 1999, on the grounds that the mark was devoid of any distinctive character and consisted exclusively of descriptive and laudatory terms, thereby incapable of distinguishing the petitioner's goods and services from those of others in the market.
Background:
Graviss Foods Pvt. Ltd., known as a licensee of the Baskin Robbins brand with a vast retail presence, applied for registration of "ICE CREAM ROCKS" as a trademark in Class 29 for various dairy and related products, and in Class 35 for services related to marketing and distribution of those goods. The mark is used in the market as "BR Ice Cream Rocks," with the "BR" or "Baskin Robbins" prefix. However, the petitioner sought exclusive registration of the phrase "ICE CREAM ROCKS" alone.
The Registrar of Trade Marks rejected both applications by separate orders dated December 23, 2025. The key objections raised were:
- - Under Section 9(1)(a), the mark lacked inherent distinctiveness and consisted of generic or laudatory terms.
- - Under Section 9(1)(b), the mark exclusively designated the kind, quality, and characteristics of the goods.
- - Under Section 11(1), the mark was similar to earlier registered marks "ICE CREAM WORKS," creating a likelihood of confusion.
Key Issues and Court's Analysis:
1. Distinctiveness under Section 9(1)(a): The Court emphasized that a trademark must be capable of distinguishing the goods or services of one person from another. The phrase "ICE CREAM ROCKS" was found to be a simple combination of common words describing the product category ("ICE CREAM") and a laudatory or descriptive term ("ROCKS"), which could refer to the shape or quality of the product. The Court observed that the petitioner's actual market use includes the "BR" prefix that creates distinctiveness, but the application sought to monopolize the generic part alone, which is impermissible.
2. Descriptiveness under Section 9(1)(b): The Court held that the mark consisted exclusively of indications designating the kind and quality of the goods, such as "ice cream" and "rocks" referring to either the product's shape or excellence. Such terms are reserved for use by all traders and cannot be monopolized.
3. Claim of Acquired Distinctiveness (Proviso to Section 9): The petitioner claimed acquired distinctiveness based on use since June 10, 2023. The Court found that the short duration of about seven months was insufficient to establish that the public exclusively associates the mark with the petitioner's goods. The actual use was of "BR Ice Cream Rocks," not the phrase alone.
4. Section 11 Objection and Similarity with "ICE CREAM WORKS": While the Registrar cited similarity with prior marks, the Court found that the impugned order lacked detailed reasoning on this point and did not analyze the goods, trade channels, or likelihood of confusion sufficiently. However, since the mark failed under Section 9, the Court considered the Section 11 issue moot.
5. Quality of Registrar's Orders: The Court noted that the Registrar's orders were terse and lacked detailed reasons, nearly vulnerable for this reason. However, given the nature of the mark and the co-extensive appellate jurisdiction, the Court conducted a detailed independent review and confirmed the correctness of the final outcome.
6. Precedents and Policy: The Court referred to established principles from Supreme Court and High Court decisions emphasizing that generic, descriptive, or laudatory terms commonly used in trade cannot be monopolized unless proven to have acquired distinctiveness. The Court underscored the legislative intent to keep such words free for all traders' bona fide use.
Conclusion:
The Bombay High Court dismissed the appeals, upholding the Registrar's rejection of the trademark applications. It held that registration of "ICE CREAM ROCKS" would grant an impermissible monopoly over generic and descriptive words, contrary to Sections 9(1)(a) and 9(1)(b) of the Trade Marks Act, 1999. The Court also advised the Registrar's office to improve the quality and articulation of orders to facilitate better appellate review.
This ruling reaffirms the strict standards applied to trademark registration for marks that risk monopolizing descriptive or generic terms, ensuring the protection of fair competition and public interest in the marketplace.
Bottom Line:
Trade Marks Act - Registration of trade mark - Mark "ICE CREAM ROCKS" rejected for lack of distinctiveness, being descriptive and laudatory, and unable to distinguish the applicant's goods from others.
Statutory provision(s):
Trade Marks Act, 1999 Sections 9(1)(a), 9(1)(b), 9 proviso, 11(1)
Graviss Foods Private Limited v. Registrar of Trade Marks, (Bombay) : Law Finder Doc Id # 2979718
