Can Commonly Used Slogans Like “One For All” Be Trademarked? Delhi High Court Answers

The Delhi High Court has held that slogans, particularly those which are descriptive or commonly used phrases, face a significantly high threshold for registration of trademark— unless they have acquired a secondary meaning.

Justice Mini Pushkarna held thus while denying relief to Oswaal Books, which publishes books for CBSE, ISC, ICSE Karnataka Board, JEE – Mains & Advanced, NEET, CAT and CLAT, in its appeal against rejection of Trade Mark Application for “ONE FOR ALL” mark.

The bench observed that merely placing a slogan prominently on goods or advertisements, does not suffice to establish the same as a source identifier, unless consumers have come to associate that phrase uniquely with such goods or services.

“The popularity and common use of the expression/mark “ONE FOR ALL”, subject matter of the present appeal. The above-said novel is a classic literature, which is read widely and has also been adapted in films, television, web series, stage, animation, etc…Expressions such as “ONE FOR ALL”, as in the present case, and “ALL IN ONE”, when used in context of books clearly indicate the descriptive use of the term for universal usage by all. Allowing a single entity like the appellant, to register and own such common expressions of the language, would restrict the use of the language, which cannot be allowed,” the Court held while dismissing the appeal.

The appellant contended that it has continuously, openly, and extensively used its trademark with tagline “ONE FOR ALL” (Applied Mark) and in a short span, has gained significant popularity among consumers.

It contended that the applied mark is a unique combination of common words, is inherently distinctive and is not a commonplace phrase.

The Registrar of Trademarks on the other hand argued that the applied mark is devoid of any distinctive character and is a combination of very common words, which cannot be monopolised by any individual.

At the outset, the High Court referred to Section 9 of the Trade Marks Act which connotes that if any mark is devoid of any distinctive character and which indicates to serve the kind, quality or the intended purpose, then, the same cannot be registered. It is only if such marks have acquired a distinctive character as a result of the use made of it or is a well-known trademark, that such marks shall not be refused registration.

In the case at hand, the Court noted that the Appellant could not establish that the Applied Mark had attained any distinctive character in order to be associated exclusively with its books.

“In all the documents adduced by the appellant, it is nowhere shown that the mark “ONE FOR ALL” is recognised and known in isolation. Rather, the said mark is always accompanied with the prefix or suffix, in relation to OSWAAL BOOKS. This fact further fortifies the position that the appellant has failed to establish a secondary meaning as per the proviso to Section 9(1) of the Trade Marks Act,” it observed.

The Court emphasized that mere extensive use does not automatically confer distinctiveness unless the mark has acquired a secondary meaning in the minds of consumers.

As such, it dismissed the publisher’s appeal.

Appearance: Mr. Abhishek Malhotra, Sr. Adv. with Ms. Sonal Chhablani, Adv. for Appellant; Ms. Rukhmini Bobde, CGSC with Mr. Amlaan Kumar and Mr. Uwayak Aren, Advs. for Respondent

Case title: Oswaal Books And Learnings Private Limited v. The Registrar Of Trade Marks

Case no.: C.A.(COMM.IPD-TM) 19/2024

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