Introduction
The Delhi High Court’s decision in Oswaal Books and Learnings Pvt. Ltd. v. Registrar of Trade Marks , 2025 SCC OnLine Del , offers a significant clarification on the registrability of common expressions under Indian trademark law. The case revolved around the refusal of a trademark application for the phrase “ONE FOR ALL” in Class 16, which pertains to printed publications. The applicant, Oswaal Books, sought protection for the phrase, claiming it had acquired distinctiveness through extensive use. The Registrar of Trade Marks rejected the application, citing lack of inherent distinctiveness and failure to establish secondary meaning. The High Court upheld this decision, reinforcing the principle that descriptive or commonly used phrases cannot be monopolised unless they have become uniquely associated with a particular source.
Fact of the Case
Oswaal Books began using the phrase “ONE FOR ALL” on 20 August 2020 in connection with its educational publications. On 20 October 2020, the company filed a trademark application for the phrase under Class 16. The Trade Marks Registry issued an Examination Report on 4 November 2020, objecting to the mark under Section 9 of the Trade Marks Act, 1999. Subsequently, on 14 December 2023, the Senior Examiner of Trade Marks rejected the application under Section 9(1)(a), stating that the mark lacked distinctiveness and was composed of common words. Oswaal Books appealed this decision before the Delhi High Court on 28 May 2025 under Section 91 of the Trade Marks Act and Rule 156 of the Trade Marks Rules, seeking to overturn the refusal and secure registration of the mark.
Argument in Favour
The appellant contended that the phrase “ONE FOR ALL” had been used extensively and had gained recognition among consumers. Oswaal Books submitted that it had invested over ₹96 lakhs in advertising and promotional activities, and that its publications were widely available on platforms such as Amazon and Flipkart. The company argued that although the phrase consisted of common words, it was arbitrary in the context of books and did not directly describe the nature of the goods. Therefore, it should be considered distinctive and eligible for registration.
Further, the appellant alleged that the Registrar had failed to consider the evidence submitted, including promotional materials, invoices, and usage data. This, they argued, amounted to a violation of the principles of natural justice. Oswaal Books relied on judicial precedents to support its claim. In Evergreen Sweet House v. Ever Green & Others, 2008 SCC OnLine Del 1665, the Delhi High Court held that common words used in an arbitrary manner for unrelated goods could be protected as trademarks. Similarly, in Telecare Network India Pvt. Ltd. v. Asus Technology Pvt. Ltd., 2019 SCC OnLine Del 8739, the Court recognised the registrability of marks composed of common words when used in a distinctive and non-descriptive manner. Oswaal Books argued that its use of “ONE FOR ALL” was analogous and warranted protection.
Argument Against
The Registrar of Trade Marks defended the refusal by asserting that the phrase “ONE FOR ALL” lacked the capacity to distinguish the applicant’s goods from those of others. It was argued that the phrase was commonly used and did not possess inherent distinctiveness. The Registrar further contended that the applicant had failed to demonstrate that the phrase had acquired a secondary meaning—namely, that consumers had come to associate the phrase specifically with Oswaal Books.
The evidence submitted by the appellant was deemed insufficient. Most of the promotional materials and invoices referred to the brand “OSWAAL BOOKS” and not “ONE FOR ALL” as a standalone mark. The phrase was frequently used in conjunction with the brand name, rather than independently, which weakened the claim of distinctiveness. Moreover, the Registrar noted that “ONE FOR ALL” is a widely known expression, famously associated with the motto from The Three Musketeers (“Tous pour un, un pour tous”), and therefore unsuitable for exclusive trademark protection.
Court’s Decision
The Delhi High Court dismissed the appeal and upheld the Registrar’s decision to refuse registration. The Court’s reasoning was grounded in statutory interpretation and established jurisprudence. Under Section 9(1)(a) of the Trade Marks Act, 1999, a trademark must be capable of distinguishing the goods or services of one person from those of others. Marks that are generic, descriptive, or commonly used cannot be registered unless they have acquired distinctiveness through use. The proviso to Section 9(1) allows registration of such marks if they have become well-known or have acquired a distinctive character, but the burden of proof lies with the applicant.
In the present case, the Court found that “ONE FOR ALL” was a descriptive slogan that conveyed the idea that the books were suitable for all students or examinations. This directly described the purpose of the goods, rendering the phrase non-distinctive. The Court observed that the evidence submitted by Oswaal Books focused primarily on the brand name and did not establish that “ONE FOR ALL” had been used independently or prominently enough to acquire secondary meaning. The Court reiterated that common English phrases cannot be monopolised unless they have become uniquely associated with a particular source.
To support its decision, the Court cited several precedents. In Ilua v. Asian Hobby Crafts LLP, 2024 SCC OnLine Del 8299, the Court held that generic or descriptive terms cannot be monopolised. This case referenced earlier decisions such as Panacea Biotec Ltd. v. Recon Ltd., 1996 SCC OnLine Del 508; Geep Flashlight Industries Ltd. v. Registrar of Trade Marks, 1971 SCC OnLine Del 340; and Hindusthan Development Corp. Ltd. v. Deputy Registrar of Trade Marks, 1954 SCC OnLine Cal 228. These cases collectively affirmed the principle that descriptive marks must acquire distinctiveness to be eligible for registration.
The Court also referred to Institute of Directors v. Worlddevcorp Technology, 2023 SCC OnLine Del 7841, which reaffirmed that ordinary English words lack inherent distinctiveness unless proven otherwise. Additionally, the Court cited McCarthy on Trademarks and Unfair Competition, Vol. 1, 5th Ed., to explain that slogans must function as source identifiers. Informational or promotional phrases rarely qualify unless they acquire secondary meaning.
Importantly, the Court distinguished the precedents relied upon by the appellant. In Evergreen Sweet House, the mark “EVERGREEN” had been used for sweets since 1965 and had acquired distinctiveness over time. In Telecare Network, the mark was not descriptive of the product’s nature and was used in a distinctive manner. These cases were not applicable to the present matter, as “ONE FOR ALL” was directly descriptive of the books’ purpose and lacked long-standing independent use.
Conclusion
The decision in Oswaal Books and Learnings Pvt. Ltd. v. Registrar of Trade Marks reaffirms the principle that trademark protection is reserved for marks that serve as clear identifiers of origin. Expressions that are descriptive or commonly used in everyday language cannot be monopolised unless they have acquired distinctiveness through consistent and independent use. In this case, the phrase “ONE FOR ALL” was found to directly describe the intended purpose of the goods and lacked the necessary distinctiveness to qualify for registration. The applicant’s evidence did not demonstrate that the phrase had become uniquely associated with its products in the minds of consumers. The Court’s decision also clarifies that the burden of proof lies with the applicant to show that such a phrase functions as a source identifier. For businesses, especially in publishing and education, this ruling serves as a caution against relying on generic expressions for brand identity without sufficient evidence of consumer association.
