Delhi High Court: An appeal was filed under Section 91 of the Trade Marks Act, 1999 and Rule 156 of the Trade Marks Rules, 2017 seeking to set aside the order dated 14-12-2023 passed by the Senior Examiner of Trade Marks, whereby, the appellant’s Trade Mark Application in Class 16, for the mark “ONE FOR ALL”, in respect of goods, i.e., books, that it publishes and sells, was rejected. Mini Pushkarna, J., held that in the absence of inherent distinctiveness, and considering the appellant’s failure to establish secondary meaning, the impugned order of refusal is well-founded in law, and merits no interference.
The appellant, Oswaal Books and Learnings Private Limited, has been engaged in the business of publishing help books for all leading boards such as Central Board of Secondary Education (“CBSE”), Indian School Certificate (“ISC”), Indian Certificate of Secondary Education (“ICSE”), and the Karnataka Board, as well as national competitive exams such as the Joint Entrance Examination (JEE — Mains & Advanced), National Eligibility cum Entrance Test (“NEET”), Railway Recruitment Boards Non-Technical Popular Categories exam (“RRB-NTPC”), Common Admission Test (“CAT”), and Common Law Admission Test (“CLAT”). The appellant owns registrations for trademarks, including, and OSWAAL BOOKS.
The appellant had filed an application to register the mark “ONE FOR ALL” in Class 16 for printed books and educational materials. The Trade Marks Registry objected to the registration primarily on the ground that the mark was a common English phrase devoid of distinctive character, and merely descriptive of the goods. The appellant filed a detailed reply to the Examination Report, submitting that the mark had been in use since 2020, had acquired distinctiveness and goodwill, and was exclusively associated with its educational books catering to various boards and competitive exams. It emphasized that “ONE FOR ALL” was a unique source identifier linked to Oswaal Books and had become synonymous with its quality and academic reach.
The Court, however, after a thorough examination of the pleadings, evidence, and statutory framework, declined to accept the appellant’s contentions and noted that the documents submitted by the appellant failed to establish that the mark “ONE FOR ALL” had acquired any independent recognition in the trade or amongst consumers. Exhibit A was merely the reply to the Examination Report. Exhibit B was a screenshot from the appellant’s website, but it did not reference the mark “ONE FOR ALL.” Exhibit C contained only a single printing invoice, and only one out of five books mentioned the mark. Exhibit D referred to YouTube videos and third-party reviews, but the earliest video post-dated the claimed user date of 2020, thereby undermining the claim of longstanding usage.
The Court further found that the mark was never used in isolation. Exhibits E showed that the term was always conjoined with “Oswaal Books” or other phrases, rather than standing alone as a source identifier. This, the Court noted, was fatal to the claim of acquired distinctiveness under the proviso to Section 9(1). It reiterated that for any mark to be registrable under the proviso, it must be capable of distinguishing the goods of one person from those of another, and merely extensive use is insufficient unless it leads to a secondary meaning in consumer perception.
The Court was also influenced by the fact that the appellant’s own marketing described the series as one catering to all students across all boards and competitive examinations, which reinforced the descriptive nature of the phrase “ONE FOR ALL.” The Court held that the term directly conveyed the utility of the goods and was not suggestive in context. The Court emphasized that slogans and common expressions face a significantly higher threshold to qualify for registration. The mark “ONE FOR ALL” lacked the necessary attributes and could not be monopolized under trademark law. The Court highlighted that expressions like “ONE FOR ALL” or “ALL IN ONE,” when used in connection with books, suggest universal applicability and are thus descriptive by nature.
Further, the Court was not persuaded by the precedents cited by the appellant, noting that those decisions dealt with inherently distinctive or suggestive marks that did not describe features of the products or services. Here, in contrast, the mark “ONE FOR ALL” was plainly descriptive, suggesting a one-stop solution across diverse academic needs and boards.
The Court remarked that “the phrase “ONE FOR ALL” is a common, laudatory slogan, clearly suggestive of the appellant’s intention to project its books as a universal solution for various academic needs. The appellant’s own submission that its’ publications cater to multiple school boards and national level competitive examinations, when juxtaposed with the applied mark “ONE FOR ALL”, confirms that the mark functions descriptively conveying that the appellant’s books are suitable for everyone, across all exams and boards. Such use of the phrase directly describes the intended utility of the goods, and hence, is not arbitrary in the context of the appellant’s business.”
Ultimately, the Court concluded that the appellant had not discharged the burden of proving acquired distinctiveness. The sales data, promotional expenditure, and general assertions of market success, without direct evidence linking such recognition exclusively to the mark “ONE FOR ALL,” were held to be inadequate. The Court stated that most of the evidence related to “Oswaal Books” as a brand, and not to the applied mark specifically. Additionally, the isolated and non-prominent use of the mark, sometimes only as part of slogans, further weakened the claim for registration.
Accordingly, finding no legal infirmity in the order of refusal passed by the Trade Marks Registry, the Court dismissed the appeal in its entirety, holding that the mark “ONE FOR ALL” was not entitled to registration either on the basis of inherent distinctiveness or on account of acquired distinctiveness or secondary meaning.
[Oswal Books and Learnings Pvt Ltd v. Registrar of Trademark, C.A.(COMM.IPD-TM) 19/2024, decided on 28-05-2025]
Advocates who appeared in this case:
Mr. Abhishek Malhotra, Sr. Adv. with Ms. Sonal Chhablani, Advocates for appellant
Ms. Rukhmini Bobde, CGSC with Mr. Amlaan Kumar and Mr. Uwayak Aren, Advocates for respondent
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