A trademark refusal that just cites the section without explaining why isn’t a decision — it’s a recital. The Bombay High Court made that clear, quashing the refusal of “SISUPER” because the examiner gave no reasons, as Section 18(5) requires.
Background
On 6 October 2021, the Bombay High Court set aside the Senior Examiner’s refusal of the mark “SISUPER.” In Metso Outotec Corporation v. Registrar of Trade Marks, the appellant had registered SISUPER in the EU, Australia and Singapore, and designated India through an international (Madrid Protocol) application in October 2019.
The Trade Marks Registry provisionally refused the mark on absolute grounds; the applicant replied; and on 22 May 2021 the Senior Examiner refused registration under Sections 9(1)(a) and (b) — saying the mark was devoid of distinctive character and descriptive of the goods’ quality. Metso Outotec appealed under Section 91.
The judgment
The applicant argued it claimed no exclusivity over “SUPER,” and that a mark must be seen as a whole — dissecting it is impermissible, so neither Section 9(1)(a) nor (b) applied.
But the Court’s key concern was the glaring lack of reasoning. The Senior Examiner’s order merely cited Sections 9(1)(a) and (b) without analysis — falling foul of Section 18(5), which requires the Registrar to record the reasons for refusal and the materials relied on. The Court therefore directed that the applications be heard afresh by the Registrar.
Notably, the Court also disallowed the Registrar from “defending” the decision, as he wasn’t a party to the lis — the order must speak for itself.
Why it matters
Practitioners will welcome the stand. There has been a disappointing trend — especially in Madrid-Protocol IR matters designating India — of orders passed without application of mind, reciting provisions but no legal reasoning, while requests for speaking orders are delayed or ignored. This ruling is likely to invite more appeals against such orders.
The wider concern: while the Registry has improved the speed of examination, the quality is often lacking. The pattern suggests some Senior Examiners have made up their minds before counsel even submit, and settled law is sometimes ignored where conflicting marks look identical. At a time when India is promoting the speed and efficiency of its IP regime, the Registry would do well to sensitise officers on the applicable law and build accountability for orders passed without cogent reasoning — so rights holders aren’t forced to the High Court to get basic, reasoned orders.
The takeaways
- A refusal must be reasoned. Section 18(5) requires recorded reasons and materials — a bare recital of Section 9 won’t do.
- Marks are read as a whole — you can’t dissect out a common element like “SUPER” to find descriptiveness.
- The order must speak for itself — the Registrar can’t supplement it later in defence.
- Especially relevant to IR/Madrid filings — where unreasoned refusals have been common; appeal them.
Frequently asked questions
Can a trademark refusal be challenged for lack of reasoning? Yes — Section 18(5) requires the Registrar to record reasons and materials; a refusal that merely cites Section 9 without analysis can be set aside, as in Metso Outotec.
What is the “mark as a whole” principle? A mark must be assessed as a whole, not dissected into parts — so a common element (like “SUPER”) can’t be isolated to brand the whole mark descriptive.
Why is this ruling important for Madrid-Protocol filings? Because unreasoned refusals have been common in IR matters designating India; the ruling supports appealing such orders and demands reasoned decisions.
Can the Registrar defend a refusal order in the appeal? No — the Court held the Registrar wasn’t a party to the dispute, so the order must speak for itself.
Useful official resources
- The Trade Marks Act, 1999
- Trade Marks Registry — IP India