In an appeal by Baskin Robbins licensee Graviss Foods, the Bombay High Court has held that carving out a generic phrase from a wider branded mark cannot attract registration under Section 9 of the Trade Marks Act. The Court said that a trademark consisting of a simple combination of generic, descriptive or laudatory words such as ‘ICE CREAM ROCKS’ is devoid of distinctive character and falls foul of both Section 9(1)(a) and Section 9(1)(b) of the Trade Marks Act, 1999, even where the applicant actually uses the mark in the market with a brand differentiator.
The Court clarified that an applicant cannot, by carving out the generic and descriptive integers from a wider branded mark actually used in commerce as ‘Baskin Robbins Ice Cream Rocks’, secure a statutory monopoly over those integers alone, since the proviso to Section 9 cannot be invoked on the strength of use of the wider mark. The Court also clarified that acquired distinctiveness under the proviso to Section 9 requires long, continuous and extensive use; a period of seven months between the attested commencement of use and the date of application is insufficient to clothe generic words with secondary meaning, particularly where the mark is not shown to be a household name.
The High Court went on to explain that the registration of other marks containing the same generic expression neither creates a precedent nor confers a right upon a later applicant to demand similar treatment, especially where those registrations carry a distinguishing brand element that the subject mark lacks. Further, where a mark is hit by the absolute bar under Section 9, the relative grounds under Section 11, including the Registrar’s invocation of likelihood of confusion with prior cited marks, become academic and need not be further analysed, even if the Section 11 reasoning itself is inadequately articulated.
A Single Judge Bench of Justice Somasekhar Sundaresan noted that the Impugned Orders were indeed not articulately reasoned and came close to being vulnerable on that count, since they did not identify what the mark was said to describe or which characteristic, quality or intended purpose of the goods it referred to. However, exercising its co-extensive appellate jurisdiction under Section 91 of the Act, the Court examined the substance of the Registrar’s reasoning on the merits.
The Court observed that the actual use of the mark in the market was ‘BR Ice Cream Rocks’ with the ‘Baskin Robbins’ prefix, but what was sought to be registered was only the phrase ‘ICE CREAM ROCKS’, a combination of two generic words with no brand differentiator. The Court noted that ‘ICE CREAM’ is the name of the goods themselves and cannot be monopolised, while ‘ROCKS’, whether read as a noun, a verb, or colloquially, does not, when combined with ‘ICE CREAM’, produce a mark capable of distinguishing the Petitioner’s goods from those of others.
The Court further observed that the Petitioner had placed reliance on about 130 registrations containing the expression ‘ICE CREAM’, but almost all of them carried a distinguishing brand element such as ‘Amul’, ‘Arun’, ‘METRO THE DAIRY ICECREAM’ or ‘HOKEY POKEY ICE CREAM PARLOUR’, precisely the element that the Subject Mark, as applied for, lacked. On the question of acquired distinctiveness, the Court noted that the applications were filed within seven months of the attested commencement of use, on the very same day as the Affidavit of User, and that such short use of a wider mark could not confer distinctiveness on a part of that wider mark that was itself generic and descriptive.
The Court also observed that the Registrar’s invocation of Section 11(1) was inadequately reasoned, with no benchmarking of the goods, trade channels or customers of the Subject Mark against the Existing Marks, but that this infirmity stood rendered academic by the conclusion under Section 9.
Briefly, Graviss Foods Private Limited, the licensee of the ‘Baskin Robbins’ ice-cream brand operating India’s largest ice-cream chain with over 800 parlours across 230 cities, filed two applications on January 17, 2024, seeking registration of the trademark ‘ICE CREAM ROCKS’, one in Class 29 for goods such as milk products, dairy-based desserts, ice cream, and edible oils, and the other in Class 35 for marketing, sales promotion, wholesaling, retailing and distribution services. The Petitioner claimed use of the mark since June 10, 2023, in relation to a bite-sized coated ice-cream treat with a flavoured centre in a choco-dip with brownie crumbles, hazelnut pieces or rice crispies.
The Registrar of Trade Marks rejected both applications by separate orders primarily on the ground that the mark was descriptive, laudatory and devoid of distinctive character under Sections 9(1)(a) and 9(1)(b) of the Trade Marks Act, 1999, and additionally, for the Class 29 application, on the ground of likelihood of confusion under Section 11(1) with four prior registrations of the mark ‘ICE CREAM WORKS’ standing in the name of Prince Creamery Private Limited.
