The Delhi High Court has held that the mark “GLASS SKIN,” when used in relation to Class 03 cosmetic and skin care products, is descriptive within the meaning of Section 9(1)(b) of the Trade Marks Act, 1999 because it directly describes the kind of goods and the intended purpose or end result of those goods. Widespread industry usage, media usage, and the respondent’s own descriptive use of the expression were relevant and sufficient indicators of descriptiveness, and in the absence of evidence showing acquired distinctiveness or secondary meaning, such a descriptive mark could not validly remain on the Register.
The Court further held that although relief under Section 47 was not attracted because the respondent had placed invoices on record showing some sales under the mark, relief under Section 57(2) was warranted because the entry of “GLASS SKIN” in the Register was without sufficient cause and was wrongly remaining on the Register. Accordingly, the Court allowed the rectification petition and directed the Registrar of Trade Marks to cancel the registration of the mark “GLASS SKIN” in favour of respondent no.1 under certificate no. 2825917 dated May 02, 2019 in Class 03, and to remove/rectify that registration from the Register of Trade Marks within four weeks from receipt of the order.
A Single Judge Bench of Justice Tushar Rao Gedela observed that, in the hierarchy of marks, arbitrary or invented marks receive the highest protection, followed by suggestive marks, then descriptive marks, while generic marks receive little or no protection. Referring to McCarthy on Trademarks and Unfair Competition, the Bench noted that a descriptive mark is one that directly and immediately conveys knowledge of the characteristics, intended purpose, function, use, or end effect of goods, and that descriptiveness may be inferred from widespread descriptive use by traders and others in the relevant industry.
Applying these principles, the Bench found that the petitioner had placed on record material showing that from at least 2017 onward, “GLASS SKIN” had been used in articles and the beauty industry to describe transparent, luminous, flawless or glass-like skin, and that major manufacturers used the expression descriptively to indicate the result their products were meant to achieve. The Bench also placed weight on the respondent’s own website, which described “Glass Skin” as a Korean beauty technique to obtain illuminating, flawless and transparent skin like glass, showing that respondent no.1 itself had used the term descriptively rather than as a source identifier.
The Bench rejected the respondent’s submission that “GLASS SKIN” was merely suggestive and that an “imagination test” applied. It held that when the term is used for Class 03 cosmetic and skin care products, it is obvious to a consumer what intended purpose and end result the expression conveys, especially in light of its widespread recognition as a worldwide fashion trend. The Bench further noted that respondent no.1 had produced no material to establish that the mark had acquired secondary significance sufficient to make a descriptive expression registrable.
The Bench also did not accept the argument that the petitioner was precluded from challenging the mark merely because it had itself applied for “RENEE GLASS SKIN SPF 50.” It held that the petitioner, like other stakeholders, appeared to be using “GLASS SKIN” only as part of a larger composite mark and not as a distinctive stand-alone mark with special protection.
Briefly, the petitioner, Renee Cosmetics Private Limited, sought rectification and cancellation under Sections 47 and 57 of the Trade Marks Act, 1999 of respondent no.1’s registration of the word mark “GLASS SKIN” in Class 03 for cosmetics and allied products. The respondent had applied for the mark on May 02, 2019 on a “proposed to be used” basis, and the petitioner, after applying on Jan 28, 2025 for registration of “RENEE GLASS SKIN SPF 50,” was met with an infringement notice dated March 20, 2025 from respondent no.1. The petitioner denied infringement, contending that “GLASS SKIN” is descriptive and non-registrable, and later claimed that Amazon removed its listing on account of respondent no.1’s registration, leading to the filing of the rectification petition.
The petitioner’s case was that “GLASS SKIN” is a generic and descriptive expression widely used in the cosmetics industry to describe the intended purpose or end effect of products, namely skin that appears luminous, clear and glass-like, and therefore cannot be monopolised as a trademark. It relied on industry usage, publications, and the respondent’s own website and promotional material to show that the term had been used descriptively by several market participants and had not acquired distinctiveness or secondary meaning in favour of respondent no.1.
The respondent contended that although the application had been filed on a proposed-to-be-used basis, it had invoices evidencing use since 2019 and had continuously sold products under the mark. The respondent argued that the real issue was whether “GLASS SKIN” was “descriptive” or “suggestive,” and maintained that the term was suggestive because it required imagination or mental processing by consumers rather than directly describing the goods, their formulation, or characteristics.
