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Division Bench Rules on Numeral 8 Trademark

Issued: January 01 2012

Radico Khaitan, a company of notable size in the Indian liquor industry, filed a suit for inter alia infringement and passing off against Carlsberg India, a subsidiary of Danish brewer Carlsberg, with the High Court of Delhi seeking to restrain the latter from using the numeral 8 as part of its trademark. Alongside the main suit, Radico also filed an interlocutory application for interim injunction.

In 1997, Radico adopted the mark 8 PM in relation to whisky. In 1999, the firm began using the 8 PM whisky brand in India. Registrations were also obtained for the 8 PM trademark as well as several 8 PM formative marks in many Classes including Classes 25, 32, 33 and 41. In early 2011, Radico claimed to be aggrieved by Carlsberg’s use of the PALONE 8 label in respect of beer with the numeral 8 being used prominently therein.

Remfry & Sagar, representing Carlsberg, argued that the numeral 8 was currently being used extensively
by various entities in the liquor industry, both nationally and internationally, with several instances of use predating Radico’s adoption of the 8 PM mark. Also, registration of 8 PM had been granted to Radico under Part B of the Register under the Trade Merchandise and Marks Act, 1958 (replaced in 2003 by the current statute, the Trade Marks Act, 1999), a category reserved for marks considered prima facie nondistinctive or descriptive.

Moreover, the firm says, 8 PM was not registered in respect of beer and in fact, Radico held no registration for the numeral 8 per se. Carlsberg’s use of the numeral 8 was descriptive and denoted the strength of the beer. Upon considering the arguments, by an order dated September 16, 2011, the court negated Radico’s claim of exclusivity over the numeral 8 and refused to grant an interim injunction against Carlsberg. However, to ‘avoid any bleak chances of misrepresentation,’ restrictions were imposed on the manner of use of the numeral 8 by Carlsberg. It was directed inter alia to use PALONE and the numeral 8 together, in the same line, size and font; and use any colour other than gold.

Both Radico and Carlsberg challenged these findings before the Division Bench of the High Court of Delhi, Remfry & Sagar said in a statement. The Division Bench allowed the appeal filed by Carlsberg and dismissed the appeal filed by Radico. Further, the Division Bench dismissed the Interlocutory Application for interim injunction which was filed by Radico before the single judge.

While vacating the restrictions imposed by single judge, it was observed that the reason for imposing restrictions and an limited injunction by the judge, i.e. “to avoid any bleak chances of misrepresentation” is no ground to grant a limited injunction. The Division Bench affirmed the finding of the single judge inasmuch as it held that no exclusivity can be claimed in a single numeral. On this issue, the
division bench held that “trademark jurisprudence in India has fought shy of according trademark status to
single numerals or letters. While a combination of letters and numbers has often been found worthy of trademark protection, there is ample material to suggest that the consistent stand taken both by the Trade Mark Registry and the courts is to frown upon attempts to secure trademark protection for single digits, single colours and single letters in India.”

While observing that Carlsberg’s use of the numeral 8 is more arbitrary than descriptive and does not indicate the quality or property of the product, the division bench held that on comparison of the labels of the rival parties prima facie an actionable similarity does not emerge. It was also held that there is no uniqueness in Radico’s label to entitle it to grant of an interim injunction. The mere manner of writing the numeral 8 or its size cannot be a sufficient ground for Radico to obtain an injunction. Further, use of a black and gold colour combination – one fairly common to labels used in respect of alcoholic products – cannot be unique to Radico.

Radico Khaitan was represented by K&S Partners.


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