India: Dispute Over Numeral "8"

Last Updated: 15 November 2012
Article by Kamakhya Srivastava

A word, letter, numeral or a symbol used in combination and unrelated to the goods on which it is applied, may create a distinctive trademark. Alternatively it may also result in creating a descriptive trademark. It is settled law that a holder of a descriptive mark, eligible to be protected, has no legal claim to an exclusive right in the primary, descriptive meaning of the term. Consequently everyone is free to use the term in its primary, descriptive sense but so long as such use does not lead to consumer confusion as to the source of goods. In an action for infringement, the "fair use" defence is available only to situations where the alleged infringer employs a trademark in its descriptive sense.

Lately in a cross appeal filed by Radico Khaitan Ltd (Radico) and Carlsberg India Pvt Ltd (Carlsberg) the questions which required to be prima facie opined upon were: -

  1. Whether Radico, the holder of a protectable descriptive mark – 8 PM – with no exclusive right in the primary, descriptive meaning of the numeral "8", could seek injunction against Carlsberg where the numeral was being used by Carlsberg not as a part of its trademark "PALONE 8" i.e. as descriptive numeral but as an integral part of the composite trademark?
  2. Whether the style and the colour adopted by Carlsberg was a slavish imitation of Radico's label which would subsume within the question: whether Radico at all had any protectable interest in the style and colour with in which it depicted "8 PM".

Background

Radico filed a suit against Carlsberg praying for permanent injunction restraining Carlsberg from using the numeral "8" as a part of its trademark. The action was for infringement as well as for passing off. Radico pleaded a proprietary interest in the mark "8 PM". It claimed that the numeral "8" is an essential, distinguishing and identifying feature of its mark in relation to the font size and the colour with which the numeral "8" is printed and that Carlsberg selling beer under the trademark "PALONE 8" with the numeral "8" in the same font and colour will lead to consumer confusion. Further, that Radico's slogan "AATH KE THAATH" (the luxury of eight) pertaining to the whiskey sold by it under the trademark "8 PM" has been piggy ridden on by Carlsberg by using the slogan "8 KA DUM" (the potency of eight) in the sense that the concept which emerges in the mind of the buyer who with imperfect recollection would think and associate Carlsberg Beer when he sees the beer bottle with the label prominently displaying the numeral "8" in the same font, size and colour and styling as that of Radico and the slogan "8 KA DUM" and think that he is seeing a product having same source as that of whisky i.e. being mislead that the beer is a product of Radico.

The defence of Carlsberg is that beer and whisky are different products and the consumer of alcohol is an informed consumer and would not be mislead. Secondly, the numeral "8" is publici juris and also a cardinal number hence there is a lack of distinctiveness in character. Further the numeral "8" is common to the trade in alcohol as it is used to denote the quality or character of the alcoholic drink which is why it was entitled to use the numeral "8" to inform the consumer by way of description of its product i.e. that the beer had a strong alcoholic content. The slogan "8 KA DUM" was justified by pleading that it was conveying the "dum" I.e. the potency of its product.

The single judge granted a partial injunction in favour of Radico to avoid any bleak chances of misrepresentation referring to the styling, the colour and the prominence to the numeral "8" in the depiction of the trademark "PALONE 8" of Carlsberg.

The Appeal

Radico and Carlsberg both appealed to expand the injunction already granted and to vacate the injunction respectively. The Division Bench took the view that injunctions are not to be granted in an action for infringement of a registered trademark or an action for passing off, to "avoid any bleak chances of misrepresentation". The Court further went on to opine on the questions –

  1. Whether a single numeral is capable of being a trademark?

Section 17 of the Trade Marks Act 1999 makes it amply clear that a registered proprietor of a composite mark cannot seek exclusivity with respect to individual components of the trademark. Therefore, Radico, the registered proprietor of "8 PM" cannot seek protection against infringement by a third party who merely uses the numeral "8" since no exclusivity can be claimed in a single numeral even though the usage by Radico in variance to its registration, is one that accords primacy to the numeral "8" and relegates "PM" to almost 1/8th the relative space on the label.

  1. Is Carlsberg's use of the numeral "8" descriptive in the instant case?

Carlsberg argued that "8" is a descriptive numeral in the alcohol industry. The use and manner of writing "PALONE 8" by Carlsberg was tested for an alleged descriptive use of the numeral to see whether the numeral "8" appears "in a manner of speaking" on the label or has been given undue prominence so as to appear as a trademark. It was found that Carlsberg, much like Radico, has written the word "Palone" in a significantly smaller font compared to the numeral "8", which is several times larger. Court found that such a use, where the intention is not to make the numeral "8" a mere descriptor but a prominent component of the label, cannot be termed as a descriptive use and is clearly in the nature of trademark use.

  1. Whether the trademark use of the numeral "8" by Carlsberg actionable?

The Court observed that the test applied in such cases is with respect to the "essential features" of the composite mark to evaluate consumer confusion (or likelihood thereof) caused by the impugned use of the numeral "8" by Carlsberg. On the evidence before it, the Court opined that the answer prime facie is negative.

Court's Observation

The Division Bench taking the observation forward found it worthwhile to mention that the decisive question is a simple trade dress analysis of the overall "look and feel" of the label, independent of the contents of the label. The Court viewed that the label of Radico is a protectable trade dress however; Carlsberg has not copied the unique elements of Radico label. The comparison of the two labels cannot prima facie form an impression that actionable similarity emerges. The Court concluded that the mere manner of writing the numeral "8" or the size of it cannot be a sufficient ground for Radico to obtain an injunction.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions