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: -
- 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?
- 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".
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.
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 –
- 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.
- 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.
- 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.
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.
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