The Plaintiff, Radico Khaitan Ltd- manufacturer of alcoholic beverages, had registered its trade mark “8PM” in Class 32 (mineral water) and Class 33 (wines, liquors, whisky and alcoholic drinks) and sold whiskey under such trade mark. Carlsberg India Pvt Ltd, the Defendant, used the trade mark “PALONE 8” for marketing its beer. In a suit and application for interim injunction instituted by Radico against Carlsberg before the Delhi High Court, it was alleged that the use of numeral “8” by Carlsberg as a primary mark in its brand amounted to mala fide use of Radico’s mark. Radico, therefore, prayed that Carlsberg should be restrained from using the numeral “8” in relation to their products.
While deciding the Interim application for grant of injunction, the Hon’ble High Court was called upon to determine:
1) Whether a single numeral “8” in the facts and circumstances of the present case could be protected while comparing the two marks of the parties – “8 PM” and “PALONE 8”. and
2) Whether the two sets of goods – whisky and beer could be considered as dissimilar goods?
With regard to first point the Hon’ble Court opined that S.2(l)(m) of Trade Marks Act, 1999 defines “mark” which includes numeral. The prima facie registration of numerals depends upon its distinctive character.
Considering the facts, Court arrived at the following conclusions:
a) The number "8" enjoys nexus with the concerned beverages. It was a bona fide description of character of goods that represents the Alcohol by Volume (ABV) in beer.
b) The Plaintiff held trademark registration for “8PM” and not 8 per se. In light of the above, the Court accepted the prima facie non-distinctive character of numeral mark “8”.
2) The Court also examined Section 29(4) which protects the marks of dissimilar goods. The Court held that the numeral “8” could not be treated as reputed mark as it was used extensively for describing the character of goods, therefore, S.29(4) was held to be inapplicable.
The Court also drew attention on S.30 which acts as an exception to S.29. According to this, use of a registered trade mark by any person was allowed if the use is:
(a) in accordance with honest practices in industrial or commercial matters, and
(b) not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark.
It was held that “8” enjoyed nexus with the industry. Therefore, the use of the numeral by any other person including defendant was not “dishonest” and was protected under S. 30 of the Act.
It was also noted that the Defendant would incur irreparable loss if it was directed against using “8” especially when the Plaintiff did not carry a similar business. Further, the Plaintiff failed to make out a prima facie case in its favour. However, the Court allowed the Defendant to use the marks “PALONE” and numeral “8” together in the same line to avoid any confusion. Further, the numeral should be used in a different style.