Case Brief: Carlsberg India Pvt. Ltd. v Radico Khaitan Ltd.

FACTS
The plaintiff, Radico Khaitan Ltd., had argued for 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. The defendant, Carlsberg India Pvt. Ltd., launched a beer product in February 2011 under the trademark ‘PALONE 8’ with the numeral ‘8’ being used in the same font and colour as is used by Radico. Furthermore, Carlsberg’s slogan ‘8 KA DUM’ has been alleged to have resemblance with the Radico’s slogan ‘AATH KE THAATH’ pertaining to the whisky sold by it under the trademark ‘8 PM’.
The Single Judge Bench concluded the use of numeral ‘8’ to be common in such trade. However, so as to ‘avoid any bleak chances of misrepresentation’, it granted time up to 31.12.2011 to the defendant in order to make changes and amendment in the packaging and advertisement material as well as in slogan ‘8 KA DUM’ if used by the defendant at present. And therefore the present appeal lies before the Hon’ble Court.
ISSUE RAISED
Whether a numeral mark can belong to anybody’s exclusive domain in the form of a trademark?
ARGUMENTS PUT FORWARD BY THE DEFENDANT
It was argued that beer and whisky are different products and the price difference of the two products is substantial. Further, the numeral ‘8’ is publici juris and common to the trade in alcohol, as it is used to denote the quality or the character of an alcoholic drink; and being common to the trade, Radico cannot appropriate the numeral ‘8’ to its exclusive use. It was also pleaded that the cardinal numbers by their inherent feature of being a cardinal number are bound to lack distinctiveness in character. Also, the trademark ‘8 PM’ is per se non-descriptive and registration being granted under Part-B of the erstwhile Trade and Merchandise Marks Act 1958 was proof of the weakness, due to non-descriptiveness, of the mark. Radico, moreover, did not have any separate registration for the numeral ‘8’ as its trademark and thus cannot claim any exclusive right over the numeral ‘8’. The slogan ‘8 KA DUM’ was justified by pleading that it was conveying the ‘dum’ i.e. the potency of its product.
HELD
The Delhi High Court articulated the requisite high threshold for acquiring distinctiveness especially in case of a numeral mark. Unless the prominent numerical feature of the mark was proved to be prima facie enjoying high degree of distinctiveness, it could not claim the benefits of statutory protection.
Further, the Court held that the 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 reason for the limited injunction granted by the learned Single Judge was thus not sound.