Carlsberg successful on appeal in ‘8’ case

India
In Carlsberg India Private Limited v Radico Khaitan Limited (FAO(OS) 549/2011, December 20 2011), the Delhi High Court has allowed Carlsberg India Private Limited's appeal and vacated the partial injunction granted by the single judge against it. The single judge had rejected Radico Khaitan Limited’s claim of exclusivity over the numeral 8, but had granted an injunction restraining Carlsberg from using the numeral 8 in a style and colour which were alleged to be similar to the manner in which Radico used that numeral.

Radico is the registered proprietor of the word mark 8 PM for mineral water in Class 32 and whisky in Class 33:

Carlsberg launched a new beer in February 2011 under the trademark PALONE 8:

Carlsberg also filed an application for the registration of PALONE 8, which is pending. Carlsberg used the slogan '8 KA DUM', which was alleged to be along the same lines as Radico’s slogan 'AATH KA THAATH'.

Radico sought a permanent injunction restraining Carlsberg from using the numeral 8 as part of its trademark, and also claimed damages.

The single judge granted a partial interim injunction against Carlsberg and directed it to use the mark PALONE and the numeral 8 on the same line in a different style and colour to avoid any "chances of misrepresentation". Further, Carlsberg was given time to alter its packaging, advertising material and slogans. The single judge noted that there was a nexus between the numeral 8 and the alcohol industry and, therefore, Radico could not claim exclusivity over it (for further details please see "Use of numerals on alcohol bottles likely to constitute honest business practice"). Carlsberg appealed.

Radico submitted that, because it owned the registered trademark 8 PM, it had a proprietary interest in the numeral 8, as it constituted a distinguishing and identifying feature of its mark in relation to the font size and colour. Further, Radico stated that, by using the slogan '8 KA DUM', Carlsberg intended to deceive consumers into thinking that Carlsberg's beer originated from Radico.

Carlsberg first contended that it had applied for registration of the trademark PALONE 8 and was using it for a totally different product. Additionally, there was a significant price difference between beer and whisky products and, because consumers of alcohol are informed consumers, Carlsberg's use of the mark would not deceive or mislead them in any way. Carlsberg also contended that the numeral 8 is publici juris and common in the trade, as it is used to denote the quality and character of an alcoholic drink. Further, Radico did not own a separate registration for the numeral 8. Carlsberg submitted that, in keeping with industry trends, Carlsberg used the numeral 8 to inform consumers that its beer had a high alcohol content. Further, the slogan '8 KA DUM' also meant to convey the potency of its beer.

At issue before the Division Bench of the Delhi High Court was:

  • whether single numerals are inherently descriptive and, if not, whether they are capable of being used as a trademark;
  • whether Radico had any protectable interests in the style and colour in which it depicted its trademark 8PM; and
  • whether Carlsberg had copied the trade dress or the ‘look and feel’ of Radico's label.
The Division Bench set aside the injunction granted by the single judge and upheld the appeal, holding as follows:

  • The basis on which the single judge granted the injunction (ie, to avoid any chances of misrepresentation) was not a valid ground.
  • Prima facie, the two marks were not similar. The mere fact that Carlsberg used a similar style and colour to write the numeral 8 was insufficient to demonstrate infringement.
  • Carlsberg's trade dress was not similar to Radico's.
In particular, the court made the following observations to reach this conclusion:

  • While Radico’s unique trade dress was definitely capable of protection under Section 2(zb) of the Trademarks Act 1999 (which affords protection to, among other things, ‘packaging’ and ‘colour combinations’), a simple comparison led to the conclusion that the two products were not similar. The way in which Carlsberg wrote the numeral 8 could not be sufficient ground to obtain an injunction.
  • The use of a black and gold colour combination is common for a lot of alcoholic products and is not unique to Radico. The court relied on Colgate Palmolive v Patel (2005 (31) PTC 583 (Del)), in which it was held that the red and white colour scheme used by Colgate on its own, without the addition of the mark COLGATE, could not be said to constitute a feature that was so essential that it entitled Colgate to prevent others from adopting the same colour scheme.
  • Radico owned a registration for the mark 8 PM, rather than for the numeral 8. Generally, the courts and the Trademark Registry in India do not grant protection to single digits, single colours and single letters. Under Section 17 of the Trademarks Act, the registered proprietor of a composite mark cannot claim exclusivity over individual components of the mark. Since no exclusivity could be claimed in the present case, the question of infringement did not arise.
  • Radico owned a registration for a word mark and, therefore, for the purpose of an infringement action, could not claim protection with regard to the way in which the mark was represented.
  • With regard to passing off, the could held that, prima facie, there did not seem to be any likelihood of consumer confusion, and that Radico had not suffered any damage as a result of Carlsberg's use of the numeral 8.
Interestingly, Section 17 of the Trade and Merchandise Marks Act 1958 provides that the proprietor of a mark which contains an element that is not registered separately, is common to the trade or is not distinctive, is required to specifically disclaim any right to the exclusive use of such element. Such provisions do not exist in the Trademarks Act; however, the courts follow these principles when reviewing infringement or passing-off claims.

Payel Chatterjee, Rakhi Jindal, Vivek Kathpalia and Gowree Gokhale, Nishith Desai Associates, Mumbai

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