Sunday, January 15, 2012

Can the use of Numerals qualify as Descriptively Fair?

As trademark practitioners, a phrase that becomes an integral part of our daily jargon, and one that we rattle off, at the drop of a pin, is “likelihood of confusion”. Undoubtedly, a vital concept, that forms the central theme of trademark jurisprudence, however, cannot be a sole ground to move civil action in Court. 

In other words, while an action of infringement or passing off against another trademark, must have a finding that leads in the direction of “likelihood of confusion”, the same does not suo moto form the basis for civil action.

Perhaps, what I have just summarized is the crux of what an appeal at the Delhi High Court, in the case of Radico Khaitan Ltd. v. Carlsberg India Pvt. Ltd, held. Interestingly, two alcohol manufacturers were at row with each other, for their marks that used the numeral 8 in common. The action was said to be "one for infringement and in the alternative for passing off". 

Radico are registrants of the mark 8PM used for whisky, while Carlsberg sells beer under the mark “PALONE 8”. Further grievance was that Radico’s slogan “AATH KE THAATH” (the luxury of eight) pertaining to the trademark “8 PM” had been piggy ridden on by Carlsberg by using the slogan “8 KA DUM”, meaning the potency of 8 .

The decision makes for an interesting read, albeit on other fronts- While the decision does not delve on the slogan being under copyright or trade mark protected, the court looked at the viability of numerals,and related non-exclusivity under the scope of trade mark protection.

However, observing here (as also in the impugned judgment), that the numeral 8 was in common usage in the alcohol industry, perhaps to describe the percentage strength of the alcohol, the Judge stated that:

"A holder of a protectable descriptive mark 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 with a caveat. 

The caveat is that: "so long as such use does not lead to consumer confusion as to the source of the goods". And 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, as opposed to as a trademark.”

In analyzing whether Carlsberg’s use of the numeral 8 qualified the “descriptive fair use” standard, the Court addressed three questions:

(i) Does the numeral 8 indicate any quality, functionality, property, content etc. of the product itself?

In addressing the first question, the Court noted that the alcohol content in the beer being 7.5%, the adoption of 8 was in fact arbitrary. I personally disagree, and believe that the adoption was in fact descriptive, atleast in the choice of numerals. Else, why not any other number?

(ii) Does the numeral “8” appear „in a manner of speaking on the label or has been given undue prominence so as to appear as a trademark?

The Court here observed that the numeral being several times larger than the text was clearly not written with an intention to be a mere descriptor, but to be the most prominent component of the label, which cannot be termed as descriptive fair use and is clearly in the nature of trademark use.

(iii) Does the product, aside from the numeral "8", carry any other mark which is intended to be the "brand name" or "trademark" by which consumers are to ask for the product?

The Court opined that the consumer is most likely to tell the bartender or the salesman at a liquor vend: "Give me beer 8" and not "Give me beer Palone 8", since 8 is the single most prominent feature of the label and that consumers are most likely to identify with the same. I disagree with this too- I don't think most beer drinkers would be so oblivious of their brand preferences.

The Court denying injunction concluded as:
A. Radico had a registration for “8 PM” as a composite mark. Thus, it could not claim exclusivity over the single numeral “8” to restrain Carlsberg for trademark infringement.
B. Carlsberg cannot rely on descriptive use as a defence to pre-empt Radico's claim.
C. For passing off, the last two prongs of the classical Jif Lemon trinity have to be applied to test if there is any consumer confusion (or likelihood thereof) and any resultant damage caused to Radico by the impugned use of the numeral "8" by Carlsberg.

While it is admirable that this court attempted be creative and introduce to Indian Trade mark jurisprudence a concept such as descriptive fair use, I feel this wasn’t the best instance to do so. The concept to my mind finds application in the use of a trademark itself, and not a numeral or colour, that has been denied exclusivity in the regular course of trade mark prosecution history.

Having admitted that this was a composite mark, I think the court should have looked at factors akin to the Polaroid factors, rather than dwelling so deep into the doctrine of fair use.

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