In a recent appeal in a trademark infringement dispute in Mona Aggarwal & Anr. v. Glossy Colour & Paints Pvt. Ltd. & Anr.
FAO(OS) 572/2015 & CM 23119/2015, the Delhi High Court has dealt with the issue whether the numeric trademark ‘6004’ is an infringement of the numeric trademark ‘1001’. In the appeal, the finding of the Single Bench of the Delhi High Court against the Defendant/ Appellant i.e. Mona Aggarwal trading as Multi Group of Suppliers, restraining it from using the impugned numeric mark ‘6004’ has been challenged.
- The Plaintiff/ Respondent i.e. Glossy Colour & Paints Pvt. Ltd. is stated to have adopted the trademark ‘1001’ back in 1946, whereas the Defendant/ Appellant adopted their trademark ‘6004’ only in 2011.
- Both the Plaintiff/ Respondent and the Defendant/ Appellant deal in paints, distemper, varnish, etc.
Finding of the learned Single Judge in the Interim Application No. 14572/2014 for Temporary Injunction in the Original Suit CS (OS) 2335/2014
As per the learned Single Judge, the colour scheme, get-up, layout and arrangement of features of the trademark ‘6004’ was deceptively similar to ‘1001’ hence is likely to confuse purchasers of the goods, illiterate and semi–illiterate both. The said conclusion was reached by applying the test of a man of average intelligence with imperfect recollection. First appeal has been preferred against the said judgment before the learned Division Bench.
Contentions by the Appellants, i.e. Mona Aggarwal trading as Multi Group of Suppliers
The impugned mark ‘6004’ was not dishonestly adopted.
- However, without prejudice, since the Appellants had recently adopted the said mark, they were agreeable to change the layout, colour scheme and get-up of the label in such a manner as to make it completely distinct from the original label as adopted by the Appellant so as to obviate any confusion or deception.
Contentions by the Respondent i.e. Glossy Colour & Paints Pvt. Ltd.
That though the Appellants’ changed label in its layout colour scheme, get-up was prima facie different from the label of the Respondents, however, it had objections and reservations to the use of the numeral ‘6004’ in the label as it would still be deceptively similar to the registered trademark ‘1001’ and was likely to confuse.
Observations and Decision of the Division Bench of the Delhi High Court:
- A trademark can be represented by numerals, however, use of numeral as a trademark by one party does not monopolize it in a way that another party cannot use a trademark of different numerals.
- In such a situation, what has to be seen is whether the mark taken as a whole i.e. combination of numeral, colour scheme, get-up, layout are deceptively similar.
- The new proposed trademark of the Defendant/ Appellant was found to be distinct from the label as used by the Respondent/ Plaintiff, hence would not amount to passing off or infringement of the registered label or trademark of the Plaintiff/ Respondent.
- However, the question whether the use of the numeral ‘6004’ per se would still amount to an infringement is left open to be decided at trial. The respondent/plaintiff would be required to lead cogent evidence to establish that the use of the numeral ‘6004’ per se is deceptive, confusing or misleading to the purchaser of average intelligence and imperfect collection.
- The Defendant/ Appellant was also directed to keep accounts of all the sales made by it and furnish half-yearly statements to the court in the form of affidavits of all the sales made by it in respect of the said goods bearing the above-referred label.
The aforesaid order of the Division Bench of the Delhi high Court can be accessed here.
Meanwhile, our research team has also put together a list of some entities having applications / registrations of the numerical trade mark ‘1001’ in class 2, as under:
It is pertinent to mention here that the above Application no. 1349942 by Mr. Subhash Garg had been opposed by Glossy Color & Paints Pvt. Ltd. who had also filed a suit before the High Court of Delhi bearing no. C.S. (OS) No. 1104 of 2005 against the said applicant. The said suit appears to have been referred to the Delhi High Court mediation and conciliation centre, where, during the meditation proceedings, a settlement is stated to have been arrived at between the parties and Mr. Subhash Garg is stated to have agreed to withdraw the application for registration of his mark 10011.
To answer the question – can a numeral or number be registered as a trademark in India? – the definition of a ‘mark’ under Section 2 (m) of the Indian Trade Marks Act, 1999 includes a numeral also. Of course, the general criteria required for a number or numerical to be registered as a trademark remains the same i.e. it is distinctive in relation to the goods and services covered by the trademark application. Therefore, an applicant is likely to succeed in obtaining protection of a number as a trademark if the number is distinctive in relation to the products and services for which registration is sought. However, what numeral makes a good trade mark is a matter of discretion by the Registry or, during a dispute, the Judiciary. The strength of the number may also be a factor in determining the distinctiveness of the mark. For example, a one or two digit number may be difficult to get registered as a trademark for lack of distinctiveness, whereas, a number of a higher digit strength is more likely to be granted registration. Basically, higher the digit strength, higher are the chances of it meeting the distinctiveness criteria and being granted registration. This area of Trademarks Law, though relatively less discussed, is quite an interesting field and has potential for a multitude of disputes like the aforementioned case, especially in respect of monopolistic tendencies of traders over their number trademarks.