By Deepika Shrivastav and Sehar Sethi
Section 2(1)(m) of the Trade Marks Act, 1999 defines the term “mark” as including a “device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.” While the statutory definition of the term “mark” encompasses numerals or combinations thereof, they are often not perceived as inherently distinctive due to their common usage and lack of fanciful characteristics.
The present judgment in Vineet Kapur v. Registrar of Trade Marks [1], discusses the threshold requirement of Section 9 of the Trade Marks Act while assessing the registrability of numeral marks and combinations thereof and affirms that a numeral mark can be registered if it distinguishes the goods of the applicant from others.
Brief Facts
The Appellant, Mr. Vineet Kapur, filed Trade Mark Application No. 5151862 dated September 28, 2021 on a “proposed to be used” basis, seeking registration of the trademark “2929” in Class 03. The application covered goods including: cosmetics, nail polish; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; shampoos; perfumery; essential oils; hair lotions; hair care preparations; dentifrices; non-medicated hair care preparations; non-medicated skin care preparations; and non-medicated skin care cosmetics.
However, by Order dated February 29, 2024 (the “impugned order”), the Learned Registrar of Trade Marks rejected the application on the ground that the mark lacked distinctive character. Aggrieved by this decision, the Appellant preferred the present appeal before the Hon’ble High Court of Delhi, challenging the impugned order.
Contentions of the Appellant
- The Appellant contended that the mark “2929” was independently conceived and adopted at a time when no identical or similar mark existed in relation to the goods covered under Class 03.
- The Appellant further argued that the mark applied for has no direct or indirect relevance with respect to the class of goods applied for and is, therefore, arbitrary in nature. It was further contended that the arbitrary nature of the mark adds to its distinctive character, making it capable of distinguishing the goods of the Appellants from those of others. It was also submitted that such attributes qualify the mark for registration under the Trade Marks Act, 1999.
- The Appellant further submitted that he is the registered proprietor of several numeral-based trademarks, both as word marks and device marks, including but not limited to “9292”, “1111”, and “1010”. A list of the referenced trademarks was provided to support the application.
Contentions of the Respondent
- The Learned Registrar of Trade Marks contended that the mark “2929” constitutes a mere combination of commonly used numerals and therefore, lacks any element of creativity or distinctiveness. It was further submitted that marks consisting of single or two-character combinations, whether letters or numerals, are generally considered non-distinctive, as such characters are commonly used in trade for purposes such as cataloguing or model identification. In the same vein, the Learned Registrar further contended that the mark in question is a combination of common numbers, which cannot be monopolised by any individual.
- The Respondent also argued that the prior registration of a device mark does not automatically entitle the Applicant to registration of a corresponding word mark. Given the inherent differences between word and device marks in terms of visual representation and overall impression, the Appellant had failed to establish any valid grounds for entitlement to a word mark registration for a combination of ordinary numerals.
Established jurisprudence on registrability and enforcement of numeral trademarks
The Courts in India have analysed the issue of registrability and protection of numeral trademarks on various occasions. A few such judicial precedents concerning the registrability and grant of trademark protection to numeral marks are discussed below:
| Judgment | Summary |
| Tata Oil Mills Company Ltd. Versus Reward Soap Works[2] | Facts: Tata Oil Mills Company Ltd., the plaintiff, filed a suit to prevent Reward Soap Works, the defendant, from manufacturing, marketing, selling, or promoting washing soaps under the trademarks “501”, “507”, or any other marks that closely resembled them. The plaintiff asserted that these marks and the packaging used by the defendant were either identical to or deceptively similar to those of its registered “501” half-bar soap. The plaintiff alleged trademark and copyright infringement, as well as passing off, by the defendant.Held: The Court issued an injunction prohibiting the defendant from producing, marketing, selling, advertising, or otherwise dealing in washing soaps bearing the “501”, “507” marks, or any other confusingly similar trademarks or packaging resembling the plaintiff’s “501” soap. The defendant was further restrained from infringing the plaintiff’s registered trademarks and copyrights, and from misrepresenting its products as those of the plaintiff, for the duration of the legal proceedings. |
| M/s. Vrajlal Manilal and Co. Versus M/s N.S. Bidi Co. and another [3] | Facts: The plaintiffs, being the registered proprietors of the trademark “22” in relation to the manufacture and sale of bidis, instituted the present suit alleging infringement and passing off. The grievance arose from the defendants’ use of the trademark “122” for manufacturing and selling bidis, which the plaintiffs contended was deceptively similar to their registered mark “22” and likely to cause confusion among consumers.Held: The Court granted an injunction restraining the defendants from using the trademark “122” or any other numeral-based mark that is deceptively similar to the plaintiffs’ registered trademark “22”, thereby preventing further acts of infringement and passing off. |
| Jagan Nath Prem Nath Versus Bharttya Dhoop Karyalaya[4] | Facts: The Appellant was engaged in the manufacture and sale of agarbattis (incense sticks) under the registered trademark “555”. The Respondent did not originally include the numerals “555” in his mark. However, at a later stage, the Respondent incorporated the numerals “555” into his trademark, leading to the present dispute.Held: The Court observed that the “inclusion of the numerals “555” in the Respondent’s trademark was a subsequent addition and, therefore, not prima facie bona fide. It further held that, under Section 28(1) of the Trade Marks Act, the Appellant, being the registered proprietor of the trademark “555”, had a superior prima facie right to seek an injunction restraining the Respondent from using the same.”[5] |
Judgment
- The Court reiterated that a trademark application cannot be refused solely on the ground that it comprises a combination of numerals. Numerals, either individually or in combination, fall within the statutory definition of a “mark” under the Trade Marks Act and are eligible for registration, provided they satisfy other substantive requirements of the Act.
- In support of this view, the Court relied on various precedents, including Alphavector India Pvt. Ltd. v. Sach Industries and Others, wherein protection was granted to the numerical mark “91.” It was held in that case that both “91” and “99,” whether expressed in words or numerals, are arbitrary in relation to cycles and cannot be considered descriptive.
- The mark ‘2929’ is a coined mark which does not have any meaning with respect to Cosmetics and Skincare goods. The Court further noted that the device mark
is already registered in the favour of the Appellant for identical goods in Class 03. The Hon’ble Court further stated that a mark is considered to be distinctive if it distinguishes the goods of one manufacturer from another and if the public identifies the mark with the source of a particular manufacturer. The Court emphasized that such distinctive nature of a mark is to be decided in reference to the goods for which it is being applied. - The Hon’ble Court referred to McCarthy, Trademarks and Unfair Competition (Volume 1, Fifth Edition), stating as under:
“It is very clear that no manufacturer would have the right exclusively to appropriate the figures 1, 2, 3, and 4, or the letters A, B, C, and D, to distinguish the first, second, third and fourth quality of his goods, respectively…..It is equally clear, however, that if for a long period of time he had used the same figures in combination, as ‘3214’, to distinguish his own goods from those of others, so that the public had come to know them by these numerals, he would be protected[6].” - The Court concluded that the Appellant’s mark “2929” is arbitrary and represents a unique numerical combination with no relation to the characteristics of the goods. As such, the mark is inherently distinctive and capable of registration without the necessity of acquiring secondary meaning through use.
Based on the above considerations, the Court held that the impugned Order of the Registrar of Trademarks rejecting the application was untenable and liable to be set aside. Accordingly, the Court directed that Trademark Application No. 5151862 proceed to advertisement in the Trade Marks Journal, subject to the condition that the Appellant shall not claim exclusive rights over the individual numerals “2” and “9.”
Conclusion
The judgment underscores that numeral-based trademarks can be registered if they are inherently distinctive. Courts have consistently held that such marks, when arbitrary and capable of identifying the source of goods, deserve protection under trademark law. This decision reinforces the broader principle that distinctiveness, not the mere form of a mark—whether word, number, or symbol—is the key criterion for registrability. However, it has also been observed that a straight-jacketed approach cannot be adopted on the issue of protection and enforcement of numeral trademarks and multiple factors (such as, context of use, marketplace perception etc.). are to be taken into consideration while adjudicating such cases.
[1] C.A.(COMM.IPD-TM) 22/2024
[2] 1982 SCC OnLine Del 116
[3] 1987 SCC OnLine Del 144.
[4] 1975 SCC OnLine Del 79
[5] 1975 SCC OnLine Del 79
[6] McCarthy, Trademarks and Unfair Competition (Volume 1, Fifth Edition)