Understanding Alpha Numeric Trade Marks: A Legal Perspective

By Kush Bisht and Mandeep Singh

Alphanumeric, also sometimes known as alphameric, is a term that includes alphabets or numerals that are given in a specific language set. These are the combination of letters and numbers together.

As per the provisions of Section 2(m’) of the Trade Marks Act, 1999, a “mark” includes “a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof”. Further, as per the provisions of Section 2 (1)(zb), a ‘trade mark‘ is defined as “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colours.” As per the said provisions, it can be concluded that a mark, which is to be registered, must be capable of distinguishing itself and the goods/services applied thereunder from the marks of other proprietors. The most important quality for any trade mark to be capable of being registered under the Act is that it must distinctive, unique and capable of being represented graphically.

Now, coming back to the issue of alphanumeric marks being capable of being registered in India, the provisions of Section 2 (m) and Section 2(1)(zb) are to be read together. Section 2(m) of the Act includes ‘…letter, numerical’ whereas Section 2(1)(zb) states that a mark should be capable of being represented graphically. It is evident that all alphanumeric marks are merely a combination of ‘alphabets or numerals’ and the same can be represented graphically, therefore, going by the provisions of the said sections, alphanumeric trade marks find sufficient coverage to be registered under the Act.

Further, the same was also reiterated in Khaitan Limited v. Carlsberg India Private Limited 2011, wherein the Court upon a bare perusal of the definition of “marks” under Section 2(m) of the Trade Marks Act, 1999, stated that it was evident that the said definition was inclusive to numerals, meaning that a mark, under the definition, includes numerals which is determinative of the fact that numerals can perform the function of a trade mark as well.

ALPHABETS AS TRADE MARKS

Over the years, there have been many registrations accepted that include single letters like Netflix i.e. the famous ‘’ trade mark and the same is being used with respect to providing entertainment services. Then, there is Wildcraft’s ‘’, which is popular in respect of bags, outdoor gear, clothing and footwear and has its mark registered in India since 2017. Additionally, Google’s‘ ’ has become iconic, representing the tech giant’s vast array of services and products. The registration of these single-letter trade marks underscores the importance of distinctiveness and brand identity, allowing companies to maintain exclusivity and protect their intellectual property effectively. These trade marks have become powerful market tools, enabling companies to build and secure their brand presence across various products and services by using a single distinctive letter, highlighted in unique font and color through extensive use and promotion, to represent the entire brand.

For example, Hyundai and Honda  both use the letter “H” in their branding, and Tata and Toyota  use the letter “T,” yet each of the above-mentioned brands managed to create distinctive brand identities and co-exist, despite being in the same automobile industry. Additionally, examples like HP/ , which stands for Hewlett-Packard, and others like LG/  (Lucky Goldstar) and GE  (General Electric) showcase how two-letter combinations, represented creatively, have also gained distinctiveness through extensive promotion, usage, and long-standing market presence.

NUMERALS AS TRADE MARKS

It is pertinent to note that certain single numbers have obtained registrations, for instance, the number “1” was applied for registration and it was granted registration in the year 2018. This trade mark was registered because of the fact that it did not bear any relation to the goods that the brand offered. It was registered by Exxon Mobil Corporation in respect of ‘Motor Oils’. Since 1 does not represent motor oil goods is not descriptive and proves to be arbitrary in nature, the same was registered as a trade mark vide Registration No. 1619362. Similarly, the famous “007” trade mark, associated with the iconic James Bond franchise, was also granted registration, highlighting the broad scope of what can be trade marked beyond conventional descriptive marks.

In the case of Alphavector India Pvt. Ltd. v. Sach Industries, Alphavector, a manufacturer and vendor of bicycles & accessories and was the registered proprietor of several marks that included the number ‘91’ with words such as ‘outdoors’, ‘vectors’ and ‘cares’. These marks were used on their bicycles, along with a V logo, to promote their cycle business since the year 2020. However, the defendants started using the mark ‘99’ and NINETY-NINE on their Facebook page in the year 2021. Neither party had registration over the trade marks ‘91’ or ‘99’ in a standalone manner. Since the Plaintiff had already established goodwill and reputation in the market with its trade mark in such a short period, it was entitled to get protection for the same. The DHC held that Defendant’s use of the marks ‘99’ and NINETY-NINE was causing confusion in the mind of the consumers between the marks ‘91’ and ‘99’ and such confusion/ deception would mislead them regarding the origin of the products bearing the said marks. Therefore, an injunction was granted to the Plaintiff.

SUCCESSFUL REGISTRATIONS OF ALPHA NUMERIC MARKS

Alpha-numeric marks have long been a subject of debate and discussion in the realm of intellectual property. Despite ongoing discussions on the distinctiveness of such marks, many companies have successfully registered these marks as trade marks worldwide, including in India. Below are details of some companies that have obtained registration for their alpha-numeric marks:

OBSTACLES FACED BY ALPHANUMERIC MARKS

Alphanumeric marks often face significant objections during the trade mark registration process due to their perceived lack of distinctiveness. These marks, which typically consist of combinations of letters and numbers, can be seen as generic or descriptive or suggestive, failing to identify the source of goods or services, which can be overcome by showing distinctiveness or acquired distinctiveness and use or promotion of said trade marks. Even in the case of Carlsberg India Pvt. Ltd. vs Radico Khaitan Ltd. the following point was put forth – “26. Trade mark jurisprudence in India has fought shy of according trade mark status to single numerals or letters. While a combination of letters and numbers has often been found worthy of trade mark protection, there is ample material to suggest that the consistent stand taken both by the Trade mark Registry and the Courts is to frown upon attempts to secure trade mark protection for single digits, single colours and single letters in India”

In Shine Chem Laboratoires v. Standard Reagents Pvt. Ltd., the Plaintiff sought registration of the mark “Stable 2Y++ Single Solution KF Reagent”, which was challenged on the same being descriptive. The Court, while elaborating on the descriptiveness of trade marks held that the mark “Stable 2Y++” was inherently descriptive in nature, since the numeral ‘2’ along with ‘Y++’ refers to the stability period being 2 years. Additionally, when seen as a whole, the said mark was also a descriptive sentence and could not be made eligible for registration.

In the recent case of Gtz India Pvt. Ltd. vs Artek Surfins Chemicals Ltd., Gtz India appealed against an injunction order that prohibited them from using specific alphanumeric marks. Artek Surfins argued that their alphanumeric trade marks, such as “786”, “2048M”, “511A”, and others, had become distinctive identifiers of their products. The court upheld this view, recognizing that the consistent use of these alphanumeric marks by Artek Surfins Chemicals Ltd. had led consumers to associate these specific combinations with their products. This association was deemed strong enough to warrant protection against GTZ India. This case illustrates that even alphanumeric marks, which might initially seem generic or descriptive, can attain distinctiveness through continuous and extensive use and consumer recognition, thereby becoming protectable trade marks.

KEY CONSIDERATIONS

Alphanumeric marks, often possess distinctiveness due to their creative elements. Their use and promotion further enhance this distinctiveness, leading to a higher acceptance rate for registration. Marks and logos that have acquired significant goodwill and reputation through extensive and continuous use and promotion find the registration process relatively simpler compared to newer marks entering the market. However, aside from the substantial goodwill and reputation, a crucial factor in their registration is the arbitrary nature of the mark. The trade mark must have no connection to the goods or services for which it is applied, ensuring its distinctiveness and eligibility for trade mark registration.

The essential factors to keep in mind are mentioned below:

• Arbitrary Nature and Distinctiveness: The trade mark should not have any inherent connection to the goods or services, making it arbitrary and distinctive. For example, using a trade mark like “PS5” for gaming consoles or “F1” for clothing, can be seen as arbitrary because these combinations do not describe the products directly, enhancing their uniqueness and eligibility. Further, ensuring that a trade mark is unique and does not describe the goods or services it represents. A distinctive trade mark stands out and is easier to protect legally, reducing the risk of confusion among consumers. This distinctiveness can be achieved through creative combinations of letters and numbers that do not directly refer to the product or service.
• Use and Promotion/ Acquired Distinctiveness: Trade Marks that have already gained significant market presence and recognition are easier to register. If a trade mark has been in use for a considerable time and has been continuously and extensively promoted, it is likely to have built up goodwill, making the registration process smoother. This established presence can serve as evidence of the trade mark’s association with a particular brand in the minds of consumers.
• Search for Conflicts: Conduct a thorough search to ensure that the trade mark does not conflict with existing trade marks. This involves checking trade mark databases and other relevant sources to identify any similar trade marks that could cause confusion or legal issues. A comprehensive search helps prevent potential disputes and ensures that the new trade mark can be safely registered and used.
• Protecting Goodwill and Reputation: Consider the existing goodwill and reputation associated with the trade mark, as this can simplify the registration process. A trade mark with a positive reputation among consumers is often easier to register, as it demonstrates established identity and value. This not only simplifies registration but also enhances the trade mark’s overall protection, recognizing it as a significant brand asset. Enforcing rights to prevent dilution is crucial, as demonstrated by a recent case involving IndiGo and Mahindra highlights the importance of protecting trade marks, as IndiGo filed a lawsuit against Mahindra for using the trade mark “BE 6e” for its electric SUV, which IndiGo claims infringes on its “6E” identifier used extensively in its branding. Further, proactive steps, such as the series of trade marks from PS1 to PS5, filing for PS6 before its launch for promotional purposes, can also be taken.

Conclusion

In conclusion, alphanumeric marks, with their unique blend of letters and numbers, offer a distinctive way to differentiate products in the marketplace. These trade marks are used to protect initials, jersey numbers, model numbers of series products such as gaming consoles, famous cars brands/models, mobile model numbers, and more. By adhering to key considerations such as using non-conventional combinations, ensuring the trade mark is well-recognized, and creating non-descriptive yet easily pronounceable words, businesses can enhance the registrability of their trade marks.

The use of such trade marks can extend to various industries, from technology and automotive to sports and entertainment. Moreover, leveraging the established goodwill and reputation associated with these trade marks can simplify the registration process. These strategies collectively demonstrate that alphanumeric marks are not only distinctive but also registrable, providing a robust and memorable means of brand identification and protection. Given the predictable nature of alphanumeric marks, registering them early is essential to prevent easy adoption and encroachment by others. This approach ensures that businesses can effectively safeguard their intellectual property while standing out in a crowded market. By considering these factors and acting swiftly, companies can secure their unique brand assets and ensure long-term success.