Carlsberg India Pvt. Ltd. vs. Radico Khaitan Ltd.
2012 (49) PTC 54 (Del.) (DB)
Radico Khaitan Ltd. (Plaintiff) instituted a suit for infringement of Trade Mark & Passing off against Carlsberg India Pvt. Ltd. (Defendant). The disputes were over the marks ‘8 PM’ and ‘PALONE 8 PM, which were being used by the parties in the below depicted manner:
The grievance of the Plaintiff was that the use of the numeral ‘8’ by the Defendant in relation to it’s beer infringes and violates the statutory and common law rights of the plaintiff in it’s well known and registered mark ‘8 PM’.
CASE OF THE PLAINTIFF:
- Plaintiff adopted the mark 8 PM in 1997 and has been using the same since 1999.
- Plaintiff sold a record of one million cases of 8 PM Whisky in the first year of it’s launch which was recorded in Limca Book of Records.
- Plaintiff is the Registered Proprietor of 8PM family of marks in India as well as in other jurisdictions.
- The Defendant is in the same trade. It is well aware of the reputation of the Plaintiff’s mark ‘8 PM’.
- The conduct of the Defendant in using the impugned mark/numeral in respect of same goods and that too in same font and colour is malafide.
- The Defendant is also using a slogan ‘8 KA DUM ‘which is similar to Plaintiff’s campaign ‘AATH KE THAATH’.
CASE OF THE DEFENDANT
- The Defendant saw a high demand of strong beer in the Indian market and launched in January, 2011 a stronger variant of it’s well-established brand OKOCIM PALONE under PALONE 8 label having Alcohol By Volume (ABV) of approximately 8% and the use of numeral ‘8’ by Defendant is a bona fide description of its goods.
- The Plaintiff is not entitled to the exclusive proprietary rights over the numeral mark ‘8’ as the Plaintiff has not obtained any registration for ‘8’ nor is there any application for the mark ‘8’ per se.
- The goods beer and whisky are totally different and belong to different segments and class of consumers.
- Plaintiff’s whisky is priced at approximately INR 300 whereas the Defendant’s beer is priced at INR 65.
- There are number of major players in the alcohol trade to be using the numeral 8 on their labels.
The Learned Single Judge held in favour of the Defendant on the following grounds:
- The numeral mark 8 is prima facie of non distinctive character.
- The marks of both the Plaintiff as well as the Defendant are not identical but at best these can be considered deceptively similar.
- The Registration obtained by the Plaintiff gearing the mark ‘8 PM’ was granted under the old act, i.e. Trade and Merchandise Marks Act , 1958 in Part-B and therefore, as per the said Act, under Section 29(2), in an action for infringement of a trade mark in case the registration in Part-B and the defendant is able to satisfy the Court that the mark is not likely to deceive or cause confusion in the trade, the relied under those circumstances shall not be granted to the Plaintiff. Therefore, the Hon’ble Single judge heal that the use of mark ‘PALONE 8’ by the Defendant is not an infringement under the old Act of 1958 and therefore the said Act is also not an infringement under the Trade Marks Act, 1999 as per clear reading of Section 159(5) of the Trade Marks Act, 1999.
- As per the search report, there is another third party who has a registration for the mark ‘8 PM’ for Beer and not the Plaintiff. The Plaintiff has relied on their registration of the mark ‘8 PM’ for mineral water and this is a surrounding circumstance for the purpose od the grant or non grant of injunction.
- ‘8’ is not per se registered in view of Section 17 of the Trade Marks Act, 1999.
- If one may apply the test of identity of composition, identity of consumers, price ranges, consuming public as tests, the goods ‘Beer’ and ‘Whisky’ are not the same, price wise there is a great price variation.
- The Plaintiff has failed to make out any prima facie case in it’s favour.
However, the Learned Single Judge held that in order to avoid any confusion the defendant is directed to use the mark PALONE and numeral-8 together in the same line. The numeral-8 is allowed to be used by the defendant in different writing style in different colour other than in golden colour. The mark ‘PALONE 8’ would be used by the defendant in the same size of lettering and fonts.
Two cross appeals were filed against the order of the Learned Single Judge. One by the Plaintiff, that they seek a complete ban on use of numeral ‘8’ by the Defendant and the other by the Defendant against the limited injunction granted by the Learned Single Judge requiring the Defendant to change it’s packaging, font, colour, etc.
ON DESCRIPTIVE USE OF “8” BY DEFENDANT
On this aspect, The Hon’ble Division Bench tested the mark ‘8’ as used by Defendant on three aspects:
(a) Does the numerical 8 indicate any quality, functionality, property, content etc. of the product itself?
The said question was answered in the negative on the ground that as the percentage of alcohol content is 7.5% and not “8”, the choice of “8” is arbitrary than descriptive as it does not indicate any quality or property of the product.
(b) 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 Division Bench held that “8” is the most prominent component of the Defendant’s label. Such a use cannot be termed as a descriptive use and is clearly in the nature of Trade Mark use.
(c) 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 said question was answered in the negative on the ground that numeral “8” is the single most prominent feature of the label, the product for all practical purposes is being sold under the mark “8” and consumers are likely to identify and ask for the product as “8” and not “PALONE 8”
Relying on Section 17 of the Trade Marks Act, 1999 the Division Bench held that an action for trademark infringement in respect of the composite word mark “8 PM” against Carlsberg, which uses “PALONE 8”, where the only commonality is “8” must prima facie fail.
ON PASSING OFF
The Hon’ble Division Bench applied the last two prongs of the Jif Lemon trinity, as to whether there is any likelihood of confusion and any resultant damage thereby. The answers for both of the tests were found to be in negative.
On the question of Trade Dress, in the ‘8 PM’ Label, the Court held that unique elements of the Plaintiff’s Label have not been copied by Defendant. The mere manner of writing the numeral “8” or the size of it cannot be a sufficient ground for Plaintiff to obtain an injunction.
Thus, the Division Bench dismissed the appeal filed by the Plaintiff and allowed the appeal filed by the Defendant. The appeal of the Defendant was allowed for the reason that the ground on which the Learned Single Judge has granted the injunction, i.e. to avoid any bleak chances of misrepresentation is no ground for granting an injunction.
Author: Ankit Rastogi