Inebriated @ 8

This post was first published on December 22, 2011.
In a very recent decision of the Delhi High Court in the case of Carlsberg India Pvt. Ltd. v. Radico Khaitan (decided on 20th December, 2011), a division bench revisited the ever debated question of trademark rights in numbers. A quick glance over the facts reveals that Radico has been the registered proprietor of the trademark ‘8 PM’ for whiskey and other liquor. In February, 2011, Carlsberg launched Beer under the mark ‘Palone 8’ and as a result was sued by Radico (detailed analysis of the facts and earlier order of the Single Judge can be read here).
Radico’s case revolved around two major points-
No other manufacturer of alcohol can use the number ‘8’ as a part of their trademark as the number 8 is exclusively associated with Radico; and
The manner in which Carlsberg uses the number ‘8’, gives rise to a similar trade dress as that of Radico’s 8 PM bottle.
In response to these, Carlsberg’s main contentions were that not only the number 8 is common to trade in the alcohol industry but also a cardinal number is devoid of any distinctive character and hence no single person or company can claim exclusivity over such a number.
In a detailed judgment, the division bench categorically observed that Radico has protection over the composite mark 8 PM and hence cannot claim exclusivity over the single numeral ‘8’. Enumerating another interesting reasoning the Court further held that Carlsberg’s contention of the numeral 8 being descriptive with respect to the liquor industry is not valid as on one hand Carlsberg themselves have filed a trademark claiming exclusivity over the numeral by filing a trademark application for ‘Palone 8’ and on the other hand they argue that the numeral is descriptive.
Upon comparison between the two trade dress, the Court concluded that both of the trade dress were not similar and both the liquor giants can continue using their marks involving the numeral ‘8’.
While reading the judgment, all along I was expecting an enlightening discussion on trademark rights over numerals, however somehow my expectations were mostly eluded.
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