Carlsberg carries the day in dispute over numeral 8

A word, letter, numeral or symbol, used in combination and unrelated to the goods on which it is applied, may create a distinctive trademark. Alternatively, it may become a descriptive trademark.

It is settled law that a holder of a descriptive mark, eligible to be protected, has no legal claim to an exclusive right in the primary, descriptive meaning of the term. Consequently everyone is free to use the term in its primary, descriptive sense unless such use leads to consumer confusion as to the source of goods. In an action for infringement, the “fair use” defence is available only when the alleged infringer employs a trademark in its descriptive sense.

In recent cross appeals filed by Radico Khaitan and Carlsberg India, the questions to be answered were:

(1) Whether Radico, the holder of a protectable descriptive mark – 8 PM – with no exclusive right in the primary, descriptive meaning of the numeral 8, could seek an injunction against Carlsberg where Carlsberg was using 8 not as a descriptive numeral but as an integral part of its composite trademark Palone 8?

(2) Whether the style and colour adopted by Carlsberg was a slavish imitation of Radico’s label, subsumed under the question, whether Radico had any protectable interest in the style and colour within which it depicted 8 PM.

Manisha Singh Nair is a partner at Lex Orbis IP, a New Delhi-based intellectual property practice.