Imagine a world where all numbers from 0 to 9 and their infinite permutations and combinations can be trademarked. In this unreal realm, Pinku, the owner of “89” can injunct Minku for using “82”, arguing that “8” is common in both of them. Now extend this logic to similar circumstances, such as 23 vs 28, 31 vs 91, 12 vs 21 and so on. Whoever uses a number first, gets to stop the next user!
Now … what if you are told that the construction of this operatic orb has begun. Would you worry? I did when I read that the Delhi High Court in a recent case Alphavector India vs Sach Industries has granted protection to “91” for bicycles and injuncted the defendant from using “99”, accepting the plaintiff’s argument that “9” is a dominant part of both marks. In October 2022, an ad-interim injunction was granted by Justice Pratibha M. Singh on this matter. In this post, I will examine both orders.
Facts in brief: The plaintiff applied for registration of the word and device marks 91 and Ninety One to be used on bicycles and accessories of bicycles. It holds registration over other marks containing 91 including 91CARES, OUTDOOR 91, and VECTOR 91. The defendants use the marks 99 and Ninety-nine on their bicycles and claimed to have used “99” with other marks namely “ONLY99” and SACHINE99. Plaintiff sought an injunction for infringement and passing off its marks. However, neither party holds registration in the mark “91” or “99” per se, whether in numerals or in words. The defendant did not contend anything but only made a prior user claim. However, it failed upfront when the plaintiff’s counsel wittingly highlighted the discrepancies in the supporting documents.
A Club of Conclusions
As per the order, the plaintiffs adopted the mark “91” in alphanumeric and word form in September 2020. They have also used the “91” mark with other formations which are registered since 2020. However, the registration on the standalone “91” mark is pending. Thus, the Plaintiffs had and made two claims – 1.) passing-off of the standalone “91” mark which requires proving goodwill, misrepresentation, and injury to the plaintiff. Here, proving goodwill was the first step, 2.) infringement by proving that “91” is a dominant mark in previously registered formative marks. However, the Court instead of examining each factor of the claims mixed them. The only proof provided by the plaintiffs was the sales figures which the October order prima facie accepted. And the recent order makes no mention of it, let alone examination. This flies in the face of People Interactive v. Vivek Pahwa which noted that “Mere use and statements of sales and expenses do not, of their own, establish the acquisition of secondary meaning.” (See Ishant’s post in this context).
After all the contestations, it was concluded that the defendant started using the mark in July 2021 at the earliest. Given that the gap between the plaintiffs’ use of 91 and the defendant’s use of the 99 mark is less than a year, the burden of proof on plaintiffs, to establish goodwill, should have been much higher, requiring substantial proof. Some credit for the Court’s non-engagement also goes to the defendant who only made one claim i.e. prior use and did not contest any of the plaintiff’s claims. However, with the fact that such a decision is capable of injuncting anyone from using any number between 91-99 with 9 as a common number, the need for examining goodwill heightens.
Without mentioning the pertinent provision on the infringement claim i.e. Section 29(1), (2), the court concluded that the defendant had the intention to imitate the plaintiff’s mark by relying on two principles namely (i) where there is clear imitation with an intent to deceive, the Court must not bend backwards to presume that the intent is not successful, and (ii) where there is intent to deceive, the Court must pay greater attention to the similarities between the competing, and avoid searching, instead, for dissimilarities. (Sidenote – see the interpretation of Section 29 of TM Act, 1999 here)
This is where the court’s circular reasoning comes to the fore. It concluded an infringement claim underscoring the “intent” of the defendant. And for intent, the court considered the “imitation” by the defendant. And for imitation …? The court compared 91 vs 99 (both in words and numbers) saying that it is so similar that imitation is obvious. But how are they so similar? Because the court paid greater attention to the marks (para 43 of the recent order). And why was the attention greater? Because the intention was apparent … and why so …. Because imitation … ? This goes on.
What seems to be missed by the court is that similarity is not prohibited per se which brings us to the question of whether impugned marks (91 and 99) are protectable. Like other questions, this question directly met a conclusion of “arbitrary marks” deserving protection. In the October order, the reliance was placed on Vrajlal Manilal vs Adarsh Bidi where the “22” mark on Bidis was given protection against the mark “122.” However, the plaintiff’s “22” mark was registered and the plaintiff was a prior user in that case. Whereas, the defendant began the use of the impugned mark only sometime before the suit.
A numeral can undoubtedly be a trademark as apparent from the inclusive definition of “mark” in Section 2(1)(m). However, whether it can be registered and protected depends upon the degree of distinctiveness. It is largely established that numerals are not distinctive per se. See for e.g. Matthew’s post, Mona Aggarwal vs Glossy Colour, and Radico Khaitan vs Radico Khaitan for the relevant jurisprudence. This means that it has to be first proven that a numeral mark is distinctive enough to claim protection. For that, the goodwill of the plaintiff plays a pivotal role. The court, however, did not consider the settled principles; rather mixed the claims and went in a circle to prove its point.
This also makes me think if “distinctiveness” is a delusion that can be tilted in any way. This “tilt” can be subjected to how logical the legal reasoning looks and how creatively it is fused with ‘relevant’ facts. The more faults (or “unclean hands” stuff) of the defendant can be highlighted, the more it helps to determine the “tilt”. In the present case, the defendant’s fabrication of supporting documents for prior uses, prior acceptance of its fault, and non-engagement with the plaintiff’s claims primarily problematized its case.
Felix S. Cohen, Transcendental Nonsense and the Functional Approach (especially pages 814-817) (1935) [Paywalled].