Can numbers be trademarks? Delhi High Court ruling opens new front

A recent Delhi High Court ruling allowing arbitrary and distinctive numerical combinations to be eligible to be registered as a trademark in India may result in multiple litigations of similar looking, sounding, and appearing trademarks, legal experts said.

 

They are of the opinion that while numbers have historically been accepted as a trademark globally, the ruling paves the way for big business houses and opportunistic persons monopolising the registration of culturally significant and popular numbers, especially in countries such as India.

 

Numerals have historically been popular forms of trademarks, said Swati Sharma, partner (head-intellectual property) at law firm Cyril Amarchand Mangaldas.

 

"Some examples include ‘555’ trademark, for a popular cigarette brand, and ‘No. 5’, registered as a perfume by Chanel, among others," she said, adding that as long as the numerals are distinctive for the goods and services to which they are applied, these can be registered as a trademark. 

 

Other experts, however, caution that there could be an outburst of litigations with similar looking trademarks, and a flood of entries in the trademark register. The ruling would, therefore, need a lot of legislative reformation in the field of intellectual property laws, said Varun Singh, the founder and managing partner at law firm Foresight Law Offices.

 

The Delhi HC ruling came in an appeal by Vineet Kapur, who sought to register “2929” as a trademark for a cosmetics product. The Trade Marks Registry rejected Kapur’s application on the grounds that the trademark sought to be registered lacked distinctiveness and comprised common numerals, which the applicant was not entitled to monopolise. Kapur appealed this decision before the Delhi HC.

 

In her decision, Justice Mini Pushkarna held that a numeral mark such as “2929” fell within the definition of a “mark” under Section 2(1)(m) of the Trade Marks Act, 1999, and couldn’t be rejected only because it consisted of numbers.

 

Globally, several iconic brands such as Jack Daniel’s “Old No 7”, Levi’s “501” jeans, “WD-40”, and “4711”, a traditional German cologne brand, rely on numeric trademarks to convey distinctiveness. In India, products such as “5 Star” and “7 Up” have also used numerals very effectively as the central element of their brand identity.

 

"The test remains whether the consuming public associates the number with a particular commercial origin. If it does, then the law affords it the same protection as any other trademark," said Ankit Sahni, partner at law firm Ajay Sahni and Associates.

 

While the HC appears to be legally sound, it might raise a few questions on the process of registration of trademarks, and whether a trademark on numbers can be registered if the said digits are written in a completely different design, font, and colour scheme. 

 

“Can numerical marks in word form, say ‘twenty-nine twenty-nine’, confer distinctiveness? Can word-form numerals in Hindi, Urdu, or regional languages, say ‘saat sau sattavan’ for 757, be considered distinctive,” Singh asked.

 

Section 9 of the Trademarks Act prohibits registration of trademarks that are not only devoid of distinctive character, but are also descriptive, obscene, customary in trade and language, that hurt religious susceptibilities, and deceive consumers or are prohibited by law.

 

"Numerals that have become evocative of a national/international event or incident, such as 911, may be refused registration by the Trademarks office as these numerals denote an international event and may hurt the sentiments of the public, may be regarded as scandalous," Sharma said.