A trademark's basic purpose is to distinguish one person's products or services from those of
another. If a mark is not distinctive, consumers may confuse it with other brands already on the
market and may not be able to determine the origin of the goods or services. A trademark must
be distinctive in order to be registered, and a lack of distinctiveness would constitute grounds for
refusal of the trademark. With regard to numbers, single numbers which involve little or no
stylization will often face an objection because many such numbers are used in trade to designate
a quantity, quality or characteristic of many goods, which would render the mark descriptive and
qualify as an absolute ground for refusal of the trademark.
In the matter of Alphavector India Private Ltd vs. M/s Sach Industies and Ors, the Delhi High
Court issued a judgement (dated October 11, 2022) that clarified the scope of protection that can
be given to numerical marks. The plaintiff filed the lawsuit on the grounds that the defendants
had improperly adopted the mark NINETY NINE/99 for the manufacture and sale of bicycles.
The Plaintiff claimed that they had first utilised the trademark NINETY ONE/91, which they had
been using since 2020 in relation to the design, distribution, and sale of bicycles. The plaintiff
further claimed that they had created a variety of marks that included the number 91, including
91 CARES, OUTDOORS91, VECTOR 91, and 91 NINETY ONE.
The Plaintiff relied upon an excerpt from McCarthy on Trademarks, in respect of which the
Court noted that – “In McCarthy (supra) it has clearly been opined that numbers are capable on
being used as trademarks when used alone, as part of an alphanumeric combination, or spelled
out in letters especially if they are arbitrary marks and are not related to a particular style or a
grade of a product.” The Court observed that McCarthy has further stated that – ‘Letter and
number marks that have no inherent meaning (except as possible abbreviations) are usually
compared on the basis of visual similarity’.
The mark adopted by the Plaintiff in the present case has only been in use since 2020, but the
Court determined after reviewing the claims and pleadings that even in such a short amount of
time, the mark appears to have developed goodwill, as evidenced by sales figures provided by
the Plaintiff. The Court was also of the opinion that, ‘…bicycles by their very nature are bought
by a large swathe of the population which could also include semi-literate persons. The
competing marks can be easily confused and the same can be in the form of sponsorship or
affiliation. Consumers may be deceived to believe that both bicycles originate from the same
manufacturer and the marks ‘NINETY NINE/99’ are series marks.’
The Court granted interim protection to the Plaintiff against the use of the mark NINETY
NINE/99 by the defendant in numeric form or any other mark, in doing so, the Court laid down
two principles for adjudicating such disputes.
In cases where there is an intent to deceive, the court must focus more on the similarities of
competing marks rather than focusing on their differences.
The High Court of Delhi has previously held that numeral trademarks are arbitrary in nature and
are entitled to protection. In determining whether a mark is arbitrary, Indian Courts have taken
into consideration the nature of goods and services being sold under the numeral trademark and
the presence of third parties using deceptively similar numeral trademarks.
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.