The main legal point established in the judgment is that a registered proprietor of a composite mark cannot claim exclusivity over individual components of the trademark, and the use of a numeral as a trademark must be tested for its descriptive or trademark nature.

PRADEEP NANDRAJOG, J.

1. We shall be referring to the parties as “Radico” and “Carlsberg”. We highlight that Radico Khaitan Ltd. hereinafter referred to as “Radico” was the plaintiff and Carlsberg India Pvt. Ltd. hereinafter referred to as “Carlsberg” was the defendant. In the suit filed by Radico against Carlsberg, permanent injunction restraining Carlsberg from using the

numeral “8” as a part of its trademark was prayed for. Damages were also claimed. The action is one for infringement and in the alternative for passing off.

2. Radico”s case is that it is the registered proprietor of various trademarks, having obtained registration in India and “8 PM” is an essential, distinguishing and identifying feature of the various trademarks, registration whereof has been obtained by Radico. The registered trademarks are “8 PM BERMUDA XXX RUM”, “8 PM ROYALE”, “8 PM EXCELLENCE BRANDY” and “8 PM BERMUDA WHITE ORIGINAL”. Apart therefrom, Radico claims to be the registered proprietor of the mark “8 PM” pertaining to whisky under Class-32 of the T.M.Act 1999. It is the case of Radico that between the years 2006 – 2007 till 2010 – 2011 its sales have ranged from minimum of `2136.4 million to `2565.9 million.

3. In a nutshell, Radico pleads a proprietary interest in the mark “8 PM”. It claims that the numeral “8” is an essential, distinguishing and identifying feature of its mark in relation to the font size and the colour with which the numeral “8” is printed.

4. Grievance in the plaint is to Carlsberg selling beer by launching the product in February 2011 under the trademark “PALONE 8” with the numeral “8” being used in the same font and colour as is used by Radico. Further grievance is that Radico”s slogan “AATH KE THAATH” pertaining to the whisky sold by it under the trademark “8 PM” has been piggy ridden on by Carlsberg by using the slogan “8 KA DUM”. The grievance is to the stealing of the idea “AATH KE THAATH” i.e. “the luxury of eight” by Carlsberg using the slogan “8 KA DUM” i.e. “the potency of eight”, to the concept which emerges in the mind of the buyer who, with the imperfect recollection of a normal person remembering that Radico”s product has a feature of “the luxury of eight”, with reference to Radico”s trademark “8 PM” would think, and associate, Carlsberg beer when he sees the beer bottle with the label prominently displaying the numeral “8” in the same font, size and colour and styling as that of Radico and the slogan “8 KA DUM” and think that he is seeing a product having same source as that of the whisky i.e. being misled that the beer is a product of Radico.

5. Defence of Carlsberg is that it has sought registration of the trademark “PALONE 8” for beer in Class-33, and that beer and whisky are different products and the consumer of alcohol is an informed consumer and would not be misled, as claimed by Radico, not only for the reason the two products are different but even for the reason the price difference of the two products is substantial, in that, the whisky sold by Radico is priced at `300/-per bottle and the beer sold by Carlsberg is priced at `65/-per bottle. Secondly that the numeral “8” is publicijurisand common to the trade in alcohol, inasmuch as it is used to denote the quality or the character of an alcoholic drink; and being common to the trade, Radico cannot appropriate the numeral “8” to its exclusive use. Thirdly that the cardinal numbers by their inherent feature of being a cardinal number are bound to lack distinctiveness in character. Fourthly, the trademark “8 PM” is per se non-descriptive and registration being granted under Part-B of the erstwhile Trade and Merchandise Marks Act 1958 was proof of the weakness, due to non-descriptiveness, of the mark. Lastly, Radico does not have any separate registration for the numeral “8” as its trademark and thus cannot claim any exclusive right over the numeral “8”. On said account, it is justified in using the numeral “8” as a part of its trademark “P