Analysis of the case- Carlsberg India Pvt. Ltd vs Radico Khaitan Ltd. on 20 December, 2011

Mrinal Gour, an intern at Khurana and Khurana Advocates and IP Attorneys, analyses the case, Carlsberg India Pvt. Ltd vs Radico Khaitan Ltd. This was a landmark judgment with respect to registering a numeral as a trademark.

Sections involved: Section 29 of Trademark Act, 1999 which talks about infringement of registered trademarks. It states the scenarios where a registered trade mark is infringed by a person who is not the registered proprietor or he is using by way of permitted use. The non registered proprietor’s mark would be identical with or deceptively similar to the trade mark in relation to goods or services, which is already registered.

Facts:

Radico Khaitan Ltd., a manufacturer of alcoholic beverages was the plaintiff. The company was using the numeral i.e. 8 from 2006 itself till now, and they were generating scores of profit which was added onto their revenue turnover. Their sale during the years 2006-2007 till 2010-2011, was 2136.4 million to 2565.9 million. Later, Carlsberg started 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 color as alike the one used by Radico.

Below are the products of Radico and Carlsberg respectively:

Radico:

1. 8PM BERMUDA XXX RUM

2. 8PM ROYALE

3. 8PM EXCELLENCE BRANDY

4. 8PM BERMUDA WHITE ORIGINAL with a slogan: “AATH KE THAATH”

Carlsburg:

1. PALONE8 WITH A SLOGAN: ‘8 KA DUM”

Dispute:

• Related to the usage of numeral i.e. 8, color, identical font and identical font size with which the numeral, 8, is printed on the bottle “distinguishing & identifying feature of its mark.”
• Idea of adding Slogan on 8 to make the product distinctive.
• Price differentiation among the products is substantial.

Arguments by Radico:

• Radico contends that Carlsberg is selling beer under the trademark Palone8 with numeral 8 being used in the same font size, same font and color. From the point of a reasonable person involved the trade in any way, and from the perspective of the practices prevalent in the industry i.e. to see what other players are doing in the same industry, it can potentially create confusion in the minds of the consumers.
• By adding the slogan on numeral 8, Carlsberg essentially portrays the idea of Radico’s trademark which emerges in the minds of the consumers. They can associate and connect to Radico’s trademark i.e. 8PM while looking at the Carlsberg beer bottle with the label prominently displaying the numeral 8PM in the same font and size and with the same color and styling like that of Radico’s slogan.

Arguments by Carlsberg:

• There are various alcoholic drinks brands in the market having reference to the numeral 8 like Signature and Bacardi. They contended that Numeral 8 was public juris which meant, it was a public right which is common to the trade in alcohol. Registration of the trademark Palone8 was under class 32 of Trademark Act 1999, and both the products belong to different class. Further, as the alcohol consuming consumers are very much aware, informed and can distinguish the features of beer / whisky/ rum/ brandy which are registered under the class 33 of trademark act 1999, it would not mislead the consumers.

• Radico’s slogan “AATH KE THAATH” with numeral 8 showcases & somehow connects the numeric value to the luxury of Eight (8) empowering it in such a way. While on the other hand, Carlsberg using the slogan 8 “KA DUM” regarding numeral 8, shows the potency of eight rather than intending to mislead the consumers. Both belong to different class and both are different products. Even the other products like:
  – WHISKY under SIGNATURE with numeral 8, displayed prominently on the label,
  – Bacardi’s 8 RUM
  • Similarly, there are other various brands in alcoholic industry which uses the same concept to make their product distinctive either by adding numeral or by adding the slogans.

• The reason about the price differentiation is substantial, Radico’s product i.e. whisky price is costing Rs.300 per bottle while Carlsberg product i.e. beer price is costing Rs. 65 per bottle. Well, if products belong to the different class and category, having distinct feature by itself then there will a cost differentiation. Beer cannot be sold at that range of price where Whisky and Rum are being sold.

Judgment:

On 20^th December 2011, the Delhi High Court held the case in favour of Carlsberg and dismissed Radico’s prayer for injunction.

1 The plaintiff has registered his trademark as 8PM for advertising its product in the market and,

2. Both the goods & products have dissimilarity and both belong to different sections and class and beer is only a dilution of alcohol and not assuchalcohol,

3 And after applying the test of distinctiveness which includes numeral and considering the facts that Numeral 8 was public juris which meant, it was a public right which is common to the trade in alcohol. Merely by the stylized written form of the numeral 8, it cannot be a sufficient ground for Radico to obtain an injunction.

4. The decisive question is a simple trade dress analysis of the overall “look and feel” of the label, independent of its contents. Further, on comparing the two labels, it can be seen that there is no prima facie cause of any consumer confusion and damages caused, that would lead to infringement.

5. It can be further seen that Radico had registration for a composite mark ‘8 PM’ and referring to Section 17 of the Trade Marks Act, a registered proprietor of a composite mark cannot seek exclusivity with respect to individual components of a Trade Mark. Since no exclusivity was claimed, there is no question of any infringement since the only common aspect in both the marks is the numeral 8.

Analysis:

As far as my opinion goes, I won’t defer and would go synonymous with the judgment, because of the following reasons:

• Both the products belonged and classified under variant classes i.e. class 32 and class 33.
  • Class 32 Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.
  • Class 33 Alcoholic beverages (except beer).
  • Class 33 excludes beer and on the other hand it includes whisky, rum, brandy and alcoholic beverages.
• -A strong reference to common practice in the trade of alcohol brought out that the numeral 8 is common to the trade, so there should not be any dispute regarding the usage of numeral i.e. 8.

• -From the consumer’s point of view, if a consumer asks for a drink (in a bar or in a alcoholic shop near to roads ) ,he will refer to the drink category i.e. beer or whisky or so on ,he is aware of the fact that beer is different and whisky ,rum ,brandy are different ,and even if he is normal person who is drinking first time , through menu and price of the product he can analysis that beer are much cheaper as compare to the whisky ,rum and brandy. So, there is always or at least often an aware consumer who is able enough to distinguish among the drinks or the type of alcoholic beverage which he/she wishes to prefer or to consume.

• -Both the slogans reflect the different aspects of the product with different brand messages related to the numeral 8, Radico products slogan message related to luxury of eight while Carlsberg product slogan message related potency of eight.