Bicycle dispute clarifies range of protection for numeral trademarks

On 1 February 2023 the High Court of Delhi held that numeral trademarks can be considered arbitrary in nature and are entitled to protection (Alphavector India Pvt Ltd v Sach Industries & Ors. [CS (COMM) 691/2022]). In its order, the court opined that the numeral marks 99 and 91 were deceptively similar to one another in respect of bicycles and bicycle accessories and restrained use of the mark 99.

Details of the suit

Alphavector India Pvt. Ltd. (the plaintiff), a manufacturer and vendor of bicycles and accessories, is the registered proprietor of several marks featuring the number ‘91’ in conjunction with words such as ‘outdoors’, ‘cares’, ‘vector’ and a ‘V’ logo. The company has also filed trademark applications for the word mark ‘ninety-one’ as well as a device mark featuring a stylised form of the number ‘91’ along with the stylised text ‘ninety-one’ – all pending registration.  The company has been using the said marks since 2020.

In 2018 the defendants (Sach Industries) began using the mark SACHIN and its variations. However, the defendants also started using the marks NINETY-NINE and 99 on its Facebook page in July 2021. Upon learning of this, the plaintiff notified the defendants of its rights. The latter initially undertook to change the mark but subsequently backtracked on its undertaking.

Consequently, the aggrieved plaintiff filed a lawsuit alleging infringement and passing off before the High Court of Delhi. It stated that while no registration existed for the mark 91 per se, the defendants’ use of the 99 marks on identical products amounted to infringement of the plaintiff’s registered composite trademarks where ‘91’ was a dominant element.

The defendants responded by seeking to justify the use of the 99 marks on the grounds of priority of use. They contended that they were using the marks NINETY-NINE and 99 in conjunction with the words ‘only’ and ‘sachin’ and were prior users of such marks, so no injunction should be granted by the court.

In his analysis of the invoices filed by the defendants to support prior use, the judge opined that these they did not inspire confidence and do not merit acceptance. On the question of infringement, the court held that both numeral marks 91 and 99, whether used in word or numeral format, were arbitrary in respect of bicycles and bicycle accessories and entitled to protection under the Trademarks Act. Further, the use of the 99 marks without any plausible explanation – coupled with the fact that the first digit of the rival marks was ‘9’ – clearly established the defendants’ mala fide intent to ride upon the goodwill and reputation vesting in the plaintiff’s marks. Prima facie it appeared that the plaintiff had acquired goodwill in its mark within a short period from 2020.

The court also took note of the products’ nature, observing that a large number of the people who bought the bicycles may have been deceived into believing that they originated from the same manufacturer and that the marks NINETY-NINE/99 and NINETY-ONE/91 are series marks.

Principles of protection

Accordingly, the court restrained the defendants from using the 99 marks and, in doing so, laid down two principles for adjudicating such disputes.

First, where there is a clear imitation with an intent to deceive, the court must not bend backwards to presume that the intent has been unsuccessful. Additionally, where there is intent to deceive, the court must pay greater attention to the similarities between the competing marks and avoid searching for dissimilarities.

The High Court of Delhi has previously held that numeral trademarks are arbitrary in nature and are entitled to protection. In assessing whether a mark is arbitrary, courts in India have paid attention to the nature of goods and services being sold/offered under the numeral trademark and the presence of third parties using deceptively similar numeral trademarks.