Trademark Dispute Over 999 Vs ‘099’: High Court Rules in Favor of Kas Zainulabdin & Co
Factual Background:
Kas Zainulabdin and Co, a long-established manufacturer and marketer of textile goods such as lungis and vests, claimed trademark rights over a registered label mark 999 under Class 24. The dispute arose when Gokul Chand Manoj Kumar and Sons GM and Sons Pvt. Ltd., a former distributor of the plaintiff, sought registration for a similar mark, "099." The plaintiff alleged that the defendant's use of a deceptively similar mark would cause confusion and deception among consumers, especially given their past association.
Procedural Background:
The plaintiff filed a suit for infringement and passing off, leading to an ad interim injunction on 17th September 2024, restraining the defendant from using the impugned mark. The matter was further contested before the High Court of Calcutta’s Intellectual Property Rights Division, where the defendant challenged the plaintiff’s claim of exclusivity over numerical marks.
Provisions of Law Referred and Their Context:
Section 17 of the Trademarks Act, 1999, was a key provision in the case, with the plaintiff asserting exclusive rights over its registered label mark. The defendant countered that numerals per se are non-distinctive and cannot be monopolized, arguing that the plaintiff’s registration was for a composite label rather than the numerical element alone. The Court examined the principles of deceptive similarity and the scope of protection afforded to composite trademarks.
Judgments Referred with Complete Citation and Context
The plaintiff relied on R.R. Proteins & Agro Ltd. v. Hari Shankar Singhania (2010 SCC OnLine Cal 2014) to support the claim that a mark need not be identical but merely deceptively similar to establish infringement. Laxmikant V. Patel v. Chetanbhai Shah ((2002) 3 SCC 65) was cited to highlight that misrepresentation causing confusion is a key ground for passing off. Assam Roofing Ltd. v. JSB Cement LLP (2015 SCC OnLine Cal 6581) reinforced the position that a registered proprietor has exclusive rights to their mark unless a prior user establishes a superior claim. The defendant cited Mona Aggarwal v. Glossy Colour & Paints ((2016) 65 PTC 447 (DB)) to argue that numerical marks alone lack distinctiveness. Carlsberg India Pvt. Ltd. v. Radico Khaitan Ltd. (2011 SCC OnLine Del 5497) was also referred to assert that a registered trademark must be considered as a whole rather than isolating specific elements.
Reasoning of the Court:
The Court found that the defendant’s mark was deceptively similar to the plaintiff’s and could lead to confusion among consumers. The trade dress and overall get-up of the defendant’s product were strikingly similar to that of the plaintiff, reinforcing the likelihood of misrepresentation. The Court noted that the defendant, having prior knowledge of the plaintiff’s mark, had deliberately adopted a similar mark to capitalize on the plaintiff’s goodwill. The use of the impugned mark, in the Court’s view, amounted to dishonest adoption and unfair competition.
Decision:
The High Court upheld the ad interim injunction granted on 17th September 2024, preventing the defendant from using the disputed mark. The plaintiff’s plea was allowed, affirming their trademark rights and restraining the defendant from selling products under the impugned mark. The Court recognized the potential for consumer confusion and ruled in favor of protecting the plaintiff’s brand identity.
Case Title:Kas Zainulabdin and Co Vs. Gokul Chand Manoj Kumar and Sons
Date of Order:13th March 2025
Case Number:IP-COM/26/2024, IA NO: GA-COM/1/2024
Name of Court:High Court at Calcutta
Name of Judge:Hon’ble Justice Ravi Krishan Kapur
