Numeral Trademarks Can Be Inherently Distinctive and Can Be Registered Without Secondary Meaning

In a recent judgment, the Delhi High Court has significantly observed that trade marks comprising solely of numbers and number combinations can be considered inherently distinctive and do not necessarily need to acquire secondary meaning through use to be considered eligible for registration.

The judgment emanates out of an appeal against a refusal order passed by the Trade Marks Registry (“Registry”) rejecting the trade mark application for the mark ‘2929’, covering cosmetics, nail polish, shampoos, etc., in Class 3. The Registry rejected the subject application stating that the mark lacked distinctive character and was merely a combination of common numbers which could not be monopolized by any individual. On the other hand, the appellant contended that when it adopted the subject mark ‘2929’ in relation to the goods covered under the application, no similar mark existed or was known in the market, which made it unique and inherently distinctive.

Discussing the legal position, the Court noted that the definition of a “mark” under the Trade Marks Act expressly includes numbers, and as such, marks made up solely of numerals can be registered if they fulfil other requirements under the Act. The Court also discussed several prior decisions where other courts have, time and again, protected various numerical trademarks, such as the mark ‘501’ for soaps, ‘555’ for incense sticks, ‘91’ for bicycles, and so on. The Court also cited McCarthy on Trademarks with approval, which observes that numbers can very well function as a trademark, just like any other visual symbol.

Regarding the facts of the appeal, the Court observed that the mark ‘2929’ is a coined and arbitrary combination of numbers. The Court noted that, since the distinctiveness of a mark is determined only with reference to the goods for which it is applied for, and since ‘2929’ does not bear any direct or indirect reference to the goods covered under the subject application, it could be said to be inherently distinctive and capable of distinguishing the appellant’s goods from those of others. As a result, the court noted that, being inherently distinctive, the mark ‘2929’ is capable of registration even without having acquired any secondary significance.

With these observations, the Court set aside the Registry’s refusal order and directed for the subject application to be advertised in the Trade Marks Journal, with the condition that appellant shall not claim any exclusive right over the numbers ‘2’ and ‘9’.

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