In the matter of Vineet Kapur v. Registrar of Trademarks[1], the Hon’ble High Court of Delhi was recently tasked with addressing the registrability of numerical trademarks under Indian trademark law. The appeal arose under Section 91 of the Trade Marks Act, 1999 (the “Act”), following the rejection by the Registrar of Trade Marks of the Appellant’s application seeking registration of the mark “2929” in Class 3. The mark covered goods such as cosmetics, shampoos, soaps, and other personal care products.

The Registrar had refused the application on the ground that the mark “2929” was devoid of any distinctive character and thus fell within the absolute grounds for refusal under Section 9 of the Act. It was contended that the mark, being a mere combination of numerals, lacked the inherent capacity to distinguish the Applicant’s goods from those of others in the market.

The Registrar had contended that the mark had not acquired any distinctiveness and that permitting its registration would amount to granting an unfair monopoly over a common numerical sequence.

This case thus brought several pertinent legal questions to the fore: whether numerical marks are capable of registration under the Act at all; under what circumstances such marks may be considered distinctive; and whether numerical trademarks can function as source identifiers in the market.

With these questions in view, the Court’s reasoning and the statutory framework surrounding the registration of numerical marks merit closer examination.

Understanding the Law

Section 2(m) of the Act defines the term “mark” as also including numerals and any combination thereof. The provision is reproduced below:

“Section 2…(m) mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;…”

It is evident from a plain reading of the provision that numerals and combinations thereof are explicitly included within the definition of a mark. However, the mere fact that something qualifies as a “mark” does not automatically entitle it to trademark protection. Under Section 2(zb) of the Act, a “trademark” must be capable of distinguishing the goods or services of one person from those of others. Therefore, while numerical marks are not excluded per se from registration, the critical test lies in their distinctiveness and their ability to serve as source identifiers.

Analysis of the Court

The Delhi High Court, in line with this legal position, affirmed that numerical marks are registrable, provided they satisfy the statutory criteria of distinctiveness under the Act.

To determine whether a mark is distinguishable, the Indian Courts have relied upon the spectrum of distinctiveness, which is outlined as follows:

To reinforce the position that numeral marks can indeed be registered, the Court drew inferences from several judicial precedents where such numerical marks had been granted protection in light of their distinctiveness. Examples include:

• ‘501’ for washing soap (Tata Oil Mills Co. Ltd. v. Reward Soap Works)
• ‘1001’ for paints (Glossy Color & Paints Pvt. Ltd. v. Mona Aggarwal)
• ‘555’ for agarbattis (Jagan Nath Prem Nath v. Bhartiya Dhoop Karyalaya)

These precedents collectively affirm that numerical trademarks can, and have, enjoyed legal protection under Indian law when they are found to be distinctive either inherently or through use.

The Court’s finding on “2929”

Turning specifically to the mark in question i.e., “2929”, the Court observed that it had no direct or indirect association with the goods for which registration was sought. It was neither descriptive nor commonly used in the trade for cosmetic and skincare products and thus was inherently distinctive. The Court further noted that the application was filed on a “proposed to be used” basis, meaning that the requirement of demonstrating acquired distinctiveness did not apply.

The Court also gave weight to the fact that the Appellant had other similar numerical marks already registered in its name, which further supported the case for registrability.

Accordingly, the Court set aside the refusal order and directed the mark to proceed to advertisement in the Trade Marks Journal. However, it clarified that the Appellant would not have exclusive rights over the individual numerals ‘2’ or ‘9’, and that third parties would still have the opportunity to oppose the registration during the post-publication phase.

 Conclusion

This decision reaffirmed the established legal position that numerical trademarks are not per se barred from registration under Indian law. However, their registrability is contingent upon their ability to serve as distinctive identifiers of the source of goods or services. As the Court rightly observed, “a combination of numbers, inherently distinctive and having no meaning or relation to the goods for which it is sought to be registered, is capable of being registered”. The distinctiveness of a mark must therefore be assessed contextually, with reference to the nature of the goods or services to which it is applied.

[1] CA (Comm, IPD-TM) 22/2024.