The case revolves around the use of specific alpha numerals in trademarks. The court ruled that if a particular alpha numeral, used as part of a trademark, is unique to a product and has become a source identifier, the proprietor of the trademark would be entitled to protection in respect of the said alpha numerals, notwithstanding that it is not registered as a separate trademark.

The note discusses an Appeal filed by GTZ India Pvt. Ltd. (GTZ) against an injunction granted restraining them from using specific alpha numerals: “786”, “2048M”, “2048R”, “1085M”, “1085R”, “511A”, “511B”, “511C”, “511 Conditioner”, “1048M”, and “1048R”. The case was brought by Artek Surfins Chemicals Ltd. and Ors (Artek) alleging passing off by GTZ of its goods using these numerals, which they claim are unique to their products. Further, use of numerals by GTZ infringe their registered trademarks.

Artek in the suit contended:

1. Thay are a part of the Artek Group of Companies, which manufactures, sells, and supplies various chemicals for the electroplating industry.
2. They are the registered proprietor of the marks TEKNOBRITE AZ 1085R, TEKNOBRITE AZ 2048M, TEKNOBRITE AZ 1085M, TEKNOBRITE AZ 2048R, TEKNOBRITE NCZ 511A, etc.
3. The alphanumeric portion of their trademark is used to identify specific products or chemicals. They assert that alphanumeric portion has acquired a secondary meaning, recognized by their customers as identifying their chemicals or products.
4. GTZ did not comply with the requisitions in the warning letter to cease using the alpha numerals. They contended that it had conceived and adopted the “GTZ ULTRABRITE” mark for chemicals used in industries since 1985, which is also registered under Class I. They further stated that it added certain numerals and letters to the “GTZ ULTRABRITE” mark to identify different categories and varieties of products as an extension of their previously registered trademark.
5. Artek filed the suit as GTZ failed to cease using the alpha numerals.

GTZ defended the suit on the following:

1. The impugned alpha numerals are common to trade and therefore, Artek cannot acquire any exclusive right in respect of alpha numerals.
2. If a trademark contains elements common to the trade, the registration of the trademark does not grant exclusive rights to those elements that are only part of the registered trademark.
3. Both parties operate under a business-to-business (B2B) model rather than serving retail customers, thus reducing the likelihood of customer confusion over the use of the impugned alpha numerals.
4. The suit is not maintainable as Artek had combined multiple causes of action by filing a single suit for fifteen different trademarks.
5. There is delay in filing the suit.

Single Judge Ruling

The Commercial Court after considering the pleadings and arguments granted an injunction in favour of Artek. The Court held that Artek was the prior user of the disputed alpha numerals in their trademark, supported by invoices and other evidence. The Court also did not accept that the disputed alpha numerals were common in the trade, as GTZ could only provide one example (numeral 511) used by a third party, with no other instances in the relevant industry (chemicals for electroplating).

GTZ has assailed the said order by way of appeal before the DB on the following grounds:

1. Artek could not claim exclusive rights over a portion of the trademark, specifically the alpha numerals, as they were used as part of the overall trademark “TECHNOBRITE” and not stand alone.
2. Relied on the anti-dissection rule, which prevents dissecting a trademark to claim exclusive rights over individual components.
3. Artek’s assertion of using the mark for several years was inconsistent with their trademark registration applications, which were filed on a “proposed to use” basis. This shows that Artek had not been using the mark prior to 2018, and therefore, their claim of earlier use should be dismissed.

Court’s findings

1. Prior Use: The court found that Artek was prior users of the impugned alpha numerals as part of their trademarks. Further Artek has provided invoices and other materials to support their claim of prior use.
2. Secondary Meaning: The court concluded that the impugned alpha numerals had acquired a secondary meaning and were recognized by customers as identifying the Artek products.
3. Passing Off: The court found that GTZ had adopted the impugned alpha numerals to pass off its goods as those of Artek. The court noted that GTZ did not provide a reasonable explanation for adopting the same alpha numerals. Despite there being several possible combinations, the fact that GTZ had chosen the alpha numerals that are used by Artek evidence copying.
4. Anti-Dissection Rule: The court rejected GTZ’s reliance on the anti-dissection rule, stating that a prominent part of the mark that serves as a source identifier can present an exception to the rule. Artek has shown that a specific alphanumeric code within their trademark uniquely identifies their products, therefore, they are entitled to protection for that code, even if it is not separately registered as a trademark.
5. Common to Trade: The court did not accept GTZ’s contention that the impugned alpha numerals were common to trade. GTZ was unable to provide sufficient evidence to support this claim.
6. Relief Granted: The court granted Artek the relief sought, including a permanent injunction to restrain GTZ from using the impugned alpha numerals.

Comment

The decision shows that even elements within a trademark, like alphanumeric codes, can be protected if they have acquired distinctiveness and are recognized by consumers as identifying the source of the products. It further underscores the importance of safeguarding such distinctive identifiers against unauthorized use, particularly in specialized industries where product recognition is closely tied to these codes.