When 91=99

7 February 2023
  • Dr. Mohan Dewan

 It is trite maths that 91 cannot be equal to 99. However, in the recent trademark case before the Delhi High Court, the use of the numeral “99” as a trademark on bicycles was considered deceptively similar to the numeral “91” already being used in respect of bicycles.

A closer look at the decision reveals some interesting facts and pointers. In my opinion the plaintiff provided very clever visuals of the respective bicycles in identical surroundings. There were multiple images of the respective bicycles placed in identical configuration to show that the respective bicycles appeared the same. No specific mention was made about the identicalness of the bicycles, but visual similarity of the configuration of the two bicycles placed side by side did accentuate the similarity of the two. The similarity in the bicycles had nothing to do with the use of the mark but the side by side placement of the respective bicycles in identical configurations appears to have done the trick. It must be pointed out here that the plaintiff, the owner of the trademark “91” did not have a registration of the mark “91” per se, either as a numeral or in word form but these applications were pending. Neither was this a case of design violation; therefore, the plaintiff would have to rely on passing off.

Interim injunction was ultimately granted against the use of the trademark “99” on the 1st of February 2023.

Two further issues appear to have convinced the learned judge (the Honorable C.Hari Shankar, J); one was that during previous correspondence the defendant had agreed to discontinue the use of the trademark “99” and the second was that some of the documents submitted by the defendants in the process of registration and otherwise appeared to have been fabricated. These two facts led the Honorable Judge to opine that the defendants use of the mark “99” was done with the “intention to deceive” and still further   when the Court comes to the conclusion that there is “intent to deceive” the Court must not “bend backwards” to presume that the “intent is not successful”. At the same time, when there is “intent to deceive” the Court must not search for “dissimilarities”. These factors led the Court to come to the conclusion that the defendants were prima facie culpable of having “infringed” the plaintiff’s “91” mark and were also seeking to pass off their (defendants’) bicycles as and for the bicycles of the plaintiff, and were using the mark “99” in a manner that a customer of average intelligence and imperfect recollection would believe that the defendants’ bicycles actually belonged to the plaintiff. I am a little circumspect about  the use of the term “infringed” particularly when the plaintiff did not hold any registration of the numeral “91” or the word “ninety one” per se.

I must also advise trademark practioners who are filing evidence in respect of the use of the trademark before the Trademark Registry: Be very careful of what you use to establish use or the declaration of first use. Such evidence must be filed without any alteration or effacement, lest it is revealed during subsequent litigation and turns out to be fabricated!


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