FACTS OF THE CASE

The Bennett Coleman and Co. Ltd (the Petitioner) is commonly known as The Times Group. ‘Times Now’ is a news channel operated by the plaintiff having several segments of programmes. One of such programmes, it is stated, which was launched on January 31, 2006, titled as THE NEWSHOUR pertained to discussions, panel discussions and debates on current topics. This programme has gathered a maximum number of views compared to the other channels and programmes all over the country. It is further stated that in order to popularize, the group came up with the catchy title/tagline named ‘NATION WANTS TO KNOW’.

The plaintiff applied for the registration of the mark. ARG Outlier Media Private Ltd (The Defendant) gives fund to Republic Tv (Accused of the biased reporting for the popular national party). The Republic TV was also owned by Mr Arnab Goswami. The defendants have also filed trademark applications for registration of the mark NATION WANTS TO KNOW, ARNAB GOSWAMI NEWSHOUR, GOSWAMI NEWSHOUR SUNDAY, etc… for claiming proprietary rights. The plaintiff came to know that the defendants are trying to adopt and infringe the use of their trademark/tagline/title. So, the suit has been filed under Order 39 Rules 1&2 of CPC by the plaintiff, against the defendants.

THE ISSUE

Republic News channel has filed an application for the trademark/title of the same which is being used by The Times Now channel.

ARGUMENT AND COUNTER ARGUMENTS

Submissions on behalf of the plaintiff/Times Now

(i) The Counsel for the petitioner pleaded for the registered trademark of the plaintiff ‘THE NEWSHOUR’ in Class 35, Class 38 and Class 41. He also pleaded that the NEWS HOUR formative trademarks are prima facie evidence of its validity under section 31 of the Trade Marks Act, 1999. It is also highlighted that no application can be available for the cancellation of the plaintiff’s trademark registration has been filed. Therefore, it is pleaded for an injunction from restraining the defendants from using the trademark NEWS HOUR per se or in combination with other words ought to be granted in favour of the plaintiff as the plaintiff has been using the trademark THE NEWS HOUR as the title/tagline of its shows since 2006.

(ii) It is pleaded that the plaintiff came across the trademark applications for the mark “ARNAB GOSWAMI’S NEWSHOUR”, “ARNAB GOSWAMI’S NEWSHOUR 9”, etc. in March 2017. In 20/03/2017, underclass 38 on a ‘proposed to be used basis’, the trademark applications were filed by the defendant No.3 for the aforesaid trademarks. It is also mentioned that the trademark ARNAB GOSWAMI’S NEWSHOUR contains the whole of the plaintiff’s registered trademark NEWSHOUR and that it is an established test of infringement that matter added to a registered trademark will not be able to get prevented to its infringement. Under the view of Section 28 and Section 29 of the Trade Marks Act, the trademark NEWS HOUR is reiterated and it would follow that the defendants cannot use the said trademark.

(iii) It is further pleaded that the plaintiff’s trademark/tagline NATION WANTS TO KNOW (hereinafter referred to as NWTK) is based on distinctiveness, goodwill and reputation of the plaintiff on account of its use since 2006 for goods/services in relation to the television broadcast. It is also pleaded that the defendant No.2 admits in its written statement that the NWTK mark has been acquired immense goodwill and reputation. It is also claimed that the said goodwill and reputation is fully associated with the defendant and not the plaintiff.

It is pleaded that this contention is misconceived as the Defendant No. 2 was only an anchor and his scripts will be prepared by people who are in the back of the camera. Defendant No. 2 cannot claim credit for the said mark/tagline.

(iv) It is further pleaded that as per the employment contract signed between defendant No.2 and the plaintiff all intellectual property created, developed and used by defendant No. 2 in or on the channel including in relation to such programme exclusively belongs to the plaintiff. Accordingly, all intellectual property rights, goodwill and reputation in the trademark/title/tagline in the NEWSHOUR and the NWTK belong to the plaintiff and the defendants cannot claim any right over it.

(v) It is pleaded that the defendant’s plea that the trademark/title NEWSHOUR and the tagline NWTK are generic and descriptive in nature is a misplaced plea. It is pleaded that the trademark/title/tagline has acquired a high degree of distinctiveness and secondary meaning on account of their long and continuous usage, aggressive promotion and marketing on various media and enormous goodwill and reputation acquired by the plaintiff. It is also pleaded that the tagline/trademark NWTK does not indicate the kind, quality or characteristics of the services it is used for i.e. television broadcast and therefore, it cannot be said to be descriptive.

(vi) It is further pleaded that the defendants cannot be permitted to approbate and reprobate. They are precluded from alleging that the subject marks are generic or descriptive. According to the doctrine of Res Sub Judice, the suit is barred on regarding the plea of the defendants, it has been pleaded that the previous suit CS(COMM) 370 is a suit for the breach of the contract during the employment of the plaintiff had taken away stories in the form of audio conversations/recordings without the consent and knowledge of the plaintiff and dishonestly they converted it for their own use of the channel ‘Republic TV’. It is reiterated that in the earlier suit, defendant No. 2 had made a statement that he has no intentions of violating the employment agreement. It is pleaded that defendant No. 2 has breached the said undertaking given to the court.

Submissions on behalf of the defendants

(i) The counsel for the respondent pleaded that in 17/05/2017 the previous suit CS(COMM) 370/2017 has been filed by the plaintiff and he has urged that the present suit is barred by the principles of Res Sub Judice. He also stated that the plaintiff was aware and omitted to sue/relinquished the claims of the trademark applications filed by the defendants in March 2017. Under Order II Rule 2 CPC, the absence of any leave of this court is attracted and so that the present suit is not maintainable.

(ii) It is further pleaded that the viewers/eyeballs of the news channels of both the plaintiff’s and defendants are well informed and can never confuse between the shows aired in both the news channels. It is also pleaded that THE NEWSHOUR mark comprises of generic words and is widely used by news channels and websites in India and abroad. There is nothing inherent in it. It is alleged that everybody uses the said mark NEWSHOUR. It is also pleaded that BBC also uses NEWSHOUR. Hence, there cannot be any passing off of the mark NEWSHOUR.

(iii) It is further highlighted that the defendants’ mark with the addition of prefixes or suffixes with NEWSHOUR is not absolutely similar to the alleged registered mark of the plaintiff. It is also mentioned that the plaintiff’s mark lacks distinctiveness and has been wrongly registered. It is further pleaded to use the combination of NEWSHOUR- Arnab Goswami’s Newshour, Arnab Goswami’s Newshour 9, Arnab Goswami’s Newshour 10, Arnab Goswami’s Newshour Sunday, etc.

(iv) It is further pleaded that the expression NWTK and the tagline are not registered in favour of the plaintiff. It is further mentioned that the tagline NWTK has become exclusive to defendant No.2.The tagline is an integral part of defendant No.2’s image. The said tagline was never associated with the plaintiff. It has been highlighted that if anyone was to do a search on Google, Facebook, Yahoo or Twitter, the tagline NWTK is referred only to defendant No.2. It is further mentioned that the book was written by Mr Rajdeep Sardesai also titled as “2014 The Election that changed India’ which refers to Arnab’s NWTK. It is also reiterated that the plaintiff has not filed any material to how that it has a good reputation or goodwill in related to the tagline/title.

(v) It is further pleaded that the use of the tagline by defendant No.2 was never preplanned/ scripted. It is a creative expression which is coined by the defendantNo.2. It is further mentioned that the tagline NWTK is not a trademark and only a part of his speech. Reliance is placed on Section 2(1)(z)(b) of the Trade Marks Act to state this NWTK is not a trademark.

(vi) It is further stated that after resigning from the plaintiff’s employment on 18/11/2016 by the Defendant No.2, He added that he has filed the trademark applications on wherein the usage was claimed from November 2016. It is further stated that the plaintiff has filed a trademark application only for the usage of NWTK on a proposed to be the used basis on 17/12/2016. So, It is clear that the plaintiff admits that there were no IPR which is subsisted in that tagline/title. Later on, the applications were amended by changing the date of usage to 31.01.2006 The amendment to the application seeking a change of date of the user is illegal and hit by Rule 37 of the Trade Marks Rules 2017.

(vii) It is further pleaded that none of the evidence has been found for the plaintiff for the usage of that tagline/title. So, the phrase was used only to pose questions during interviews or while presenting news. It is further stated that the tagline NWTK and the mark NEWSHOUR are not governed by the employment contract between the plaintiff and defendant No. 2. These are not trademarks to which the plaintiff has any right.

VERDICT

The Court held that it is only after evidence have been led that it can be ascertained as to whether as like whether an aforesaid trademark has been used by the plaintiff or it was merely being used as only a part of speech in the course of conducting news channel or in the course of carrying on interviews/presentations by defendant No. 2. So, these are all the aspects on which, prima facie, no view can be made at this stage based on the documents placed on record, namely, screenshots of various sites of Twitter, Facebook, etc. In view of the above,

The court partly allowed the application. An interim injunction is passed in favour of the plaintiff and against the defendants restraining them from using the trademark ‘NEWS HOUR’ or any other mark which is deceptively similar to the trademark ‘NEWS HOUR’ of the plaintiff. But at the same time, regarding the tagline NATION WANTS TO KNOW, no interim order is passed at this stage in favour of the plaintiff.

As submitted by the learned counsel for the plaintiff, defendant No. 2 is free to use the same as part of his speech/presentation of any news channel, etc. However, if the defendants choose to use the same as a trademark with respect to any of their goods/services, then, they should maintain accounts for the usage. Such accounts shall be filed in court regularly on an affidavit of one of the directors of defendant No. 3 once in every six months. Therefore, the application is disposed of with the above directions.

CASE LAWS

(A) Plaintiff

1. Kavi Raj Pandit Durga Dutt Sharma vs. N.P. Laboratories, AIR 1965 SC 980

The Court held that the question of deceptive similarity is a question of fact unless the test employed for determining it suffers from error. In the present case, it was not suggested that the Courts below had committed any error in laying down the principles on which the comparison has to be made and deceptive similarity ascertained. As there are concurrent findings of fact on this matter, we do not propose to enter into a discussion of this question de novo, since we are satisfied that the conclusion reached is not unreasonable. Lastly, it was submitted that this was a case of an honest concurrent user within section 10(2) of the Act. This point was, however, not raised in any of the Courts below and we do not propose to entertain it for the first time in this Court. The result is, the appeals are dismissed with a costs-one set of hearing fee.

2. Procter & Gamble Manufacturing (Tianjin) Co. Ltd. vs. Anchor Health & Beauty Care Pvt. Ltd., 2014 (59) PTC 421 (Del.) (DB).

The Court Adjudged that we do not feel the need to elaborately discuss the case law on the subject; each case depends on its unique facts. Moreover, the entire case law has been discussed in Stokely Van Camp, Inc. Vs. Heinz India Private Limited 171 (2010) DLT 16 which was affirmed by the Division Bench in the judgment reported as MANU/DE/3132/2010 and SLP (Civil) No.8016/2011 preferred where against was dismissed inlimine on 8th April 2011 and to which surprisingly neither counsel referred. Resultantly, the appeal is dismissed. Needless to state, nothing contained herein will influence the decision after trial.

(B) Defendants

1. Cadila Healthcare Limited v. Gujarat Co-operative Milk Marketing Federation Ltd., ILR (2010) II Delhi 85.

The court held that the interim order of the learned Single Judge at the interlocutory stage is justified and does not warrant any interference. The remedy for the grievance made by the appellant regarding the use of the expression ‘Sugar-Free’ in an inappropriate font size would be in the form of contempt petition. We were informed during the course of the hearing that a contempt petition has been filed and the same is pending before the learned Single Judge. Accordingly, the appeal and the cross-objections are dismissed with no order as to costs.

2. Living Media India Ltd. & Anr. Vs. Alpha Dealcom Pvt. Ltd. & Ors., (2016) 227 DLT 681.

The Court held that the learned Single Judge was not in error in holding that the word TODAY had not acquired such distinctiveness for the plaintiff (which was not using it as a standalone mark), to make out a prima facie strong case for grant of an ad-interim injunction. The observations made in the course of this order shall not be construed as an expression of the merits of the rival claims; the relative strengths would be gone into during the trial. For these reasons, the appeal has to fail. It is accordingly dismissed, without order on costs.

 
LEGAL RESEARCHER AND AUTHOR OF THE ARTICLE
R. TUSHARA  
Student, Chettinad Academy of Research and Education, Chennai; Chettinad School of Law Currently, pursuing my 2nd Year of BBA.LLB(Hons).

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