The Delhi High Court provided an explanation of Section 134 of the Trade Marks Act, emphasising that it offered an additional avenue for initiating a legal case.
The provision granted Plaintiff the choice to select the appropriate forum based on their place of residence or where they conducted their gainful work. In the case of corporations, the principal office or registered office was regarded as the location where the corporation conducted its operations.
Brief Facts:
The Plaintiff company, known as the "Times Group," was widely recognized for its print media operations since 1838. In addition to its media-related businesses, the plaintiff was involved in television broadcasting and distribution through its collectively known "Times Network."
A Petition was filed before the High Court seeking a restraining order against the Defendants, refraining them from using marks “NOW”, “E NOW” and “E-NEWS NOW” or any other mark or name which is identical or deceptively similar, either singly or in conjunction with any other word or mark, to Plaintiff’s channel name/ registered mark, or/ and the Plaintiff mark’s logo style, format, font, get up or colour scheme.
On 14 May 2019, an interim injunction was granted in favour of the Plaintiff, prohibiting the defendant from launching any channel or program in India using the mark "NOW" or any other mark that resembles "NOW" in a deceptive manner. Afterwards, the Defendant filed an appeal challenging the order.
Thereafter, the Defendant sought the vacation of the injunction order.
Based on the establishment of a prima facie case, the balance of convenience, and potential irreparable injury in favour of the Plaintiff, the Plaintiff sought an injunction as a relief.
Contentions of the Petitioners:
It was argued that the lawsuit was limited to classes 38 and 41 of the trademark registrations, which pertained to "television broadcasting services" and "television-based entertainment services."
Further, the Defendant had not filed any trademark applications for "E! Now" or "E! News Now" in India. Therefore, the Defendant could not claim any rights over those marks.
Contentions of the Defendants:
It was argued that the Plaintiff had filed trademark applications for "E NOW" and similar variants in classes 38 and 41, which the Defendant opposed due to their similarity with their own E! marks.
It was also argued that the Plaintiff's filing of trademark registration certificates was insufficient to demonstrate use or prior use, which is crucial for granting interim relief.
Observations of the Court:
It was ruled that Section 134 of the Trade Marks Act, 1999 offers an additional forum for filing a lawsuit. This forum is based on the Plaintiff's residence or place of gainful work. In the case of a corporation, it refers to the principal office or registered office where the corporation operates. If the Plaintiff chooses to file the suit in a place where it has a subsidiary office but not the principal office, the cause of action or part of it should arise in that place.
Furthermore, the High Court noted that the allegations in the complaint must be considered in an application under Order VII Rule 10/11 Code of Civil Procedure, 1908 as a demurrer. For a cease and desist notice to be valid, there must be a threat of action that gives rise to the cause of action.
In this case, the Defendant's counsel issued a cease and desist notice to the Plaintiff's office in New Delhi on May 30, 2018, regarding its "E" family of marks. While the Defendant's notice did not raise any claims related to the "NOW" mark, it stated that the Defendant adopted the "E!" and other "E!" formative marks several years ago and is a 24-hour network dedicated to entertainment.
The decision of the Court:
Based on aforementioned reasoning, the Delhi High Court dismissed the petition of the plaintiff under Order XXXIX Rule 1 & 2 Code of Civil Procedure.
Case Title: Bennet, Coleman & Company Limited v E! Entertainment Television LLC.
Case No.: Commercial Civil Suit 253 of 2019
Coram: Hon'ble Ms. Justice Mukta Gupta
Advocates for Petitioner: Advs. Mr. Hemant Singh, Ms. Pragya Jain, Ms. Soumya Khandelwal
Advocates for Respondents: Advs. Ms. Shwetashree Majumdar, Mr.Prithvi Singh and Ms.Devyani Nath
Read Judgement @LatestLaws.com:
Picture Source :
