Cable News Network Lp, Lllp (Cnn) vs Cam News Network Limited
2008 Latest Caselaw 23 Del

JUDGMENT

G.S. Sistani, J.

I.A. No. 10600/2006

1. The plaintiff has filed the present application under Order XXXIX, Rules 1 and 2 of the Code of Civil Procedure, 1908 pursuant to a suit instituted by it alleging infringement of its registered trade mark, passing off and unfair competition. The plaintiff, vide the present application, has sought interim relief.

2. The facts, as set out in the plaint, are that the plaintiff is a leading news group engaged in disseminating world news on electronic media. It owns and runs the 'CNN International' which is a global 24-hour news television network launched in the September of 1985. The various news brands of the plaintiff include nine cable and satellite news channels of which 'CNN Cable News Network Television Channel' is stated to have pioneered the concept of 24-hour television news and 'CNN Headlines News Television Channel' is stated to update 84 million households on the day's news every 15 minutes 24 hours each day. Both CNN Cable News Network Television Channel and CNN Headlines News Television Channel are stated to provide live coverage and analysis of breaking news as wells as in-depth interviews and top stories on health, technology, weather, entertainment, environment, sports, travel and money. The website components of CNN Cable News Network Television Channel and CNN Headlines News Television Channel, namely, www.cnn.com and www.headlinenews.com respectively, provide international news via the Internet and are stated to be accessible from anywhere in the world. In addition to its cable and satellite news channels, the plaintiff's news brands include various online news networks, viz. 'CNNMoney.com', 'CNN Airport Network', 'CNN Radio' and 'CNNtoGo'. CNNMoney.com is the financial news network of the plaintiff and through its website www.cnnmoney.com is stated to deliver comprehensive business news and personal finance programmes to viewers each weekday. CNN Airport Network through its website www.cnn.com/Airport is stated to be the only satellite-delivered television service available to waiting air travellers throughout the United States. CNN RADIO Network through its website www.cnnradionet.com is stated to be a full-service network providing the latest news, sports and business information. CNNtoGo Network through its website www.cnn.com/togo is stated to deliver news and information service in the United States and Canada to cellular phones, PDAs and pagers through partnerships with wireless ISPs and equipment manufacturers.

3. It is claimed that the plaintiff, owing to its 24-hour cable and satellite television channels as well its online news networks and far-reaching collaborations with ISPs and equipment manufacturers, has become successful in providing the world's most extensively syndicated news service. As an estimate of the range of its popularity amongst viewers, it is stated that the plaintiff's goods and services reach more than 170 million households in more than 200 countries and territories through a network of 38 satellites.

4. The plaintiff claims to have forayed into the Indian market in the year 1989. It opened its New Delhi Bureau in the year 1992. Amongst the various strategic alliances of the plaintiff in India include the International Broadcast Agreement dated 20.5.1993 between CNN International Sales Limited and New Delhi Television Private Limited as well as the agreement dated 30.6.1995 between Turner International Inc. and Doordarshan. It is stated that the agreement dated 30.6.1995 earned the plaintiff the distinction of becoming the first private network provider to be allowed on an Indian satellite. It is stated that the plaintiff in collaboration with Global Broadcast News Limited has recently launched the CNN-IBN News Channel in India. It is claimed by the plaintiff that approximately 10 million households and 11,000 hotel rooms subscribe to the plaintiff's goods and services in India.

5. It is stated by the plaintiff that it has been successful in acquiring registration of its trade mark 'CNN' under the prescribed statutory laws in India. Relevant details appertaining to the registration of the plaintiff's trade mark 'CNN' in India, as per the plaint, are reproduced as under:

  Trade Mark      Regd. No.     Class     Date             Goods
CNN Stylized     564735        16     31.12.91   Printed matter, books,
                                                 program guides, program
                                                 transcripts, photographs;
                                                 stationery; instructional
                                                 and  teaching  materials
                                                 (except apparatus); play-
                                                 ing cards.
CNN Stylized     564736        09     31.12.91   Video tapes, video casse-
                                                 ttes,  motion   pictures,
                                                 video discs,  tapes  and 
                                                 cassettes for reproducing
                                                 sound and visual images,
                                                 television    and   cable
                                                 transmitting and receiving
                                                 apparatus and parts thereof;
                                                 and accessories thereof.
CNN BE THE      1149525        16     31.10.02   Printed   matter,   books,
FIRST TO KNOW                                    program   guides,  program
                                                 transcripts,   photographs;
                                                 stationery;   instructional
                                                 and    teaching    materials
                                                 (except apparatus), playing
                                                 cards, periodical publicat-
                                                 ions, posters, paper signs,
                                                 calendars, diaries, bookmarks;
                                                 printed programs relating to
                                                 television and cable television
                                                 in Class 16.
CNN BE THE      1149526         9     31.10.02   Computer software, radios,
FIRST TO KNOW                                    video and audio tapes, video
(label)                                          and audio cassettes, video and
                                                 audio discs; tapes and cassettes
                                                 for reproducing sound and video,
                                                 video and audio cds and dvds,
                                                 televisions and cable transmitting
                                                 and receiving apparatus and parts
                                                 thereof; electronic games and
                                                 accessories thereof in class 9.
 

6. It is stated by the plaintiff that it expends substantial sums of money annually on the advertising, marketing and promotion of its trade mark 'CNN' both in India and abroad. It is claimed that owing to the long and exclusive use as well as extensive marketing and promotion by the plaintiff of its trade mark 'CNN', the latter has come to enjoy an enviable reputation and goodwill in the Indian and global market.

7. The defendant, on the other hand, is engaged in the business of printing and publication of news, journals and magazines. It claims to have been publishing a monthly magazine by the name 'CAM News Network Today' since the year 2002. The defendant is stated to have invested huge sums of money in setting up its publishing business as well as in the promotion and marketing of its magazine. It is claimed that the magazine of the defendant, owing to its consistent upgradation in terms of content and presence, has attained immense popularity and a sizeable readership base in the Indian market.

8. Both parties herein have locked horns on the use of the mark 'CNN'. The plaintiff, who is stated to have been using the mark 'CNN' as a trade mark in relation to its goods and services and is also stated to be the registered proprietor thereof, is aggrieved by the use of the said mark on the cover of the defendant's magazine 'CAM News Network Today'. It is alleged by the plaintiff that while the use of its registered trade mark 'CNN' in itself constitutes infringement, the manner in which the said mark has been depicted by the defendant on the cover of its magazine amounts to passing off. The defendant, however, has vehemently maintained that the mark 'CNN' connotes nothing more than an abbreviated form of 'CAM News Network Today' and has been used in conjunction thereto to impart a unique and distinctive style to its magazine.

9. The case of the plaintiff, as set up by Mr. C.M. Lall, learned Counsel for the plaintiff, is outlined as under:

1. Firstly, the plaintiff, being the registered proprietor of its trade mark 'CNN', enjoys the exclusive right to use the said trade mark in relation to its goods and services.

2. Secondly, the plaintiff, and not the defendant, is the prior user of the mark 'CNN' with respect to its goods and services, both in the Indian as well as international market.

3. Thirdly, the mark 'CNN', owing to its long, extensive and exclusive use as well as its rigorous marketing and promotion by the plaintiff, both in India and abroad, has come to be distinctively associated with the latter's goods and services.

4. Fourthly, the defendant, by predominantly displaying the mark 'CNN' on the cover of its magazine, has dishonestly tried to ride upon the reputation and goodwill that the plaintiff commands as a leading news group both in the Indian as well as international market.

5. Fifthly, the predominant display of the mark 'CNN' on the cover of the defendant's magazine, besides being prejudicial to the interests of the plaintiff, is deceptive and likely to create confusion amongst traders and the general public who are likely to assume that the defendant's services are sponsored, licensed, authorised by or are in any other manner affiliated with the goods and services of the plaintiff.

6. Lastly, the use of the mark 'CNN' by the defendant, if not stopped, is likely to dilute the distinctiveness which the said mark enjoys in relation to the plaintiff's goods and services and thereby debase and erode the latter's goodwill and reputation in the Indian as well as international market.

10. Per contra, Mr. A.S. Chandhiok, learned senior counsel for the defendant, has resisted the aforementioned contentions of the plaintiff by putting up the following defense:

1. Firstly, the plaintiff, despite being the registered proprietor and prior user of the mark 'CNN', cannot claim exclusivity in respect thereof.

2. Secondly, the defendant has used the mark 'CNN' on the cover its magazine not as its trade mark but merely as an abbreviation of its name 'CAM News Network Today'.

3. Thirdly, the form and manner in which the mark 'CNN' is used in conjunction with the name of the defendant's magazine 'CAM News Network Today' is essentially a design concept especially adopted in order to create an identity which is unique and distinct and with which the readers can immediately associate with.

4. Fourthly, the plaintiff came to know about the defendant's magazine in the year 2003. However, no action was taken at that time by the plaintiff to restrain the defendant from publishing the magazine. The present action for infringement of trade mark and passing off, being vitiated by delay and latches, is thus unsustainable.

5. Fifthly, acquiescence is also attributable to the plaintiff who has deliberately and knowingly allowed the defendant to invest time, money and labour in building a sizeable readership base for its magazine.

6. Lastly, the mark 'CNN', when used in conjunction with the name 'CAM News Network Today', has come to be distinctively associated with the defendant's magazine. It would thus be prejudicial to the business of the defendant if it is restrained from using the mark 'CNN' in relation to its magazine.

11. The counter-submissions of the plaintiff, in response to the defense put up by the defendant, are enunciated as under:

1. Firstly, the defendant does not have the requisite statutory permit or license to publish its magazine by the name 'CNN : CAM News Network Today'.

2. Secondly, as per the prevalent judicial dicta, mere delay is not sufficient to defeat the grant of injunction in an action for infringement of trade mark and passing off.

3. Thirdly, the plaintiff came to know about the defendant's magazine during the end of the year 2003. However, it did not immediately initiate any action against the defendant as at that time the publication of the latter's magazine was irregular and sporadic.

4. Fourthly, there has been no inordinate delay on the part of the plaintiff as it immediately initiated action against the defendant on becoming aware that the latter was publishing its magazine regularly.

5. Fifthly, there has been no acquiescence on the part of the plaintiff as it did not take any positive steps towards encouraging the defendant in publishing its magazine.

5. Lastly, the defense of delay, latches and acquiescence put forth by the defendant is unsustainable inasmuch as it has failed to establish itself as an honest and concurrent user of the plaintiff's registered trade mark 'CNN'.

12. I have heard both parties at length and given my thoughtful consideration to the matter.

13. Although proprietary rights in names have been in existence since the days of common law, it is only with the advent of the capitalist-consumerist culture that their importance has been recognised. The most common form of proprietary rights in names are those which are vested in trade marks. A trade mark is much more than a just name or symbol of identity that a trader adopts in relation to his goods and services; it is the repository of his business' hard-earned goodwill and reputation in the market. A huge amount of business capital is invested in the promotion and marketing of trade marks which have presently come to be identified with a myriad of roles ' from creating brands out of goods and services to defining the market trend, from endorsing business ideologies to even espousing social causes However, this is just one side of the picture. The huge stakes involved in trade marks has made them susceptible to economic vices such as infringement and passing off thereby opening floodgates of litigation.

14. Coming back to the present application, the plaintiff herein has sought interlocutory relief in an action brought by it for infringement of trade mark and passing off. Before embarking on analysing the rival contentions of both parties on the touchstone of the settled position of law qua infringement of trademarks and passing off, it would be worthwhile for this Court to shed some light on the general principles underlying the grant interlocutory relief.

15. It is trite that interlocutory proceedings, in a matter pending adjudication, are conducted with a definite purpose, which purpose is different and distinct from the one when the matter is finally decided upon merits. The role of the Court, at this stage of litigation, is not to resolve or reconcile the conflicting issues as to facts and evidence on which the claims of either party may ultimately depend. Nor is the Court, at this stage, inclined at deciding upon technical questions of law which call for detailed arguments and thorough examination of evidence brought on record. Rather, the Court, while affording interlocutory relief, is guided and driven by considerations which are altogether different from those which influence the eventual adjudication of the matter on merits. As evidence is yet to be led in interlocutory proceedings, the Court has to consciously restrain itself from coming out with any absolute findings and observations which may prejudice the rights and interests of either party when the matter is ultimately decided upon merits. In doing so, the Court has to ensure that it balances the rights of the plaintiff with those of the defendant and provides such relief which may not be conclusive, nevertheless, is equitable in the peculiar facts and circumstances of the matter.

16. The principles underlying the grant of interlocutory relief are no longer res integra. The following imapactful observations made by the Apex Court in Wander Ltd. and Anr. v. Antox India Pvt. Ltd. reported at 1990 (Suppl.) SCC 727, have become a guiding light for Courts of law whilst deciding upon the relief to be afforded at an interlocutory stage when evidence is yet to be led: 'The object of an interlocutory injunction is to protect the plaintiff against injury by violation of his rights for which he could not be adequately compensated in damages recoverable in the action if the uncertainty were resolved in his favor at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The Court must weigh one need against the, and determine where the 'balance of convenience' lies.

17. Christopher Wadlow in his classical treatise 'The Law of Passing-Off' has succinctly extrapolated the principles determing the grant of interlocutory relief in an action for passing off as under:

(1) Applications for interlocutory injunctions should be decided primarily on the balance of convenience, in the wider sense of that phrase, rather than on the relative strength of the parties substantive cases as they may then appear;

(2) There is no rule of law that the court may consider the balance of convenience only if satisfied that the plaintiff has made out a prima facie case;

(3) The court must, however, satisfy itself that there is a serious question to be tried;

(4) An interlocutory injunction should be refused if damages awarded at trial would adequately compensate the plaintiff and the defendant will be able to pay;

(5) But should be granted if the plaintiff's cross-undertaking in damages would adequately compensate the defendant if successful at trial, and the plaintiff would be able to pay;

(6) If, as will normally be the case, damages would not fully compensate either party, then the issue depends of (sic.) the balance of convenience;

(7) If other factors are finely balanced, the status quo should be maintained;

(8) If the balance of convenience favors neither party, then the relative strengths of the parties' respective cases on the merits may be taken into account if one case is disproportionately stronger.

18. In view of the principles underlying the grant of interlocutory relief, there are three important questions that this Court needs to ascertain in order to dispose the present application, namely:

1. Whether the plaintiff has a prima facie case in his favor

2. Whether the balance of convenience lies in favor of the plaintiff

3. Whether the plaintiff will suffer irreparable injury if the interim injunction is refused

19. Learned Counsel for the plaintiff has strenuously argued that he has a strong prima facie case in his favor in view of the fact that the plaintiff, being the registered proprietor of the impugned mark 'CNN', enjoys statutory protection to use the said mark exclusively in relation to its goods and services. It is argued that that the adoption of the mark 'CNN' or any other mark in which 'CNN' is a part by the defendant constitutes infringement thereby entitling the plaintiff to the relief of injunction. Learned Counsel for the petitioner has buttressed his submissions by relying upon Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceuticals Laboratories 2, relevant portions whereof are reproduced thus:

28. ...In an action for infringement, the plaintiff must, no doubt, make out that use of the defendant's mark is likely to deceive, but were the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the make would be immaterial

20. Learned Counsel for the defendant has countered the aforesaid submissions of the plaintiff submitting that by acquiring registration in respect of the mark 'CNN', the plaintiff cannot assume monopoly in respect thereof. It is submitted that all the three words constituting the name of the plaintiff, that is, 'Cable', 'News' and 'Network' are generic and descriptive words which have all along been used by a number of entities as part of their trade name and trade mark. Coupled with this, the unexplained delay on the part of the plaintiff in instituting the action for infringement and passing off disentitles the plaintiff to interim relief. It is further argued that acquiescence is also attributable to the plaintiff who has allowed the defendant expand its publication business.

21. Before proceeding towards analyzing the counter-submissions of the defendant at length, let me interrupt here to state that the first leg of the defendant's contentions that the words 'Cable', 'News' and 'Network' are generic and thus cannot be monopolized by the plaintiff ex facie appears to be borne out of context. The subject-matter of the present action instituted for infringement of trade mark and passing off is with respect to the use of the mark 'CNN' by the defendant on the cover of its magazine 'CAM News Network Today'. Learned Counsel for the plaintiff, as a matter of fact, has explicitly stated that the plaintiff has no objection with the defendant using the words 'News', 'Network' and 'Today' as part of the latter's trade name. It is submitted that the only objection which the plaintiff has is with respect to the use of the mark 'CNN' on the cover of the defendant's magazine. The contention of the defendant that the words 'Cable', 'News' and 'Network' are generic and thus cannot be monopolized is uncalled for and liable to be rejected.

22. However, it is the second leg of the defendant's submissions pertaining to delay, latches and acquiescence that calls for consideration. As the trite philosophy goes, 'equity aids the vigilant, not those who slumber on their rights', it is but obvious that the Courts, while exercising their equitable jurisdiction in deciding upon interlocutory applications, cannot afford to ignore the defense of delay, latches acquiescence as put up by the defendant.

23. Before adverting to the rival contentions of both parties on the aspect of delay, latches and acquiescence, it has first to be considered as to that is the meaning which has been ascribed to the expressions 'delay', 'latches' and 'acquiescence'.

24. Inordinate delay is generally understood to be delay of such a long duration that the defendant could have come to the conclusion that the plaintiff has, possibly, abandoned his right to seek relief or to object to the defendant using the trade mark. However, 'inordinate delay' is not analogous to 'latches' and the two ought not to be used interchangeably. 'Mere passage of time cannot constitute latches, but if the passage of time can be shown to have lulled defendant into a false sense of security, and the defendant acts in reliance thereon, laches may, in the discretion of the trial court, be found'.3 It would follow, logically, that delay by itself is not a sufficient defense to an action for interim injunction, but delay coupled with prejudice caused to the defendant would amount to latches.

25. 'Inordinate delay' and 'latches', however, are not similar to 'acquiescence'. The distinction between 'inordinate delay', 'latches' and 'acquiescence', has been succinctly underlined in the classical Kerly on Trade Marks as follows:

The classic case of acquiescence proper is where the proprietor, knowing of his rights and knowing that the infringer is ignorant of them, does something to encourage the infringer's misapprehension, with the result that the infringer acts upon his mistaken belief and so worsens his position. It seems clear that something less than that is needed to offer a defense, but how much less is not clear. The current tendency is to hold that a defense of acquiescence or latches may be set up whenever it is unconscionable for the plaintiff to deny anything that he (consciously or unconsciously) has allowed or encouraged the defendant to believe. Mere failure to sue, without some positive act of encouragement, is not in general enough to give a defense. A defendant who infringes knowing of the plaintiff's mark can hardly complain if he is not later sued upon it, nor is a defendant who starts to infringe without searching the Register of Trade Marks is any better position that if he had searched and so learned of the plaintiff's mark. Acts of the proprietor done in ignorance of the infringement, or even done without his own registration in mind, will not amount to acquiescence. A defense of estoppel by acquiescence is to be distinguished from a defense that by delay the mark has become publici juris.

26. It is trite that the onus is on the defendant to show that there has been prejudice caused by reason of the delay and that it would be unfair to restrain the latter from carrying out its activities. Learned Counsel for the defendant has vehemently argued that the present action, besides being malicious, misconceived and not tenable in law, is actuated by delay, latches and acquiescence, as a result of which no relief, interim or final, can be granted to the plaintiff. Relying upon the cases of Amritdhara Pharmacy v. Satya Deo Gupta 5, Veerumal Praveen Kumar v. Needle Industries (India Ltd.) and Anr.6, Smt. Premwati Bansal v. Ganpati International7, Atlas Cycles Haryana Ltd. v. Atlas Products Pvt. Ltd.8 and Creative Travels (P) Ltd. v. Creative Tours and Travels (P) Ltd.9, learned Counsel has argued that inordinate delay in bringing an action can be used in defense by the defendant to plead implied consent. It is submitted that there exists no prima facie case for interim injunction in the present case as the plaintiff has sought the said relief after the lapse of five years and use of the mark 'CNN' by the defendant. It is submitted that the defendant has spent large amounts towards acquiring office place, on advertisement and promotion as result whereof the circulation of its magazine has escalated from 20,000 copies in the year 2003 to 80,000 copies per year now.

27. Learned Counsel for the plaintiff, on the other hand, has fervently argued that the defense of delay, latches and acquiescence is unsustainable inasmuch as the conduct of the defendant in adopting the mark 'CNN' is rooted in dishonesty and mala fide. In support of his plea, learned Counsel has drawn the attention of this Court to the fact that the defendant had only obtained permission from the Registrar of Newspapers for India (Ministry of Information and Broadcasting) to publish its magazine by the name of 'CAM News Network Today'. However, the defendant has used the name 'CNN : CAM News Network Today' with CNN written in bold and in a font size which is much larger than the rest of the title. It is submitted that the dishonesty on the part of the defendant further comes to the fore from the fact the defendant has been using the e-mail ID [email protected] as its e-mail ID on the magazine. It is further submitted that the defendant has dishonestly copied the word 'Today' from the India Today Group and the red border/design from the Times Magazine.

28. Learned Counsel for the plaintiff has thus argued that inasmuch as the defendant has acted fraudulently and with the knowledge that he is violating the plaintiff' rights, the relief of injunction cannot be denied in the present application. It is submitted that the defense of delay and latches is a defense in equity and an equitable defense cannot be put up by a party whose conduct is vitiated by fraud and dishonesty. Learned Counsel for the plaintiff has relied upon Hindustan Pencils Pvt. Ltd. v. India Stationary Products Co. and Anr.10 to canvas the point that '[A] person who is guilty of violating the law or infringing or usurping somebody else's right cannot claim the continued misuse of the usurped right'.'11 Emphasis has also been placed on the observations at para 32 of the said case, which are reproduced thus: '(32) It would appear to me that where there is an honest concurrent user by the defendant then inordinate delay or laches may defeat the claim of damages or rendition of accounts but the relief of injunction should not be refused. This is so because it is the, interest of the general public, which is the third party in such cases, which has to be kept in mind. In the case of inordinate delay of latches, as distinguished from the case of an acquiescence, the main prejudice which may be caused to the defendant is that by reason of the plaintiff not acting at an earlier point of time the defendant 'has been able to establish his business by using the infringing mark. Inordinate delay or latches may be there because the plaintiff may not be aware of the infringement by the defendant or the plaintiff may consider such infringement by the defendant as not being serious enough to hurt the plaintiff's business. Nevertheless, if the Court comes to the conclusion that prejudice is likely to be caused to the general public who may be misled into buying the goods manufactured by the defendant thinking them to be the goods of the plaintiff then an injunction must be issued. The Court may, in appropriate cases, allow some time to the defendants to sell off their existing stock but an injunction should not be denied.'

29. In the same vein, reliance has also been placed on Midas Hygeine Industries (P) Ltd. v. Sudhir Bhatia12, wherein the Apex Court has unequivocally opined that the mere delay in bringing action is not sufficient to defeat the grant of injunction in trade mark infringement cases when the adoption of the trade mark itself is prima facie dishonest.

30. It is further contended by learned Counsel for the plaintiff that the use of the mark 'CNN' by the defendant is likely to cause confusion and deception. It is submitted that the mark 'CNN' is reasonably understood to refer to the plaintiff's news services. Resultantly, the magazine of the defendant may be thought by the general public to somehow be connected or affiliated with the plaintiff's news services. It is submitted that members of the trade are likely to associate the goods and business of the defendant with the registered trade mark of the plaintiff thereby eroding the distinctiveness which the said trade mark has come to enjoy in relation to the plaintiff's goods and services.

31. Learned Counsel for the defendant, however, has vehemently argued that the assertions made by the plaintiff are absolutely unfair and that a bare perusal of the magazine cover would establish that there is no cause of action for filing the present suit as admittedly the name of the defendant's magazine is 'CAM News Network Today', which, when written in abbreviated form reads as CNN. It is further submitted that the abbreviation CNN is never used in isolation and the name of the magazine is 'CNN : CAM News Network Today'. It is adduced by learned Counsel for the defendant that the mark 'CNN' has been used in conjunction with 'CAM News Network Today' as a design concept only to create an identity which is individual, unique and distinct and with which the readers can immediately associate with and/or identify with.

32. The explanation proffered by the defendant for use of the mark 'CNN' on the cover of its magazine 'CAM News Network Today' does not impress me. The cases of Amritdhara Pharmacy v. Satya Deo Gupta13, Veerumal Praveen Kumar v. Needle Industries (India Ltd.) and Anr.14, Smt. Premwati Bansal v. Ganpati International15, Atlas Cycles Haryana Ltd. v. Atlas Products Pvt. Ltd.16 and Creative Travels (P) Ltd. v. Creative Tours and Travels (P) Ltd.17, being distinguishable on facts from the present case, also do no not come to the rescue of the defendant. While I do not consider it necessary to delve upon these cases cited by the defendant in extenso, suffice for me to state that in all these cases, interim injunction was refused by the Court not only on grounds of delay, latches and acquiescence but also because the Court, after prima facie examination of evidence on record, found the defendant to have established himself as an honest and concurrent user of the impugned mark.

33. Let me clarify here that the defense of delay and latches simpliciter is not sufficient to bar the relief of injunction in an action for infringement of trade marks and passing off. For the defense of delay, latches, and for that matter, even acquiescence to hold good, the defendant is enjoined with a reciprocal duty to establish itself as an honest and concurrent user of the impugned trade mark. In an action for infringement of trade mark and passing off, the defense of delay, latches and acquiescence ought to used only for sustaining the business of an honest defendant, and not for exonerating any mala fide or dishonest conduct on his part. It has now become an inherited wisdom for us that equity aids those who come to the Court with clean hands. Thus, notwithstanding the defense of delay, latches and acquiescence, when the conduct of the defendant ab initio defies honest and bona fide use, this Court is under no obligation to deny relief to the plaintiff.

34. The defendant herein, I am afraid, has failed to establish itself as an honest and concurrent user of the plaintiff's registered trade mark 'CNN'. First and foremost, it is incontrovertible that the plaintiff, being the registered proprietor of its trade mark 'CNN', enjoys the statutory right to use the said trade mark to the exclusion of others. Further, the facts and documents brought on record prima facie establish that the trade mark 'CNN', owing to extensive use, promotion and marketing, has come to be distinctively associated with the latter's good and services. Moreover, the plaintiff has been in the Indian and global market much prior to the defendant and enjoys and an enviable reputation and goodwill in relation to its goods and services. It is unlikely that the defendant was not aware of the plaintiff's presence in the market at the time of launching of its magazine 'CAM News Network Today. The explanation adduced by the defendant that it has used the mark 'CNN' only as an abbreviation of its magazine's name 'CAM News Network Today' is factually flawed and does not seem to hold much water. If at all the defendant was intending to use 'CNN' to connote the abbreviated form of 'CAM News Network Today', it should have used the mark 'CNNT' and not 'CNN'. Even otherwise, it is not the intent of the defendant behind using the mark 'CNN', but the impact of such use that that this Court must look into whilst deciding an action for infringement of trade mark and passing off. The conspicuous manner in which the defendant has used the mark 'CNN' on the cover of its magazine prima facie gives an impression that the defendant is dishonestly trying to pass off its goods as that of the plaintiff.

35. Further, the plea taken by the defendant that it has always used the mark 'CNN' in conjunction with the name 'CAM News Network Today', in fact, runs counters to its own case. Firstly, the expression 'CNN : CAM News Network Today' creates an impression that the name of the defendant's magazine is 'CNN :CAM News Network Today', whereas the defendant has the statutory permit to use only 'CAM News Network Today'. Secondly, inasmuch both the plaintiff and the defendant are engaged in the marketing of news, the former into broadcasting and the latter into publication, there is enough room for confusion amongst traders and the general public who are likely to believe that the defendant's services are sponsored, licensed, authorised by or are in any other manner affiliated with the goods and services of the plaintiff.

36. In view thereof, inasmuch as the defendant has failed to adduce any convincing and plausible explanation as to why it has used the plaintiff's registered trade mark 'CNN', the defense of delay and latches is of no avail to it . Apropos of its plea for acquiescence, there is nothing on record to show that there has been a tacit or express assent by the plaintiff or that the latter has taken any positive steps in encouraging the defendant in using the mark 'CNN' on the cover of its magazine. A prima facie case thus exists in favor of the plaintiff.

37. It is also noteworthy that the plaintiff has explicitly stated that it has no objection to the Defendant using 'Cam News Network Today' in respect of its magazine. Its only objection is with respect to use of its mark 'CNN' on the cover of the latter's market. Going by the defendant's own admission that it has used the mark 'CNN' only as an abbreviation, I am of the view that the latter can still carry on the publication of its magazine without using the mark 'CNN' on it. Further, the mark 'CNN' has come to be distinctively associated with plaintiff's goods and services, whereas the defendant has only recently started its publication business. Irreparable harm and injury will be done to the plaintiff if the defendant is not restrained from using the mark 'CNN'. While the plaintiff's goodwill and reputation is inextricably associated with its trade mark 'CNN', no harm will be done to the publishing business of the defendant if the latter is restrained from using the mark 'CNN'. The balance of convenience is thus tipped in favor of the plaintiff thereby entitling him to the relief prayed for.

38. For the reasons aforesaid, the present application is allowed. The defendant is consequently restrained from printing, publishing, selling, marketing, advertising any magazine or providing news services in any format whatsoever under the plaintiff's trade mark 'CNN'. It must also be clarified that the observations made at this stage are only a prima facie view of this Court and shall have no bearing on the subsequent adjudication of this case on merits.