Living Media India Ltd. & Anr. vs M. Hussain & Ors.
2013 Latest Caselaw 3232 Del

*      IN THE HIGH COURT OF DELHI AT NEW DELHI
9
+      CS (OS) No. 488 of 2010 & IA No. 3448 of 2010 (u/O XXXIX
       Rules 1 & 2 CPC)

       LIVING MEDIA INDIA LTD & ANR               ..... Plaintiffs
                          Through: Ms. Shilpa Singh, Advocate.

                         versus

       M. HUSSAIN & ORS                                  ..... Defendants
                                  Through: None.

       CORAM: JUSTICE S. MURALIDHAR

                         ORDER

% 26.07.2013

1. The Plaintiff No.1, Living Media India Limited, and Plaintiff No. 2,

T.V. Today Network Limited, have filed the present suit against Mr. M.

Hussain, Defendant No. 1, M/s. Aman Graphics Printers, Defendant No.

2 and Mr. Uday Kapoor, Defendant No. 3 seeking permanent injunction

restraining the Defendants from infringing the trade mark/service mark

using the word "SPEED AAJTAK" as well as for restraining the

Defendants from infringing the copyright of the Plaintiff in the artistic

representation of the words "AAJ TAK", directing transfer of the domain

name/website located at the URL www.speedaajtak.com in favour of the

Plaintiff. The further reliefs sought are for a decree for delivery up of

infringing material in the possession and/or custody of the Defendants,

damages in the sum of Rs. 20,00,200 and costs of the suit.

2. Summons in the suit and notice in the application, IA No. 3450 of

2010, under Order XXXIX Rules 1 & 2 CPC were directed to be issued

on 17th March 2010. On 25th March 2010, while granting time to the

Defendants to file written statement, the Court recorded the statement of

learned counsel for the Defendants that the logo of 'Aaj Tak' News

Channel "will not be used by the Defendants till the next date of hearing."

3. On the next date of hearing, 22nd April 2010, the Court noted that no

written statement or reply was filed. The Defendants were also not

present. Therefore, the Defendants were proceeded ex parte. The

Defendants were restrained "from using the logo 'Aaj Tak' News

Channel, or infringing the said trademark, till further orders."

4. Ms. Divisha Bopana, Assistant Manager - Legal and Secretarial and

authorized representative of the Plaintiff has filed an affidavit dated 2nd

November 2012 by way of evidence. The said affidavit has been proved

and marked as Ex.PW-1/A. The relevant documents have been exhibited

as Exhibits PW-2 to PW-12.

5. The Plaintiff has been able to prove that the Plaintiff No. 1 is the

publisher of several well-known publications including 'India Today',

'Business Today', 'Computers Today', 'Readers Digest' and is engaged

in the business of producing television news programmes since 1987.

Earlier Plaintiff was producing an English language news programme

'News Track' and commenced a Hindi news programme 'AAJ TAK' in

1995 on Doordarshan channel. Plaintiff No.1 is the proprietor and

registered owner of the trademark 'AAJ TAK' in Classes 9, 16, 38 and

41.

6. Plaintiff holds registrations of the following registered trademarks:

Registration     Date           of Trademark          Class
Number           Registration
680926           September      20, AAJ     TAK 09
                 1995               (Label)
1081233          February       18, AAJ     TAK 16
                 2002               (Label)
1242922          October        13, AAJ TAK     38

7. Plaintiff No.1 has also acquired trademark registrations in respect of

the marks 'Subah Aaj Tak', 'Kehl Aaj Tak', 'Gaon Aaj Tak', 'Mumbai

Aaj Tak', 'Cinema Aaj Tak' and 'Saptahik Aaj Tak'. Copies of the

trademark registration certificates have been exhibited as Exhibits P-2 to

P-7. The Plaintiffs have further been able to prove that they have been

continuously and uninterruptedly using the above trade/service marks

since 1995; that Plaintiff No.1 promoted a new corporate entity as its

subsidiary, Plaintiff no.2 to manage and administer the 'AAJ TAK' news

channel a 24-hour News Channel that has won several awards and

citations; the ORG survey rated it as the top news channel in the country

and that the trademark/service mark 'AAJ TAK' is an arbitrary, unique,

combination/collocation of two words in the Hindi language thereby

marking the mark a highly distinctive one.

8. The Plaintiffs have been able to prove that by virtue of a permitted user

arrangement in its favour from the Plaintiff No. 1, predecessor-in-interest

to the 'AAJ TAK' mark, the Plaintiff No. 2 became the exclusive

perpetual licensee of the trade mark/logo 'AAJ TAK' and that the trade

mark/service mark is a well-known trade mark within the meaning of

Section 2 (1) (zg) of the Trade Marks Act, 1999 ('TM Act'). The amounts

spent by the Plaintiff No. 1 on promotion of the trade mark/service mark

have been set out in the affidavit and exhibited as Ex P-8. For the

financial year 2008-09 a sum of Rs. 6753 lakhs was spent. The annual

turnover of the Plaintiff No. 1 for the financial year 2004-05 was Rs.

13907 lakhs which has increased from Rs. 1181.82 lakhs for the financial

year 2000-01.

9. The Plaintiffs have also been able to prove that the Plaintiffs' trade

mark/service mark 'AAJ TAK' is depicted in a unique, stylized, original

and artistic manner thereby making the same an original artistic work

within the meaning of Section 2 (c) of the Copyright Act, 1957. The

artistic work comprises the logo of the Plaintiffs' company and is found

on the promotional material of the company including at the top right-

hand corner of the television screen at all times the news programmes of

the Plaintiffs are broadcast. The Plaintiffs also impart news through a

website bearing the domain name 'aajtak.com' and located at the URL

(Uniform Resource Locator) www.aajtak.com. The distinctive trade mark

and logo 'AAJ TAK' of the Plaintiffs is prominently depicted on the

website along with the slogan 'Sabze Tez' which is supposed to convey

the speed at which the Plaintiffs report news. The Plaintiffs also possess

further domain name registrations, in the 'in' format, all of which involve

the Plaintiffs' trade mark/service mark 'AAJ TAK' i.e. www.aajtak.in,

www.aajtak.co.in, www.aajtak/firm.in, www.aajtak.gen.in,

www.aajtak.org.in, www.aajtak.net.in, and www.aajtak.ind.in.

10. The printouts of the website of the Defendant No. 1 located at the

URL www.speedaajtak.com reflecting the mark and logo 'Speed Aajtak'

have been exhibited as P-10. The trademark of the Plaintiffs as appearing

on their website and that of the Defendants as appearing on http://

speedaajtak.com are as under:

Plaintiff

Defendants

11. The documents exhibited by the Plaintiffs further shows that the

Defendants have been issuing fake press membership cards to persons to

make it appear that they are reporters of AAJ TAK and, therefore,

associated with the Plaintiffs. A copy of a specimen membership card

issued by the Defendants bearing the identical mark and logo AAJ TAK

of the Plaintiffs is exhibited as Exhibit P-12.

12. Ex P-11 is the document that shows that Defendant No.1 is the

registrant of the website located at the URL www.speedaajtak.com.

Defendant is a sole proprietorship concern, of which Defendant No.1 is

sole proprietor, and is engaged in booking and placing advertisements on

the above website. The Plaintiffs have, therefore, been able to

demonstrate that Defendants have with a dishonest and malafide intention

been depicting the infringing mark 'SPEED AAJ TAK'/ 'Speed Aajtak'

in a manner and style identical to that of the Plaintiffs' registered trade

mark 'AAJ TAK', thereby creating an impression that the Defendants'

product is associated with/affiliated to/or licensed by the Plaintiff. The

Defendants have slavishly imitated the Plaintiffs' registered trade mark

'AAJ TAK' and are commercially exploiting it as can be seen from the

advertisements on their website, the screen shot of which has been

exhibited as Ex P-10.

13. The Court is satisfied that the Defendants' online news service under

the mark 'Speed Aajtak' is intended to cause confusion and deception in

the minds of the consumers, who would inevitably assume a connection

with the Plaintiff. Also the sponsors of the advertisements placed on the

website of the Plaintiffs located at the URL www.aajtak.com are also

likely to become victims of the Defendants' deception as they would be

induced to place advertisements on the Defendants' website in the belief

that they are dealing with the Plaintiff. The adoption and use by the

Defendants of the identical word mark, the manner in which it is written

and depicted in the same manner and style as that of the Plaintiffs is an

instrument of fraud and deception which is causing and will continue to

cause considerable damage to the Plaintiffs' business interests in addition

to substantially damaging public interest.

14. The Court is of the view that the Plaintiffs have been able to establish

that the Defendants have infringed the registered mark of the Plaintiffs

and also that their deliberate dishonest use of the logo and service

mark/trade mark 'AAJ TAK' is likely to lead potential customers into

believing that the Defendants have some connection, association or

relation with the Plaintiffs. In the circumstances, the continued use of the

said mark by the Defendants is likely to cause irreparable harm and injury

to the Plaintiffs and diminish and tarnish the valuable goodwill in the

Plaintiffs trade mark 'AAJ TAK'. The Plaintiffs have been able to prove

that they are entitled to a decree of permanent injunction to restrain the

Defendants from infringing the Plaintiffs' trade mark and copyright under

'AAJ TAK'.

15. The Plaintiffs are also entitled to a decree for punitive damages

against the Defendants. In Time Incorporated v. Lokesh Srivastava 2005

(30) PTC 3 (Del) the Court observed as under in the context of the need

to award punitive damages against a defendant flagrantly infringing a

registered trademark with impunity:

"Coming to the claim of Rs. 5 lacs as punitive and exemplary damages for the flagrant infringement of the plaintiff's trade mark, this Court is of the considered view that a distinction has to be drawn between compensatory damages and punitive damages. The award of compensatory damages to a plaintiff is aimed at compensating him for the loss suffered by him whereas punitive damages are aimed at deterring a wrong doer and the like minded from indulging in such unlawful activities. Whenever an action has criminal propensity also the punitive damages are clearly called for so that the tendency to violate the laws and infringe the rights of others with a view to make money is curbed. The punitive damages are founded on the philosophy of corrective justice and as such, in appropriate cases these must be awarded to give a signal to the wrong doers that law does not take a breach merely as a matter between rival parties but feels concerned about those also who are not party to the list but suffer on account of the breach. In the case in hand itself, it is not only the plaintiff, who has suffered on account of the infringement of its trade mark and Magazine design but a large number of readers of the defendants' Magazine 'TIME ASIA SANSKARAN' also have suffered by purchasing the defendants' Magazines under an impression that the same are from the reputed publishing house of the plaintiff company."

16. In the present case it is seen that the Defendants have been blatantly

infringing the registered trademark and the copyright of the Plaintiffs'

mark 'AAJ TAK' and commercially exploiting the goodwill and

reputation attached to such mark. The Defendants are also involved in a

fraud by issuing press membership cards with the trademark and logo

'AAJ TAK' of the Plaintiffs and thereby cheating the general public and

authorities into thinking that the holder of such pass is in fact a journalist

associated with the Plaintiffs. Therefore apart from the need to stop such

infringement on the ground that it causes irreparable damage to the

Plaintiffs' reputation, it is also essential to do so in public interest and to

deter such a brazen infringement of the Plaintiffs' trademark.

17. For the aforementioned reasons, the suit is decreed in terms of prayers

as set out in Para 25 (a) to (e) of the plaint as under:

(i) a decree order of permanent injunction is passed restraining the

Defendants, their Directors, Partners or as the case may be,

employees, servants, agents, and/or any one claiming under or

through them, from, in any manner using the word 'SPEED

AAJTAK' and/or any other deceptive variant(s) thereof, in respect

of their online news service or any other news service thereby

amounting to infringement of Trade mark and/or passing off;

(b) a decree order of permanent injunction is passed restraining the

Defendants, their Directors, Partners, or as the case may be,

employees, servants, agents and/or any one claiming under or

through them, from reproducing the work 'SPEED AAJTAK' in

any manner amounting to infringement of the copyright of the

Plaintiff, residing in the artistic representation of the words 'AAJ

TAK';

(c) a decree is passed directing transfer of the domain

name/website located at the URL www.speedaajtak.com in favour

of the Plaintiffs;

(d) a decree is passed directing the Defendants to pay to the

Plaintiffs a sum of Rs. 10 lakhs as damages;

(e) a decree is passed against the Defendants for delivery up to the

Plaintiff of the infringing material in the possession and/or custody

of the Defendants.

18. The suit and pending application are disposed of. The suit is decreed

in the above terms together with costs of Rs. 10,000. Decree sheet be

drawn up accordingly.

S. MURALIDHAR, J.

JULY 26, 2013 Rk