Delhi High Court
Living Media India Ltd. & Anr. vs Alpha Dealcom Pvt. Ltd. & Ors. on 19 February, 2014
Author: P.K.Bhasin
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% I.A. No.21490/2012
in
CS(OS) 3350/2012
+ Date of Decision: 19th February, 2014
# LIVING MEDIA INDIA LTD. & ANR. ..... Plaintiffs
Through: Mr. Chander Lal, Mr. Sajad Sultan
& Ms. Nancy Roy, Advocates
VERSUS
$ ALPHA DEALCOM PVT. LTD. & ORS. ..... Defendants
Through: Mr. Tanmaya Dhari Sinha, Ms.
Kanika Sinha & Mr. Ankit
Bhatnagar, Advocates
CORAM:
* HON'BLE MR. JUSTICE P.K.BHASIN
ORDER
P.K.BHASIN, J:
The two plaintiff Companies, out of whom plaintiff no.2
Company is the subsidiary and sister concern of plaintiff no.1
Company, have filed this suit against the defendants for
infringement of their trade marks and passing off action.
2. The averments made by the plaintiffs in different paragraphs of
their plaint and which only are relevant for deciding this application
under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure,
1908 and in respect of which only arguments were advanced at the
time of hearing of this application are re-produced below:
"3. That the Plaintiffs together with their affiliates are one of the
major media corporations in India having enormous commercial
presence in both print and electronic media. The Plaintiffs are
engaged in diverse business activities ranging from printing and
publishing of magazines, journals, periodicals, newspapers to
broadcasting of news channels, infotainment programmes,
conferences, seminars, music shows, music albums and running an
FM radio channel and other related activities..........................................
7. That Plaintiff No.1 herein is the owner and publisher of the
immensely popular weekly news magazine "INDIA TODAY" which is
considered as the number one news magazine in India continuously
since its launch in 1975. The said News magazine is published in various
regional languages as well. Furthermore "India Today" is also published
in international edition in various countries like USA, Canada, UK, Doha
etc.
8. That in addition to the above news magazine, Plaintiff No. 1
owns and publishes a business magazine under the trade mark
"Business Today", a travel magazine under the trade mark "India
Today Travel Plus", an architecture and design magazine under
the trade mark "Design Today", and other magazines under the
trade mark "Spice Today" and "Money Today" etc.
9. That the Plaintiff No.1 also publishes daily newspaper "MAIL
TODAY" through its associate in collaboration with the prestigious
Daily Mail of the United Kingdom. The Plaintiff No.1 used to run a
daily afternoon newspaper under the trade mark "TODAY".
10. That Plaintiff No.1 also manufactures and markets music
cassettes, CDs, VCDs and DVDs under the trade mark "MUSIC
TODAY" and conducts music shows, concerts, live shows under the
said trade mark.
12. That the Plaintiff No.1 conducts and incredibly famous yearly
conference/ colloquiums/ seminar under the mark "INDIA TODAY
CONCLAVE", wherein world leaders and eminent personalities converge
and debate important and pressing issues on varied subjects.
14. That the Plaintiff No.1 under a license through the Plaintiff No.2
broadcasts immensely popular news channels namely, "AAJ TAK" (Till
Today) in Hindi and "HEADLINES TODAY" in English besides few other
media channels like "AAJ TAK TEZ" and "DILLI AAJ TAK".
15. That the Plaintiff No.1 is the registered proprietor of the trade
mark "TODAY" and its variations not only in India but also in various
foreign countries.
18. Following are the sales figures in INR for the last five years
arising out of the sale of goods/services under the trade mark
"TODAY" and its various variations for Plaintiff No.1:
S. No. Financial Year Sales (in INR)
1. 2005-06 2686471995
2. 2006-07 3015276455
3. 2007-08 3462051426
4. 2008-09 3752343409
5. 2009-10 3483415629
6. 2010-11 3757918453
7. 2011-12 3693832034
Sales figures of Plaintiff No.2 with respect to services rendered
under the trademarks Aaj Tak and Headlines Today;
S. No. Financial Year Sales (in Rupees in Crores)
1. 2004-05 138.94
2. 2005-06 157.81
3. 2006-07 184.51
4. 2007-08 226.52
5. 2008-09 238.79
6. 2009-10 260.16
22. That the Plaintiffs have been using the said mark "TODAY"
and its variants continuously since 1975 and have spent sufficient
resources in terms of money, time and creativity to promote and
publicise the said brands. It won't be out of place to mention here
that the Plaintiffs' brand has earned the status of a "Well Known
Trademark" and commands the highest level of protection
irrespective of the class they have been applied for or used in.
The goodwill accrued to the said mark extends beyond the
actual use of the mark. The wide use and publicity of the
Plaintiffs' brand and its variants has earned it an enviable
reputation and the said brand has become a household name.
That it is a matter of utmost pride that the said mark of the
Plaintiffs' "TODAY" and its variants have become distinctive of
the Plaintiffs' goods/services and business and any goods or
services branded under any similar or deceptively or confusingly
or phonetically similar marks thereto in relation to identical
goods or services and/or for goods or services which are of an
allied and cognate description or for that matter goods or
services of any kind..........................................................................
24. .......... Further the trademark "TODAY" has assumed and
acquired a secondary meaning owing to its long, continuous and
honest use by the Plaintiffs and its affiliates, and has come to be
associated with the Plaintiffs and its affiliates only.
28. Recently around late October 2012, during a routine search
of the official website of the Registrar of Trade Marks conducted
on behalf of the Plaintiff(s), it was found that the Defendant No.1
has applied for registration of the trade mark 'Nation Today' in
Class 38 allegedly claiming user in respect of broadcasting and
telecommunication services since June 23, 2010. The Defendant
No.1, as found on the official website of the Registrar of Trade
Marks, has filed 3 applications for registration of the said trade
mark which are numbered as 2243158, 2286420 and 2322140 in
Class 38.........................................................................................................
32. That the Defendant No.2 as already stated was a senior
employee of Plaintiff No.2 till 21.12.2011 and thereafter Defendant
No.2 has apparently joined Defendant No.1 as CEO and the
applications for trademark registrations for 'Nation Today' have
been filed after his appointment as CEO and he has apparently
influenced Defendants in applying and adopting the impugned
trademark 'Nation Today' as the Defendant No.2 is aware of the
tremendous brand value, reputation, popularity and goodwill
associated with 'TODAY' and its variants for Plaintiffs. Defendants
have adopted the impugned trademark dishonestly with clear
knowledge and with mala fide intention to reap upon the benefits
of established reputation and goodwill of plaintiffs trademarks,
which is more apparent with Defendant No.2 providing the
defendants insider information about the value of 'TODAY' and its
variants in the trade circles.
34. That by adopting the trade mark and intending to use
'Nation Today' as its trade mark in relation to the goods/services
for which the trade mark "TODAY" and its variations are prior
registered in the name of Plaintiff No.1 and used by the Plaintiffs
and their affiliates, the Defendant is not only infringing the
Plaintiffs' rights in and to the trade mark "TODAY" and its
variations but is also passing off its services as and for services of
the Plaintiffs and/or their affiliates/subsidiaries.
36. That the trade mark as used by the Defendant is not only
deceptively/ confusingly/ phonetically/ structurally similar to
trademark of the Plaintiffs but is also being used for absolutely
similar goods/services and clearly would convey and/or is likely to
convey to the people in trade and public in general including,
clients/ consumers of both the Plaintiffs and the Defendants (if any
exist) that there is some connection between the business of the
Plaintiffs and the Defendants, when no such connection exists
more specifically since the services/goods are absolutely similar."
3. On the basis of aforesaid averments and claims made in the
plaint the plaintiffs have sought the reliefs of permanent injunction,
damages etc. and in the application under Order XXXIX Rules 1 and 2
of the Code of Civil Procedure, which is now being disposed of by
this order, the prayer made is:-
"(i) To issue an order of temporary injunction against the
Defendants, its promoters, shareholders, directors, its agents,
servants, employees, successors, assignees, licensees etc. or any
other person claiming through or under the Defendants from
using the trade mark "Nation Today" and/or any other word /
mark deceptively/confusingly/phonetically similar to the
Plaintiff's trade mark "TODAY" as part of their trade mark, trade
name and/or domain name/email in relation to their business,
goods and/or services especially for telecasting, broadcasting or
relaying media channel, or in any manner whatsoever till the
final disposal of the Suit"
4. The defendants are jointly contesting the suit as well as this
interim injunction application. In the written statement it has been
averred by the defendants by way of preliminary objections as
under:-
"3. That the Plaintiffs have not approached this Hon'ble Court with
clean hands and do not deserve any consideration by this Hon'ble
Court. The malafides of the Plaintiffs and the vexatious nature of the
suit are evident from the conduct of the Plaintiffs. The Plaintiffs'
allegedly registered trademark in class 38 is INDIA TODAY under
application no. 1349416 dated 07/04/2005 for "telecommunications"....
It is pertinent to note herein that the mark INDIA TODAY is not being
used by the Plaintiffs for "telecommunications and broadcasting" in
class 38............................................................................................................
5.(a). The Plaintiffs have deliberately concealed the fact that first
registration for the mark "INDIA TODAY" dated 27/01/1982
under TM No. 385723 is for a device mark. Further, during
prosecution of the mark, the Plaintiffs had made voluntary
submission before the Deputy Registrar stating that they may be
granted Part B registration and agreed to disclaim "INDIA" and
"TODAY" separately (vide hearing dated 8.10.1987). The final
registration for the mark only disclaimed INDIA. The Plaintiffs
did not file, mention or reveal the above fact before this Hon'ble
Court nor made any mention of the same in the Plaint. Thus,
from the very beginning the Plaintiffs have concealed this very
relevant and material fact which amounts to an admission of the
generic and descriptive nature of the words INDIA and TODAY.
This is a vital and contributing factor indicating the malicious
nature of the proceeding and total abuse of process of law.
(b) The Plaintiffs have filed the suit in deliberate suppression of
the vital fact that they, while replying to the Examination
Report issued by the Trademark Registry in respect of their
mark 'INDIA TODAY' under application No. 1349416, inter
alia, stated that the conflicting mark 'PUNJAB TODAY' is
visually, structurally and phonetically dissimilar to their mark
'INDIA TODAY'. It is pertinent to note that the explanation
given by the Plaintiffs when the mark 'PUNJAB TODAY' was
being cited against their mark `INDIA TODAY', is an
admission of the Plaintiff that mere use of the word 'TODAY'
does not make the competing mark similar to their mark.
(c) Another instance of the Plaintiffs concealing facts and
coming with unclean hands is non-disclosure of the fact that
there are numerous third parties, apart from the Defendants,
who have adopted and are using the trade mark
TODAY/TODAY-formative marks in relation to different goods
and services including news broadcasting. Further, there are
numerous companies for which TODAY forms a conspicuous
and integral part of their trade name. Therefore, the
Defendants' adoption of the mark NATION TODAY is bona
fide.."
5. Then by way of preliminary submissions the defendants have
pleaded the following facts in their written statement: -
"2. That the word 'TODAY' is not an invented word but a common
English word having a dictionary meaning. The Concise Oxford
Dictionary, Tenth Edition defines the word 'Today' as, "on or in the
course of this present day; at the present period of time; nowadays;
this present day; the present period of time". Therefore, the word
'TODAY' is clearly descriptive for news, is generic and the Plaintiffs
cannot claim exclusivity over the same. The word "TODAY", being a
common English word, is free to be adopted and used by third persons
in relation to their goods. It is reiterated that the mark TODAY is an oft
used expression for a daily publication/news channel and the mark
TODAY is descriptive and common to trade in respect of such
goods/services. The word 'TODAY' is extensively used in India and
across the globe in respect of daily publications/ news channels.
4. That search report generated from the records of the Trade
Marks Registry for the mark 'TODAY' in class 38, revealed trademark
applications for the following third-party marks containing 'TODAY' for
news reporting/broadcast:
i. PUNJAB TODAY
ii. NEWS TODAY WITH LABEL
iii. TODAY NEWS WITH DEVICE
iv. CINEMA TODAY PVT. LTD. (Label)
v. MUMBAI TODAY TV NEWS (LABEL)
vi. TODAY.IN"
6. The relevant averments made in the plaint, which have
already been extracted, have been dealt with by the
defendants in the following manner in the written
statement: -
"15. ....................Further, in Application No. 1104577 for the mark
`TODAY' rectification has been filed. It is further pertinent to mention
herein that from the Plaintiff's own averments, most of the marks
alleged to be owned by the Plaintiff are registered under classes 9, 16,
25, 35 and 41. Further, in the entire list of its alleged trademarks given
by the Plaintiffs, only two are news channels, i.e. `AAJ TAK' and
'HEADLINES TODAY'. It is pertinent to mention herein that the
application for the mark 'HEADLINES TODAY' is still under objections
before the Trade Marks Registry. Furthermore, the list drawn out by the
Plaintiffs is irrelevant and immaterial to the issue at hand. The list
prima facie reveals that the marks indicated therein are composite
marks and are visually, structurally and phonetically different from the
mark 'NATION TODAY' of the Defendants. It is further submitted that
even if any individual has more than 50 marks registered under a single
class, all of which contain a word as descriptive to a business as
"Today" is for news business, the said individual cannot be permitted to
monopolise use of the said word for a business of which the said word
is so descriptive. Furthermore, it is submitted that an overwhelming
majority of the said marks indicated in the list are not registered under
class 38.
21-22. .............. It is denied that TODAY is a brand owned by the
Plaintiffs and that it has acquired the status of a well known trademark
and commands the highest level of protection irrespective of the class
they have been applied for and used in. It is emphatically denied that
the Plaintiff has been using the trademark 'TODAY' and its variants
continuously since 1975 and have spent sufficient resources in terms of
money, time and creativity to promote and publicise the said brands. It
is submitted that the Plaintiff has failed to file any document in support
of the alleged use of its trademark 'TODAY' since 1975 in respect of
news and other allied and cognate goods and services or otherwise as
has been falsely alleged by the Plaintiff. The alleged registration in the
Plaintiffs' name for the mark TODAY is in Class 16 for device mark and
not for the word mark TODAY per se, as falsely projected by the
Plaintiffs and that too is much later than 1975 as falsely projected by
the Plaintiffs. At any rate, there is no registration of mark 'TODAY'
under class 38. Further, the TODAY formative marks mentioned by the
Plaintiffs are combination marks and do not provide any exclusive
rights to the use of the mark TODAY. It is further pertinent to mention
herein that the mark 'INDIA TODAY' registered and alleged to be used
by the Plaintiffs in the year 1982 was a device label under class 16 and
not a word mark................. It is vehemently denied that the TODAY and
its variants have become distinctive of the Plaintiffs' goods/ services.
The Plaintiffs have failed to place any document to show the
distinctiveness that has allegedly been attained by the Plaintiffs qua
the word "Today" At any rate, the mark TODAY is descriptive in nature
for news publications and news related products and hence cannot be
claimed to be proprietary to one entity alone................ It is reiterated
that the Defendants' mark NATION TODAY is distinct and does not
cause any confusion whatsoever in the minds of the public, who in the
present case will be able to distinguish between defendants' services
from those of the Plaintiffs. It is further pertinent to mention that
numerous TODAY and TODAY formative marks are being used and exist
in the records of the Trade Marks Registry inter alia under class 16 and/
or 38. The mark TODAY is an oft used expression for a daily
publication/news channel and the mark TODAY is descriptive and
common to trade in respect of such goods/services. It is reiterated that
the word TODAY is not an invented word, it is an adopted word which is
descriptive of the business of news and current affairs and therefore
cannot be monopolised by any one entity.
26. ............... It is also pertinent to mention herein that the Plaintiffs,
while replying to the Examination Report issued by the Trademark
Registry in respect of their mark 'INDIA TODAY', inter alia, stated that
the conflicting mark 'PUNJAB TODAY' is visually, structurally and
phonetically dissimilar to their mark 'INDIA TODAY'. Therefore, the
Plaintiffs are estopped by their own submissions such that the mark
'NATION TODAY' of the Defendants could ever be confused with that of
the Plaintiffs...........................................................................................
30-31............. It is denied that the mark of the Defendants is
deceptively/ confusingly/ phonetically/ structurally similar to the
trademark of the Plaintiffs. It is vehemently denied that the mark of
the Defendants is being used for absolutely similar goods/services. It is
submitted that the Defendants in their reply dated November 16, 2012
clearly stated that the Defendants are within their statutory rights to
use the mark 'NATION TODAY' inasmuch as the same is phonetically,
visually and structurally different from the mark of the Plaintiffs which
were composite marks and were registered and being used classes
other than class 38, under which the Defendants had applied for
registration of its mark............................................................
34. .................. It is further submitted that by the Plaintiffs' own
assertions the Defendants have not launched their channel therefore,
there is no possibility of passing off and the said allegations are based
on mere conjectures and surmises and have no merit...........................
36. ........................... It is submitted that mark 'NATION TODAY' of the
Defendants has been filed for registration under Class 38 i.e.
Telecommunications, whereas the Plaintiffs' alleged mark which was
registered in 1982, was a device label and was registered under class
16, i.e. publications................... Further, 'HEADLINES TODAY' is not
registered under the class 38 and the application for registration of the
mark Headlines Today, is under objections before the Trade Marks
Registry since 2011. It is also pertinent to mention herein that the
Plaintiffs 'registered trademark 'INDIA TODAY' in class 38 is, in fact, not
a news channel but a magazine/publication. Therefore, there the
marks of the Defendants are beings used for services which is totally
different from the 'goods' i.e. publications for which the mark 'INDIA
TODAY' is being used by the Plaintiffs and therefore, there is no
question of confusion between the same................................................."
7. The plaintiffs have filed replication in which they have re-
iterated their case pleaded in the plaint while refuting the defence
pleas taken by the defendants in their written statement.
8. When the suit and the present interim stay application were
taken up for preliminary consideration on 30th November,2012
the defendants were yet to launch their TV News channel by the
name of 'NATION TODAY' and taking note of the oral submissions
made on behalf of the defendants at that time the Court had
observed that " The effect of the plea taken by the plaintiffs while
replying to the objection of the Trade Mark Registry at the time they
sought registration of the mark 'INDIA TODAY' would need to be
considered , in the light of the pleadings of the parties and the
documents which they may choose to file alongwith the pleadings."
Then further taking note of the fact that the defendants were yet to
launch their TV news channel they were restrained from launching
their news channel under the name 'NATION TODAY'.
9. During the course of arguments submissions from both sides
were confined to the already extracted portions from the plaint and
the written statement. Many judgments of the Supreme Court as
also of different Benches of this Court were also cited by the
learned counsel for the parties and those are frequently cited
judgments before the Courts whenever cases relating to
infringement of registered trade marks and passing off action come
up for adjudication. In those judgments it had been held as to what
trade marks are descriptive/generic and when descriptive/generic
trade marks can be said to acquire distinctiveness and secondary
meaning as also the effects of registration of trade marks. Those
judgments also include judgments on the law of passing off which is
too well settled..
10. From the pleadings of the parties, documents placed on record
from both sides and the oral submissions made by the learned
counsel for the parties the position which emerges is that the
defendants intend to launch a TV news channel by the name of
'NATION TODAY'. This channel was scheduled to be launched on 15th
December,2012 but as noticed already this Court had restrained the
launching of the said channel. Plaintiffs' grievance is not against the
defendants launching any TV news channel but is against the use of
the word 'TODAY' as a part of the name of their proposed channel
since it is the plaintiff no.1's trade mark having acquired
distinctiveness in relation to their goods and services and which
distinctiveness led to its registration as a stand alone mark as well as
its use as a predominant part of many other trade marks of the
plaintiffs like 'DESIGN TODAY', 'BUSINESS TODAY' 'METRO TODAY',
'MUSIC TODAY', TV TODAY NETWORK', 'MAIL TODAY' etc. Plaintiff
no.1 also claims to be having a TV news channel by the name of
'HEADLINES TODAY' under a licence to use this name from its sister
concern, plaintiff no.2. This trade mark is, however, pending
registration.
11. Plaintiff no.1 claims to have got the trade mark 'INDIA TODAY'
registered initially in the year 1982 in Class 16, though no certificate
of registration has been placed on record. During the registration
proceedings this plaintiff had agreed to accept the registration of the
said mark with a disclaimer of the words 'INDIA' and TODAY'
separately, and which disclaimers, according to the case of the
defendants, showed that both these words were descriptive and
generic. Finally, the disclaimer was restricted by the plaintiff no.1 to
the word 'INDIA' and the mark 'INDIA TODAY' was allegedly
registered with the disclaimer of the word 'INDIA' alone. However,
this background of the case leading to the registration of the mark
'INDIA TODAY' was not disclosed in the plaint by the plaintiffs and
according to the defendants this concealment being of a material
fact alone disentitles the plaintiffs to grant of any relief by this Court.
12. Mr. C.M.Lall, learned counsel for the plaintiffs had submitted
that once the trade mark 'INDIA TODAY' got registered in the year
1982, even though it was at that time for magazine being published
by the plaintiffs by the name of 'INDIA TODAY', the fact that this
background was not disclosed in the plaint loses relevance now and
similarly the defendants' objection that the mark 'TODAY' is
descriptive of the products of the plaintiffs, namely, news, and is
also generic becomes inconsequential after the registration of this
mark since registration was accorded by the Registrar of Trade
Marks, which is the only authority to be satisfied as to whether a
particular mark sought to be registered is a descriptive/generic mark
which cannot be registered and once the Registrar is satisfied about
the distinctiveness of the concerned mark and is also satisfied that
the mark is not disqualified for registration as provided under
Section 9 of the Trade Marks Act,1999('Act of 1999' in short) and
allows registration thereof that is the end of the matter and Section
28(1) of the said Act of 1999 then gives exclusivity of user to the
registered proprietor of the trade mark. Mr. Lall contended that in
the present case the plaintiff no.1 had convinced the Registrar by
producing sufficient evidence to show that the word 'TODAY' had
acquired a secondary meaning and become distinctive of the
plaintiff no.1's goods/service and that is why the mark 'INDIA
TODAY'(with the disclaimer of the word 'INDIA') and 'TODAY' were
registered and so the defendants cannot be permitted to infringe
these registered trade marks of the plaintiffs. It was further
submitted that if the plaintiffs' trade marks in question are
considered by the defendants to have been registered invalidly and
this Court also, prima facie, considers it to be so for the reason that
the mark 'TODAY' is descriptive and generic then as provided under
Section 124 of the Act of 1999 all that this Court can do is to adjourn
the matter for a period of three months to enable the defendants to
apply to the competent Authority under the said Act for rectification
of the Trade Marks Register and till that rectification is carried out
the defendants cannot use the mark 'TODAY'.
13. There is no doubt that the plaintiff no.1's trade mark 'INDIA
TODAY' is a registered trade mark but despite that registration the
intended use of the mark 'NATION TODAY' for a new TV news
channel by the defendants cannot amount to infringement of the
plaintiff no.1's mark as defined under Section 29 of the Act of 1999.
It is admitted by the plaintiffs that when the mark 'INDIA TODAY'
was sought to be registered under Class 38(telecommunications &
broadcasting) there was already an application pending for
registration of a trade mark 'PUNJAB TODAY' for TV news channel
the applicant whereof had claimed its user from early nineties. For
that reason the Trade Marks Registry had raised an objection that
already the mark 'PUNJAB TODAY' was being used for news channel
and application for its registration was pending and the plaintiff
no.1's mark was descriptive and not distinctive. Plaintiff no.1 had at
that time claimed before the Registrar of Trade Marks that the mark
'PUNJAB TODAY' had no similarity with its mark 'INDIA TODAY'. So,
learned counsel for the defendants was right in her submission that
the plaintiffs cannot now allege similarity between their mark and
that of the defendants proposed to be used and particularly when
the plaintiff no.1's mark 'INDIA TODAY' is not being used till date for
any TV news channel. Mr. Lall had submitted that even though
'INDIA TODAY' mark is not being used for TV news channel but since
the news published in the said magazine can be read through
internet on mobile phones, I-Pads etc. it can be said that this mark is
being used for telecommunications. However, having an access to
the contents of the magazine 'INDIA TODAY' through internet cannot
be compared with viewing of news on a TV channel.
14. Even otherwise in the mark 'INDIA TODAY' the word 'INDIA' is
of a very small font as compared to the word 'TODAY' while the
word 'TODAY' in the defendants' mark 'NATION TODAY' is of a much
smaller font than the word 'NATION'. Prima facie, there is no
likelihood of any viewer of TV news channel getting misled into
believing that the news channel 'NATION TODAY' is a part of 'INDIA
TODAY GROUP', as is the apprehension of the plaintiffs and
particularly when in India as well as in other countries of the world
also there are many TV news channels using the word 'TODAY' and
which factual position was not disputed on behalf of the plaintiffs
during the arguments.
15. Mr. Lall had submitted that though the plaintiff no.1 had
claimed before the Registrar of Trade Marks that there was no
similarity between the marks 'INDIA TODAY' and PUNJAB TODAY'
while seeking registration of their mark 'INDIA TODAY' under Class
38 but subsequently they had also opposed registration of the mark
'PUNJAB TODAY' and for that reason the said mark has not been
registered till date. However, in my view, the fact that the trade
mark 'PUNJAB TODAY' has not been registered so far and plaintiff
no.1's mark stands registered will not make any difference since the
fact remains that even according to the plaintiffs themselves the
mark 'PUNJAB TODAY' has no similarity with the mark 'INDIA TODAY'
and so at this interlocutory stage they cannot be permitted to
contend that there is a similarity between 'INDIA TODAY' and
'NATION TODAY'.
16. As far as the plaintiffs' case that the stand-alone word/mark
'TODAY' has acquired secondary meaning and distinctiveness, as is
normally understood in the field of trade mark disputes, is
concerned, it would be for the plaintiffs to establish the same during
the trial by adducing necessary evidence which claim of the plaintiffs
at this stage cannot be accepted because of many other parties also
already using the word 'TODAY' in relation to TV news channels and
the plaintiffs having raised no objection to those users. Learned
counsel for the plaintiffs had submitted that since there is no
evidence brought on record by the defendants regarding the extent
of the use of the word 'TODAY' by those third parties and the
plaintiffs having not felt seriously affected by those users it cannot
be said that the failure of the plaintiffs to run after each one of those
infringers entitles the defendants to infringe the plaintiffs' well
known and house-hold name for news. Learned counsel had relied
upon a Division Bench judgment of this Court in Pankaj Goel vs
Dabur India Ltd., 2008(38) PTC 49 in support of the submission that
non-initiation of legal proceedings against third party users is of no
consequence in the present case. This submission has no merit since
in the replication the plaintiffs did not claim that they had not
initiated any action against the infringements by third parties as the
use of the word 'TODAY' by them was not substantial enough to
have any impact on the plaintiffs' business. In fact, the Supreme
Court had held in National Bell Co. vs Gupta Goods Mfg. Co. (P) Ltd.
& Anr., AIR 1971 SC 898, that if a registered proprietor of a mark
ignores repeated infringements of its mark that can even be
considered as an abandonment of its mark. In the aforesaid
circumstances the adoption of the mark 'NATION TODAY' even
otherwise also cannot be said to be dishonest and is an honest
adoption which is protected under Section 30 of the Act of 1999. So,
even the judgment of the Supreme Court in T.V.Venugopal vs
Ushodaya Enterprises Limited & Ors., (2011) 4 Supreme Court
Cases 85, relied upon by the learned counsel for the plaintiffs, also
does not come to the aid of the plaintiffs as in that case the adoption
of the impugned trade mark by the defendant of that suit was found
to be dishonest, fraudulent and mala fide.
17. So, prima facie, it can be safely said at this interlocutory stage
that the plaintiff no.1 cannot claim in order to get an ad interim
injunction against the use of the name/mark 'NATION TODAY' by
the defendants that the defendants' mark 'NATION TODAY' is either
identical or deceptively similar to the mark 'INDIA TODAY' and for
that matter even to the unregistered mark 'HEADLINES TODAY' by
which name plaintiff no.1 claims to be having a TV news channel and
in respect of which channel the plaintiffs have in any case not
placed on record any proof of its popularity or revenue earnings
separately and it cannot take any advantage by pleading the
consolidated earnings from the TV channels 'Aaj Tak' and
'HEADLINES TODAY'.
18. As far as the mark 'TODAY' is concerned the same has also
admittedly never been used by the plaintiffs for
'telecommunications and broadcasting' and was registered in
Classes 16 and 35. In fact, the plaintiffs have not produced any
evidence to show that the stand-alone mark 'TODAY' has been used
at all. Similarly, the mark 'INDIA TODAY' has also not been used for
for any TV news channel ever since its registration in Class 38 in the
year 2005 which shows that the plaintiff no.1 never intended to use
this mark for the said services. So, even the balance of convenience,
which has a vital role to play in such like cases, as per the decision of
the Supreme Court in Ramdev Food Products Pvt. Ltd. vs Arvindbhai
Rambhai Patel & Ors., 2006(33) PTC 281, is also not in favour of the
plaintiffs for the grant of interim injunction to them. This application
is, therefore, liable to be dismissed not only for the relief claimed on
the basis of alleged infringement of trade marks of the plaintiffs by
the defendants but also on the basis of alleged attempt of the
defendants of passing off their yet to be launched TV news channel
as that of 'INDIA TODAY GROUP'.
19. This application is accordingly dismissed but with the
observation that it is being dismissed only on a prima facie view of
the matter and nothing observed herein above is a final expression
of opinion on the merits of the plea of both the parties.
P.K. BHASIN, J
FEBRUARY 19, 2014
