Entertainment Network (India) ... vs Ht Media Limited
2016 Latest Caselaw 2128 Del

*            IN THE HIGH COURT OF DELHI AT NEW DELHI

+                         CS(COMM) No. 179/2016
%                                            17th March, 2016


ENTERTAINMENT NETWORK (INDIA) LTD                          ..... Plaintiff

                          Through:       Mr.Sandeep Sethi, Sr. Adv. with
                                         Mr.Sudeep Chatterjee, Ms. Jaya
                                         Mandelia and Ms.Nupur Lamba,
                                         Advs.

                          versus

HT MEDIA LIMITED                                           ..... Respondent

                          Through:       Mr. P. Chidambaram, Sr. Adv. Mr.
                                         Amit Sibal, Sr. Adv. with Ms.
                                         Meghna Mishra, Mr. Sidharth Chopra,
                                         Mr. Nakul Sachdeva, Ms. Julien
                                         George, Mr. Naman Joshi, Mr. Ankit
                                         Rajgharhia and Mr. Tahir Ashraf
                                         Siddiqui, Advocates.

CORAM:
HON'BLE MR. JUSTICE VALMIKI J.MEHTA

To be referred to the Reporter or not?


VALMIKI J. MEHTA, J (ORAL)

IA No. 3317/2016

      Exemption is allowed, subject to just exceptions.

      The application stands disposed of.





 IA No.3318/2016 (under Section 149 CPC)

Learned Senior Counsel for the plaintiff submits that he has already

paid the court fee. Registry is directed to check the same.

The application stands disposed of.

CS(COMM) 179/2016 & IA No.3316/2016 (u/Order 39 Rule 1 & 2 CPC)

1. Plaintiff has filed this suit seeking inter alia the relief of

injunction against the defendant by pleading that plaintiff is the exclusive

owner of the trademark „Pehla Nasha‟ which is used by the plaintiff with

respect to an internet radio channel, and that consequently the defendant be

injuncted from using the trademark /trade name „Radio Nasha‟ and under

which trademark/tradename the defendant is running an FM Radio

Channel/Station.

2. As per the plaint, the plaintiff operates an internet Radio

Channel „Radio Mirchi‟ besides also using this trademark radiomirchi for the

plaintiff‟s FM Radio Station. There is a sub-channel of Radio Mirchi

internet channel which provides music and songs to its listerns, and this sub-

channel has as its trademark „Pehla Nasha‟. The case of the plaintiff is that

the word „Nasha‟ forming part of its trademark „Pehla Nasha‟ is very much

in the ownership of the larger trademark „Pehla Nasha‟ of the plaintiff, and

that defendant by cannibalizing the word „Nasha‟ from the trademark „Pehla

Nasha‟ cannot use the word „Nasha‟ in the defendant‟s FM Radio „Radio

Nasha‟.

3. This suit came up for the first time on 11.03.2016 when the

matter was adjourned for 14.03.2016 to enable the defendant to file an

affidavit inasmuch as defendant inter alia set up a defence that the plaintiff

was not the exclusive owner of the trademark „Nasha‟ forming part of

trademark „Pehla Nasha‟ inasmuch as the defendant argued that there were

other music and songs suppliers; whether they be through internet channels

or through the normal radio channels; who use the expression „Nasha‟ as part

of their trademark/trade name and which suppliers were in business were

prior to the first use by the plaintiff of „Pehla Nasha‟ in the year 2014.

Hence, the defendant argues that the plaintiff was not entitled to injunction in

view of the ratio of a Division Bench Judgment of this Court in the case of

Goenka Institute of Education & Research Vs. Anjani Kumar Goenka ILR

2009 (vi) Delhi 415 which holds that a plaintiff cannot claim exclusive

ownership of trademark where others have used the trademark prior to the

plaintiff.

4. The defendant has filed an affidavit dated 14.03.2016, setting

out as part of that affidavit at page Nos.3 to 5, various music websites and

channels existing on the internet using the word „Nasha‟, and which music

channels have used the word „Nasha‟ even prior to the adoption and user by

the plaintiff in the year 2014 of plaintiffs trademark „Pehla Nasha‟.

5. The plaintiff has filed its reply affidavit under an index dated

16.03.2016 to the affidavit filed on behalf of the defendant.

6. At the outset, I may note that issue with respect to the grant of

interim order as prayed by the plaintiff today is at a stage when pleadings are

not completed i.e the defendant has yet to file its written statement and

plaintiff its replication thereto. Also, in view of the short period of time

from when the suit was came up on 11.03.2016, parties have yet to file

various additional documents to support its respective pleas. In sum and

substance, the issue is with respect to grant or not grant of ad interim orders

till completion of pleadings by the parties and hearing and disposal of the

I.A. bearing No.3316/2016 filed by the plaintiff under Order 39 Rules 1 and

2 CPC.

7. The relevant paragraph of the judgment of the Division Bench

of this Court, relied upon by the defendant, in the case of Goenka Institute

of Education and Research Vs. Anjani Kumar Goenka and Anr. (2009)

ILR 6 Delhi 415 is para 24 (iv), and which para reads as under:

"24. xxxxxxxx

(iv) No doubt the field of operation of both the appellant and the respondents is the same, viz education, however, the issue of deceptive similarity will also have to be negated not only on account of "Goenka" being a common surname but also because of the fact that other educational institutions using the name "Goenka" either per se or with other words already existed prior to the respondents establishing the institutions in the year 1994. Furthermore the promoters of the appellant's institute do bear the surname "Goenka" and such user is thus bona fide. It has been found on record that the following institutions have been operating in different parts of India using the word "Goenka" in their trademark or trade name viz the name of the institution and which are as under:

(a) Goenka College of Commerce, Kolkatta since 1951 (P.388 of appeal)

(b) Goenka Vidya Mandir, Pilani, since 1983 (P.397 of appeal), and

(c) Goenka Sanskrit Mahavidyalaya, Banaras, since 1957 (P.403/405 of appeal)

We, therefore, prima facie find that there is merit in the contention of the appellant that various other institutions have been using the word "Goenka" as part of their trademark and trade name even prior to the use of the word "Goenka" by the respondents as part of their trade mark and, therefore, it cannot be said that "Goenka" has become distinctive or acquired a secondary meaning so far as the respondents are concerned. Therefore, neither the appellant nor the respondents can be said to be the first user or prior user for the purposes of becoming exclusive owners of the word "Goenka" to prevent others from using "Goenka". In fact, the number of institutions run by different parties may, after trial, lead to the word "Goenka" being publici juris. Publici Juris, Para 6(iii)" (underlining added)

8. On behalf of the defendant, it is argued by relying upon this

para that once there exists other music suppliers and websites who had

adopted the word „Nasha‟ with respect to their music and songs channels

even prior to user by the plaintiff from the year 2014, the plaintiff in such a

case is not the exclusive owner and user of the word „Nasha‟ forming part of

its trademark „Pehla Nasha‟ and that user by the defendant of the word

„Nasha‟ in view of ratio in the case of Goenka Institute of Education and

Research (Supra), is relatable to and be said to be adapted from the use of

word „Nasha‟ by those other music and song suppliers who have used that

word „Nasha‟ even prior to the first user by the plaintiff in the year 2014.

9. As per the affidavit filed on behalf of defendant, though there

are pleaded to exist various websites and music channels using „Nasha‟, for

the purposes of the present order it will suffice if I refer to the music

channels and the playlists which are found at serial nos.3, 4, 5 and 13 to 21

from the chart of the defendant at page nos.3 to 5 of its affidavit.

10(i) Serial No.3 pertains to a playlist which is a part of the website

8tracks.com playing songs under the name „Nepali Nasha‟. This play list of

Nepali Nasha is a collection of Nepali hit songs available on the website

8tracks.com for being heard by any consumer or listener.

(ii) Serial No.4 pertains to another playlist of the same site in the

name of „Haroon Ka Nasha‟ and which is a specific playlist created by a

person.

(iii) Serial No.4 is a website nashamusic.com playing songs of two

persons Ms. Sangeeta and Mr. Fazal.

(iv) Serial Nos.13 to 21 are playlists of different creators of songs

and music as found on the website of itunes.apple.com and which use the

word „Nasha‟ in itself and with variations.

11. Learned senior counsel for the plaintiff has sought to distinguish

the playlists of Nepali Nasha and Haroon Ka Nasha as regards the use of the

word „Nasha‟ in the same as not affecting the ownership of trademark „Pehla

Nasha‟ by arguing that the playlists of Nepali Nasha and Haroon Ka Nasha,

though enables a listener of music and songs to hear the songs and music in

the repertoire of Nepali Nasha and Haroon Ka Nasha (also called as play

lists), however, the listeners from such play lists can control the playlist by

skipping the songs by fast forwarding to a specific song or rewinding to

another song, and it is thus argued that these aspects distinguish such music

and songs channels from the music and songs channels and listeners of the

internet radio channel of the plaintiff wherein the listener cannot choose a

specific song or go to specific song, and which is similar to the position of a

normal radio station at medium wave and short wave etc. or an FM radio

channel for that matter. Similar are the arguments with respect to the

playlists having the word „Nasha‟ in various playlists found in the website of

itunes.apple.com and the website nashamusic.com.

12. In this strongly contested case where the defendant is already

working its radio channel under the trademark RADIO NASHA 107.2 FM

since 09.03.2016, grant of interim orders in the opinion of this Court would

have the effect of decreeing the suit at this stage itself without opportunity to

the defendant in the facts of the present case to contest and seek dismissal of

the suit on merits, including on the ground of prior user of the word „Nasha‟

by other websites and music channels. Whether therefore the injunction as

prayed for by the plaintiff should be granted would have to be considered

keeping this aspect in mind.

13. In my opinion, merely because a playlist is a playlist which can

be toggled as compared to a playlist of the plaintiff which cannot be toggled,

is not a valid distinction, once the issue is of the user of a trademark with

respect to a supplier of music and songs and the listeners of such music and

songs. The genre is playing and supplying of music and which is heard by

the listeners. Prima facie, at this stage it is found that at least the playlists of

Nepali Nasha and Haroon Ka Nasha in the website of 8tracks.com are

existing since the years 2012 and 2013, and of nashamusic.com since 2006,

and which websites have existed prior to adoption by the plaintiff in the year

2014 of the trademark „Pehla Nasha‟ containing the Nasha, hence, the ratio

in the case of Goenka Institute of Education and Research (Supra) would

apply preventing this Court from granting any interim order, more so having

the effect of decreeing the suit at this stage by stopping an existing working

radio station of the defendant under the trademark „Radio Nasha‟.

Though, Learned Senior Counsel for the plaintiff has argued that the

playlists and channels having variations of the word „Nasha‟ in the website

itunes.apple.com., so far as India is concerned, have come into operation

after 2014 and for which purpose the learned Senior Counsel for the plaintiff

has taken this Court through certain writings found on the site of Wikepedia,

however, it is necessary that further details and evidence are available before

this Court for this Court to rule on this aspect as documents of the site of

Wikepedia are only in the form an article. Even if I consider the article on

the site of Wikepedia yet it is seen that user by the website 8tracks.com of

Nepali Nasha and Haroon Ka Nasha of the word „Nasha‟, and also Nasha in

the website nashamusic.com prior to adaption by plaintiff in 2014, means

that the defendant could have adopted the word Nasha from these music

suppliers who had used the word „Nasha‟ in its playlists or music channels

prior to the plaintiff. The issue in this regard is of adoption of word „Nasha‟

and not the issue of the exclusive ownership of the work mark „Nasha‟ by

the website itunes.apple.com inasmuch as the present suit is not by apple

itunes.apple.com claiming exclusive ownership to the work mark „Nasha‟.

14. Learned senior counsel for the plaintiff has argued on the aspect

that itunes website was not available in India till 2016, and has placed

reliance upon the judgment of this Court in the case of Exide Industries

Limited Vs. Exide Corporation 2012 SCC OnLine Delhi 4645 to argue that

there is difference between the exclusive ownership of a trademark within

India of a person such as the plaintiff because there can be exclusive

ownership as regards Indian territory of a trademark „Nasha‟, although there

are other owners who may claim exclusive ownership of the word „Nasha‟ in

territories outside India.

In this regard it is to be however noted that the issue as of today

is with respect to whether others prior to the plaintiff have been using the

word Nasha and hence of adoption by the defendant not being relatable to

the adoption of the word „Nasha‟ by the plaintiff but adoption of Nasha from

other earlier music/song suppliers and channels, and who are not objecting to

the user of the defendant of the word „Nasha‟. Also the judgment in the case

of Exide Industries (supra) is distinguishable because it was passed at the

final arguments stage where after leading of evidence it was found and held

that the plaintiff in that case qua the territory of India had exclusive

ownership of „Exide‟, and whereas as stated above the present suit is of the

threshold stage where even pleadings are not yet complete.

15. In view of the above, the following prima facie conclusions can

be arrived at and which are without prejudice to the respective rights &

contentions which will be heard and decided at the stage of disposal of the

injunction application No.3316/2016 or the suit:-

(i). There are found to exist users of the word Nasha in music/song

channels by music/ songs suppliers prior to the user of the plaintiff of Pehla

Nasha in the year 2014 especially of 8tracks.com from the years 2012 and

2013 of the playlists Nepali Nasha and Haroon Ka Nasha and website

nashamusic.com which came into operation in the year 2006. The website

nashamusic.com list allows listeners to listen to songs for free or download

the songs on payment of consideration. Payment of consideration, however,

cannot be a ground to argue a difference being created with respect to

adoption of the word Nasha so far as websites of the music/ song music

channel or supplier is concerned. It bears reiteration that the payment to be

made to the website nashamusic.com is not for listening to a song but for

downloading of the songs and learned Senior Counsels for the defendant

have argued, and prima facie rightly, that even on the website of the plaintiff

while listening to the songs/music is free, however, if the song/music has to

be downloaded, the same has to be paid for by the customers/listeners.

(ii) Prima facie, the ratio of Goenka Institute of Education and Research

(Supra) is found to apply as it is found that there are music/song channels/

and channel/ suppliers who have used the word „Nasha‟ prior to the adoption

of the plaintiff in the year 2014.

(iii) Considering that the suit is at an initial stage when the pleadings are

not completed, it would not be appropriate in the facts of the present case to

stop an existing FM radio channel of the defendant and which would have

the effect of decreeing the suit at an interim stage and where the defendant

prima facie seems to have defences including of the plaintiff not being the

exclusive owner of Nasha inasmuch as other music/song channels and

suppliers has used the word „Nasha‟ prior to the adoption by the plaintiff in

the year 2014.

16. In view of the above, at this stage, this Court does not find that

any ad interim order should be granted and it is found necessary that

pleadings in the suit be completed before a decision is taken on the grant or

othrwise of interim orders as prayed in in I.A. No. 3316/2016.

17. Let defendant file its written statement within a period of three

weeks from today. Plaintiff will file replication within two weeks thereafter,

as prayed. Pleadings in the IA No. 3316/2016 be completed in the same

schedule. Parties will file the documents in their power and possession

alongwith their pleadings and admission/denial of such documents will be

done within two weeks thereafter by filing an affidavit attaching thereto an

index of the documents of the other side containing additional column of

endorsement of admission/denial.

18. List on 27th May, 2016 before the Joint Registrar for marking of

the exhibits to the documents.

19. List before Court on 26th July, 2016 for framing of issues and

arguments on IA No.3316/2016.

MARCH 17, 2016                                  VALMIKI J. MEHTA, J
neelam