Delhi High Court
Cable News Network Inc vs Mr Fayyaz Shaikh & Anr. on 19 May, 2022
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:20.05.2022
17:37:48
$~8
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision: 19th May, 2022
+ CS (COMM) 135/2021 & I.A.4459/2021
CABLE NEWS NETWORK INC ..... Plaintiff
Through: Mr. Pravin Anand, Mr. Dhruv Anand,
Ms. Udita M. Patro, Advocates
(M:9313399860)
versus
MR FAYYAZ SHAIKH & ANR. ..... Defendants
Through: None.
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J.(Oral)
1.
This hearing has been done through hybrid mode.
2. The present suit has been filed by the Plaintiff - Cable News Network,
Inc. which is a company based in USA, involved in the
broadcasting/production of an English news channel under the name/mark
' / CNN'. The case of the Plaintiff is that the said news channel
'CNN' was launched in September, 1985. Since the year 1989, the news
channel 'CNN' has been available for viewers in India as well. The first
New Delhi Bureau of 'CNN' was opened in the year 1992 and in June,
1993, a strategic relationship was entered into between 'CNN' International
and New Delhi Television Pvt. Ltd. (NDTV). As per the plaint, the
Plaintiff's television channel 'CNN' was the first private television channel
which was allowed to be broadcasted on an Indian Satellite. Further, the
mark 'CNN' has been protected by the Plaintiff by filing various
proceedings. One such proceeding is CS (COMM) 924/2016 titled Cable
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News Network, Inc. v. Anshu Jain (Anim Desire Private Limited).
3. The Plaintiffs have several trademark registrations in India for the
mark 'CNN', since the year 1999, in several Classes, namely, 9, 16, 35, 38,
41, 42, and 43. Various other variants and formative marks of the mark
'CNN' have also been registered by the Plaintiff, such as 'CNN IBN', 'CNN
IBN 7', 'CNN NEWS 18', 'CNN CAFÉ', 'CNN GO', etc. The earliest mark
dates back to 1999. A complete list of registrations has been set out in
Paragraph 16 of the Plaint.
4. It is the case of the Plaintiff that, sometime in March, 2021, the
Plaintiff came to know that the Defendant No.1 - Mr. Fayyaz Shaikh started
running a news channel running under the name 'CNN News Khabar Update
Marathi'. Defendant No.2 - Mr. Azhar Hussain, was shown as the Editor in
Chief of the said channel. They were also using the network named 'CNN
City News Network, Darwha, Yavatmal, Maharashtra-445202. The Plaintiff
came across the use of the mark 'CNN' in the following manner, by the
Defendants:
5. The Defendants were also running YouTube Channels and were
promoting the mark 'CNN' on their Twitter account, Instagram posts, blogs,
etc. The depiction of the mark 'CNN' on the YouTube Channels of the
Defendants is set out below:
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6. Accordingly, in view of the identical use of the mark 'CNN' by the
Defendants for an identical service i.e., news service on the internet, the
present suit was filed by the Plaintiff. As per the Plaintiff, the use of the
mark 'CNN' constitutes infringement of its registered trademarks, passing
off, etc. It is also alleged that the said use would constitute
misrepresentation, impersonation, dilution and tarnishment.
7. The present suit was listed for the first time before the Court on 24th
March, 2021, on which date, an ex parte ad interim injunction was granted,
in the following terms:
"Accordingly, till the next date of hearing the
defendants, its directors, partners, employees,
officers, servants, agents, subsidiaries, distributors,
and all others acting for and on their behalf are
restrained from using as a trading name or
rendering any services, communicating or making
available or publishing or printing or disseminating
or distributing, or duplicating, or sharing or
displaying, or releasing, or showing, or uploading,
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or downloading, or exhibiting, or playing, and/or
defraying any content, news, information under the
mark CNN, CNN NEWS or any other mark, name,
logo, monogram or label including the impugned
trademarks
in any medium especially Cable TV, DTH, Internet
services, MMS, Tapes, Conditional Access System or
in any other like manner including social media
websites and mobile applications on any
communication devices. It is further directed that the
defendants shall remove all the videos and/or
content/ information published and/or uploaded on
the Internet on any link including the following
links;
a. http://twitter.com/yoyofayyaz
b. http://www.instagram.com./yo_yo_ fayyaz/
c.http://www.youtube.com.channel/UChhgEUvXXfyx
6EuC6t9qlQ
d.https://www.youtube.com/channel/UCqQd5QYu4E
iem-8UrhnlcA
e. http://cnnewskhbarmarathi.blogspot.com/,
fhttp://www.blogger.com/profile/0186748387830260
1221"
13. It is further directed that in case any further
social media pages, YouTube channels, blogs,
containing the impugned mark, comes to the notice
of the plaintiffs company, it shall at liberty to
approach the YouTube/Instagram/Twitter/social
media pages to pull down the videos/blogs/webpages
of the defendants that bear the infringing
logos/trademarks. The plaintiff shall also be at
liberty to approach this Court."
8. Thereafter, the Defendants were served in the matter. The order dated
20th July, 2021 in the present suit records that in view of the affidavit of
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service filed by the Plaintiff, the Defendants are indicated to have been
served. As per the affidavit of service filed on 5th July, 2021, the
Defendants have been sent copies of the paper-book through speed post. The
delivery reports have also been attached with the said affidavit of service. A
perusal of the same shows that the Defendants have refused to take the
service.
9. None appears for the Defendants. Ld. Counsel for the Plaintiff
confirms that the YouTube channels have been taken down and all the other
social media posts/accounts have also been taken down, in compliance of
the order dated 24th March, 2021.
10. The Court has repeatedly granted time to the Defendants to file the
written statement. However, till date there has been no appearance on behalf
of the Defendants and no written statement has been filed. It is clear that the
Defendants do not intend to pursue any defence in the present case.
11. The fact that the Defendants have taken down the YouTube videos,
Twitter and other infringing accounts/posts on social media shows that the
Defendants are well aware of the present proceedings as also the order dated
24th March, 2021 which has already been passed. Compliance of Order
XXXIX Rule 3 has also been done.
12. In view of the above, since none appears for the Defendants, the
Defendants are proceeded against ex parte. Following the rationale of the
judgment of the ld. Single Judge of this Court in Disney Enterprises Inc. &
Anr. v. Balraj Muttneja &Ors. [CS (OS) 3466/2012 decided on 20th
February, 2014], which is clear to the effect that filing of ex parte evidence
would not be required in all matters. Thus, this Court is of the opinion that
no ex parte evidence needs to be adduced in this case. The same has been
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reiterated by the Court in S. Oliver Bernd Freier GMBH & CO. KG v.
Jaikara Apparels and Ors. [210 (2014) DLT 381], as also, in United Coffee
House v. Raghav Kalra and Ors. [2013 (55) PTC 414 (Del)]. The relevant
observations from the judgment in Disney Enterprises Inc. (supra), are as
under:
"3. Though the defendants entered appearance
through their counsel on 01.02.2013 but remained
unrepresented thereafter and failed to file a
written statement as well. The defendants were
thus directed to be proceeded ex-parte vide order
dated 04.10.2013and the plaintiffs permitted to
file affidavits by way of ex parte evidence.
4. The plaintiffs, despite having been granted
sufficient time and several opportunities, have
failed to get their affidavits for leading ex-parte
evidence on record. However, it is not deemed
expedient to further await the same and allow
this matter to languish, for the reason that I
have in Indian Performing Rights Society Ltd.
Vs. Gauhati Town Club MANU/DE/0582/2013
held that where the defendant is ex parte and the
material before the Court is sufficient to allow
the claim of the plaintiff, the time of the Court
should not be wasted in directing ex parte
evidence to be recorded and which mostly is
nothing but a repetition of the contents of the
plaint."
13. In the present case, a perusal of the judgment dated 16th November,
2017 passed by the ld. Single Judge in CS(COMM) 924/2016 titled Cable
News Network, Inc. v. Anshu Jain (Anim Desire Private Limited), shows
that the Plaintiff's rights in the mark 'CNN' have been upheld by the Court.
The mark 'CNN' has also been declared as a well-known mark. Relevant
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extracts of the judgment are set out below:
"7. Testimony of PW-1 (Abhijeet Dhar) has
remained unchallenged and unrebutted. There are
no sound reasons to disbelieve the positive
uncontroverted testimony of PW-1. The defendants
did not bother to put forth their stand; the averments
are deemed to be not disputed.
8. On perusal of the plaint and documents on record,
it reveals that the plaintiff is the registered user of
the mark CNN. The plaintiff has placed on record
number of documents showing that plaintiff has been
running its well known news channel with presence
in several countries and territories worldwide.
Various printouts show that the defendants have
been using the domain name www.cnndigital.com.
This Court is of the view that the plaintiff's
trademark CNN is a well known trademark as
defined under Section 2(1) (zg) and other
provisions of the Trade Marks Act, 1999."
14. The rights of the Plaintiff in the mark 'CNN' being undisputed and
unchallenged and the said mark has been declared as a well-known mark.
The Defendants were using an identical mark for identical services i.e.,
NEWS. The mark 'CNN' is a registered trade mark of the Plaintiff. Details
of the registrations are set out below:
Registration No Class Trademarks Registration Date
564736 9 CNN (label) 31/12/1999
1149526 16 CNN BE THE 31/10/2002
FIRST TO
KNOW (label)
1727164 9 CNN IBN 01/09/2008
INDIAN OF
THE YEAR
(label)
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564735 16 CNN (label) 31/12/1999
1149525 16 CNN BE THE 31/10/2002
FIRST TO
KNOW (label)
1237885 35,38,41 & 42 CNN BE THE 18/09/2003
FIRST TO
KNOW WITH
LABEL
1727165 16 CNN IBN 01/09/2008
INDIAN OF
THE YEAR
(label)
1318103 35,38,41&42 CNN 29/10/2004
HEADLINE
NEWS (label)
1727166 35 CNN IBN 01/09/2008
INDIAN OF
THE YEAR
(label)
1268353 38&41 CNN (label) 23/02/2004
1415998 38 CNN IBN WITH 23/01/2006
LABEL
1415999 38 CNN IBN WITH 23/01/2006
LABEL
1416000 38 CNN IBN 23/01/2006
MONEY WITH
LABEL
1416001 38 CNN IBN 23/01/2006
SPORTS WITH
LABEL
1416002 38 CNN IBN 23/01/2006
BUSINESS
WITH LABEL
1416003 38 CNN IBN 7 23/01/2006
WITH LABEL
1416004 38 CNN IBAN 23/01/2006
WEATHER
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WITH LABEL
1416005 38 CNN IBN 23/01/2006
MORNING
WITH LABEL
1416006 38 CNN IBN 23/01/2006
SUNRISE WITH
LABEL
1727167 38 CNN IBN 01/09/2008
INDIAN OF
THE YEAR
1416007 41 CNN IBN 7 23/01/2006
WITH LABEL
1416008 41 CNN IBN 23/01/2006
SUNRISE WITH
LABEL
1416009 41 CNN IBN 23/01/2006
NEWS WITH
LABEL
1416010 41 CNN IBN 23/01/2006
WEATHER
WITH LABEL
1416011 41 CNN IBN 23/01/2006
MONEY WITH
LABEL
1416012 41 CNN IBN 23/01/2006
SPORTS WITH
LABEL
1416013 41 CNN IBN 23/01/2006
MORNING
WITH LABEL
1416014 41 CNN IBN 23/01/2006
BUSINESS
WITH LABEL
1416015 41 CNN IBN WITH 23/01/2006
LABEL
1727168 41 CNN IBN 01/09/2008
INDIAN OF
THE YEAR
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1830614 41 CNNGO 18/06/2009
(Device)
1830615 41 CNNGO 18/06/2009
2292917 9,38 and 41 CNN GO 01/03/2012
2694072 43 CNN CAFÉ 07/03/2014
3187268 38 & 41 CNN NEWS 18 13/01/2018
(label)
Thus, the use of an identical mark for identical services is clear infringement
of the Plaintiff's rights in the 'CNN' mark. There can be no justification for
the Defendants to use an identical mark. Even if the name of the
Defendants' network is City News network, the use of the abbreviated form
'CNN' would be impermissible owing to the well-known nature of the
Plaintiff's mark. Moreover, the mark 'CNN' is one which is globally well
known in the field of news dissemination and media related business.
15. Accordingly, the present is a fit case for grant of a permanent
injunction against the Defendants from using, broadcasting, telecasting any
news or any other program under the mark 'CNN' and using the mark
'CNN', in any manner, with or without any suffix or prefix for any goods or
services which are cognate and allied to the Plaintiff's news services or
other related services. The Defendants shall also refrain from posting any
tweets or uploading any videos or putting up any content on the internet
using the mark/name 'CNN'. The present suit is decreed in terms of the
reliefs as sought in paragraph 44 (a), (b) and (c) of the Plaint.
16. None has appeared in this matter on behalf of the Defendants. The use
of the mark 'CNN' is clearly with knowledge of the Plaintiff's goodwill and
reputation, as also, considering that the Defendants, being journalists/
CS (COMM) 135/2021 Page 10 of
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persons in the media business, are deemed to be well aware of the reputation
of the Plaintiff's mark and the rights of the Plaintiff in the said mark.
Accordingly, costs of Rs.3 lakhs are awarded to the Plaintiff, in terms of the
relief as sought in paragraph 44(i) of the Plaint.
17. None of the other reliefs are pressed by the Plaintiffs.
18. All pending applications are also disposed of. Decree sheet be drawn
accordingly.
PRATHIBA M. SINGH
JUDGE
MAY 19, 2022/aman/AD
CS (COMM) 135/2021 Page 11 of
