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2013 Supreme(Del) 34
High Court of Delhi
REVA KHETRAPAL
Weider Publications, LLC & Another
Versus
Pushpendra Srivastav & Another
CS(OS) 2508 of 2007
Decided On : 07-01-2013
For the Plaintiffs:S.C. Ladi, Deeksha Kakar, Advocates.
For the Defendants: Ex parte.
The main legal point established in the judgment is that the Defendants' use of a deceptively similar mark, MUSCLES & FITNESS, infringed the trademark rights of the Plaintiffs' magazine MUSCLE & FITNESS, leading to confusion among consumers and causing damage to the goodwill and reputation of the Plaintiffs' title and brand.
Headnote:
COPYRIGHT INFRINGEMENT - MAGAZINE PUBLICATION - Press and Registration of Books Act, 1867, Copyright Act, 1957 - The court found that the Defendants infringed the trademark rights of the Plaintiffs' magazine MUSCLE & FITNESS by using the deceptively similar mark MUSCLES & FITNESS, causing confusion among consumers. The Defendants' use and publication of the magazine under the mark MUSCLES & FITNESS was deemed an infringement on the trademark rights of the Plaintiffs' internationally renowned magazine MUSCLE & FITNESS. The court held that the Defendants' mark was almost identical to the Plaintiffs' mark, making it deceptively similar to the consumer. The Defendants' use of the name and mark to pass off their magazine as that of the Plaintiffs' was damaging and detrimental to the goodwill and reputation of the Plaintiffs' title and brand, which had been built over nearly 30 years. The court also awarded punitive damages to the Plaintiffs.
Fact of the Case:
The Plaintiffs, publishers of MUSCLE & FITNESS magazine, sued the Defendants for copyright infringement and passing off, alleging that the Defendants had copied the content, layout, and trademark of the Plaintiffs' magazine for their magazine MUSCLES & FITNESS. The Plaintiffs sought permanent injunction, damages, and delivery up of infringing materials.
Finding of the Court:
The court found that the Defendants infringed the trademark rights of the Plaintiffs' magazine MUSCLE & FITNESS by using the deceptively similar mark MUSCLES & FITNESS, causing confusion among consumers. The court held that the Defendants' use and publication of the magazine under the mark MUSCLES & FITNESS was deemed an infringement on the trademark rights of the Plaintiffs' internationally renowned magazine MUSCLE & FITNESS. The court also awarded punitive damages to the Plaintiffs.
Issues: The issues included copyright infringement, passing off, trademark rights, and the validity of the Defendants' publication under the mark MUSCLES & FITNESS.
Ratio Decidendi: The court's decision was based on the finding that the Defendants' use of the mark MUSCLES & FITNESS infringed the trademark rights of the Plaintiffs' magazine MUSCLE & FITNESS, causing confusion among consumers. The court also considered the degree of similarity between the two magazines, the purpose of the Defendants in adopting the mark, and the resulting confusion among consumers.
Final Decision: The court decreed in favor of the Plaintiffs, granting a permanent injunction against the Defendants and awarding punitive damages to the Plaintiffs. The Plaintiffs were also entitled to costs as determined by the Registry of the Court.
REVA KHETRAPAL, J.
1. The Plaintiffs being the publisher of the MUSCLE & FITNESS magazine have instituted the present suit against the Defendants engaged in publishing, selling and marketing of MUSCLES & FITNESS magazine seeking permanent injunction restraining the Defendants from printing, publishing, selling or offering for sale, advertising, directly or indirectly dealing in any publication and/or sale of magazines having the get-up, layout, content, printed matter, arrangement of articles/features, photographs and/or drawings identical to or substantially copied from the Plaintiffs’ magazine MUSCLE & FITNESS. The Plaintiffs have also sought a permanent injunction against the Defendants on the ground of passing off by the Defendants in respect of the Plaintiffs’ magazine MUSCLE & FITNESS. The ancillary reliefs of damages, delivery up etc. have also been claimed.
2. The Plaintiff Nos. 1 and 2 are both companies incorporated under the laws of United States of America (USA) and are publishing companies offering celebrity journalism, and health and fitness magazines and publications, including their magazine MUSCLE & FITNESS in the USA and numerous other countries around the world. Plaintiff No. 1 was acquired by Plaintiff No. 2 in 2003, and currently is a wholly owned subsidiary of Plaintiff No. 2.
3. The Plaintiffs assert that when in the month of May/June, 2006, the Plaintiffs decided to launch an Indian edition of their magazine MUSCLE & FITNESS wherein the content would be aimed and created entirely for the Indian market. The Plaintiffs approached the Registrar of Newspapers in India (in short “RNI”) to initiate registration of their title MUSCLE & FITNESS as required by the Press and Registration of Books Act, 1867 (in short “the PRB Act”) for title verification and registration of their publication title MUSCLE & FITNESS, as required by the PRB Act.
4. The Plaintiffs’ said application for title verification was rejected by the RNI on account of a prior title registration of MUSCLES & FITNESS in favour of the Defendant No.1. On learning of this fraudulent registration, the Plaintiffs through their licensee in India, namely, “Health is Wealth Pvt. Ltd.” filed an appeal before the Press & Registration Appellate Board (in short “PRAB”), Lodhi Road, New Delhi against letter dated 27.11.2006 of RNI rejecting Plaintiffs’ application for registration of MUSCLE & FITNESS in respect of its said magazine. The said appeal was rejected by the PRAB, inter alia, holding that:
"The action complained of is covered by neither of the two. It, therefore, does not fall within the ambit of Section 8(c) of the Press and Registration of Books Act, 1867. The grievance of the Appellant being primarily governed by copyright and trademark laws needs to be agitated before the appropriate forum. The board directs dropping of the Appeal accordingly."
5. The Plaintiffs allege that upon reading the Defendants’ magazine, the Plaintiffs discovered that not only had the Defendants lifted the Plaintiffs’ trademark MUSCLE & FITNESS in its entirety and applied the said mark as MUSCLES & FITNESS to their magazine, but also the get-up, layout, content, printed matter, arrangement of articles and features, photographs and drawings were identical to the Plaintiffs’ magazine. In the circumstances, the Plaintiffs instituted the present suit against the Defendants on 17.12.2007. The prima-facie rights of the Plaintiffs were confirmed by this Court by way of an ex-parte ad interim injunction order granted to the Plaintiffs on 19.12.2007 wherein the Defendants were restrained from publishing, marketing or in any manner circulating their magazine under the title MUSCLES & FITNESS or from copying any of the articles of the Plaintiffs in their magazine. The said injunction continues to remain in force till date. The effect of the aforesaid injunction order was that the Defendants ceased publication of their magazine MUSCLES & FITNESS and instead started the pub
