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IN THE HIGH COURT OF DELHI AT NEW DELHI
C. HARI SHANKAR, J.
Bennet, Coleman And Company Limited - Plaintiff
Versus
Vnow Technologies Private Limited and Anr. - Defendants
C.O. (COMM.IPD-TM) 117 Of 2021
Decided On : 14-02-2023
Rectification - Trade Marks - Section 57 - Trade Marks Act 1999 - [NOW] - Rectification of the register of Trade Marks by removal of impugned services - Summary of Acts and Sections: Section 57 of the Trade Marks Act 1999 - The court allowed the rectification petition under Section 57 of the Trade Marks Act 1999, seeking removal of impugned services from the register of Trade Marks.
Fact of the Case:
The petitioner sought rectification of the register of Trade Marks by removing impugned services from the mark 'VNOW/' registered in favor of Respondent 1. The petitioner claimed exclusive rights to use the expression 'NOW' as part of a trademark in respect of services relatable to Class 38.
Finding of the Court:
The court found that the impugned mark was similar to the 'NOW' family of marks registered in favor of the petitioner, and there was a likelihood of confusion or association with the petitioner's marks. The court held that the impugned mark was violative of Section 11(1)(b) of the Trade Marks Act and allowed the rectification petition.
Issues: The issues involved the similarity of the impugned mark to the petitioner's 'NOW' family of marks, the likelihood of confusion or association, and the entitlement to seek rectification of the register under Section 57 of the Trade Marks Act.
Ratio Decidendi: The court applied the anti-dissection rule and identified 'NOW' as the dominant part of the 'NOW' family of marks, leading to a likelihood of confusion or association with the impugned mark. The court also clarified the applicability of Section 11(5) in relation to the grant of registration and rectification of the impugned mark.
Final Decision: The court allowed the rectification petition and varied the registration of the impugned mark by restricting it to 'smart security solution devices, power bank, chats or social networking services or conferences or webinars'.
JUDGMENT :
1. This rectification petition, under Section 57,[57. Power to cancel or vary registration and to rectify the register. –
(1) On application made in the prescribed manner to the High Court or to the Registrar by any person aggrieved, the Registrar or the High Court, as the case may be, may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.
(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the High Court or to the Registrar, and the Registrar or the High Court, as the case may be, may make such order for making, expunging or varying the entry as it may think fit.] of the Trade Marks Act 1999, was initially filed before the learned Intellectual Property Appellate Board (the learned IPAB) as IPAB Case No. ORA/92/2020/TM/DEL, seeking rectification of the register of Trade Marks by removal, from the services in respect of which the mark ‘VNOW/
’ stands registered in favour of Respondent 1, ‘Transmission, Reception & Sharing Of Downloadable Digital Data & Content, Electronic Communication Services, Providing Access To GPS/Lbs/Other Navigation Services, Access To Electronic Communication Network, Web Casting/Online/Offline Services For Transmission Or Reception Of Audio/Video/Data Files & Content, Multimedia, Access To Internet/Web Services/Tv/Telecommunication Services Via Telecommunication Equipment Or Smart Phones Or Mobile Phones Or Wearable Devices Or Smart Watches Or Watches Or Wireless (2g/3g/4g/5g/7g/WIFI/WIMAX/VSAT) Enabled Devices Or GPS/GPRS Enabled Device, Bluetooth Enabled Devices, Tablet Computer Transmission, Reception, Sharing & Communication Of Software Or Computer Applications Or Mobile Applications Or Smart Devices Applications Or Audio Or Video Or Downloadable Digital Content Or Web/Internet /Online Data Sharing’.
2. Notice was issued on the petition, by the learned IPAB, on 28th September 2020. Thereafter, the matter was listed before the learned IPAB on 23rd March 2021. Consequent to the enactment of the Tribunals Reforms Act, 2021 and transfer of the matter to this court, the petition was listed before this Court on 14th January 2022, 26th April 2022, 11th July 2022, 6th September 2022, 28th October 2022, 14th December 2022 and 16th January 2023.
3. Respondent 1, despite service by both before the learned IPAB as well as this Court, has remained continuously absent. As such, the court has heard Ms. Mamta Rani Jha, learned Counsel for the petitioner, and, having perused the record, proceeds to dispose of the present petition.
4. The petitioner is the registered proprietor of the following trade marks:
| Sl. No. | Trade Marks | Services covered under the trade mark |
| 1. | TIMES NOW | TELEVISION AND RADIO BROADCASTING, CABLE TELEVISION BROADCASTING, NEWS AGENCIES PROVIDING TELECOMMUNICATIONS AND USER ACCESS TO A GLOBAL COMPUTER NETWORK AND SERVICES, TELECOMMUNICATION AND COMMUNICATION BY COMPUTER TERMINALS, CELLULAR TELEPHONE SERVICES, OPTIC FIBRE NETWORKS, TELEGRAMS AND TELEPHONE, ELECTRONIC AND FACSIMILE TRANSMISSION, TRANSMISSION OF MESSAGE AND IMAGE, WIRE SERVICE. |
| 2. | ET NOW | TELEVISION & RADIO BROADCASTING, CABLE TELEVISION BROADCASTING, NEWS AGENCY PROVIDING TELECOMMUNICATION & USER ACCESS TO GLOBAL COMPUTER NETWORK SERVICES, TELECOMMUNICATION AND COMMUNICATION BY COMPUTER TERMINALS, CENTRE TELEPHONE SERVICES, OPTIC FIBRE NETWORKS, TELEGRAM & TELEPHONE, ELECTRONIC FACSIMILE TRANSMISSION, TRANSMISSION OF MESSAGE & IMAGE, WIRE SERVICE |
| 3 | MOVIES NOW | TELEVISION |
The central legal point established in the judgment is the application of the anti-dissection rule and the identification of the dominant part of a composite mark, leading to a likelihood of confusio....
The concept of 'family of marks' and the application of the anti-dissection rule under Section 17 of the Trade Marks Act were central to the judgment.
The main legal principle established is that the similarity and likelihood of confusion between marks, as well as the priority of application, are crucial factors in determining the eligibility for r....
The central legal point established in the judgment is the application of Section 11(1)(b) of the Trademarks Act to determine the likelihood of confusion based on phonetic similarity and the priority....
The central legal point established in the judgment is that for a trade mark to be ineligible for registration under Section 11(1)(b) of the Trade Marks Act, there must be a cumulative satisfaction o....
The central legal point established in the judgment is the requirement for distinctiveness of a mark for registration under Section 9(1)(a) of the Trade Marks Act, and the need for the Registrar to p....
Registration validity sustained if distinctiveness established over time despite claims of descriptiveness.
A trade mark that is phonetically and visually identical to a well-known mark, if registered without bona fide intent and in bad faith, is liable to be removed from the Register of Trade Marks under ....
The trial court must assess only the prima facie tenability of claims regarding trademark validity under Section 124, without delving into the merits of those claims.
The main legal point established in the judgment is that a rectification petition seeking removal of a device mark from the register of trade marks must establish a fresh cause of action for rectific....
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