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IN THE HIGH COURT OF DELHI AT NEW DELHI
Mukta Gupta, J.
Bennet, Coleman & Company Limited – Appellant
Versus
E! Entertainment Television Llc. – Respondent
CS (COMM) 253 of 2019
Decided On : 31-05-2023
The court held that the defendant could not be restrained from using the mark 'NOW' as a standalone mark over which the plaintiff seeks protection, and thus there was no basis to restrain the defendant from starting any channel/programme in India. The court also held that the plaintiff's mark 'NOW' was a common word and was used by a number of other entities, and therefore the plaintiff could not claim that the word 'NOW' used by it as a prefix or suffix had acquired a distinction.
Fact of the Case:
The plaintiff, a popular news channel, filed a suit against the defendant, an American pay television channel, for infringement of trademark and passing off. The plaintiff claimed that the defendant's marks 'E! Now' and 'E! News Now' were similar to the plaintiff's marks 'E NOW' and 'NOW', and that the defendant's use of these marks was likely to cause confusion and deception among consumers. The defendant contended that the plaintiff's marks were not distinctive and had not acquired a secondary meaning, and that the defendant's marks were not similar to the plaintiff's marks. The defendant also argued that the plaintiff had suppressed material facts and had made misrepresentations to the court.
Finding of the Court:
The court found that the plaintiff's mark 'NOW' was a common word and was used by a number of other entities. The court also found that the plaintiff had not used the trademark 'NOW' simplicitor in Class 41, which was the relevant class for the present suit. The court further found that the defendant was a prior user of the mark 'E!' and 'E! News Now', and that the defendant's marks were not similar to the plaintiff's marks. The court also found that the plaintiff had suppressed material facts and had made misrepresentations to the court.
Issues: Whether the plaintiff's mark 'NOW' was distinctive and had acquired a secondary meaning. Whether the defendant's marks 'E! Now' and 'E! News Now' were similar to the plaintiff's marks 'E NOW' and 'NOW'. Whether the defendant's use of the marks 'E! Now' and 'E! News Now' was likely to cause confusion and deception among consumers. Whether the plaintiff had suppressed material facts and had made misrepresentations to the court.
Ratio Decidendi: The court held that the plaintiff's mark 'NOW' was a common word and was used by a number of other entities. The court also found that the plaintiff had not used the trademark 'NOW' simplicitor in Class 41, which was the relevant class for the present suit. The court further found that the defendant was a prior user of the mark 'E!' and 'E! News Now', and that the defendant's marks were not similar to the plaintiff's marks. The court also found that the plaintiff had suppressed material facts and had made misrepresentations to the court. The court therefore held that the plaintiff was not entitled to an injunction restraining the defendant from using the mark 'NOW' as a standalone mark.
Final Decision: The court dismissed the plaintiff's suit and vacated the ad-interim injunction that had been granted earlier.
JUDGMENT
I.A. 7077/2019 (under Order XXXIX Rule 1 and 2 CPC - by Plaintiff)
I.A. 8833/2019 (under Order XXXIX Rule 4 CPC - by defendant)
I.A. 8832/2019 (under Order VII Rule 10 & 11 CPC - by defendant)
1. By I.A. 7077/2019, the plaintiff prays for an order restraining the Defendant, its directors, agents, officers, employees, cable operators, multi-system operators, direct to home operators and other persons associated with it from adopting and using the mark "NOW", "E NOW" and "E NEWS NOW" or any other mark or name which is identical or deceptively similar, either singly or in conjunction with any other word or mark, to plaintiff's channel name/registered mark, or/and the plaintiff mark's logo style, format, font, get up or color scheme. The plaintiff also prays for restraining the Defendant and its directors, partners, officers, employees, agents, licensees, cable operators, franchisees or any other persons from using the plaintiff's domain name/website timesnow.tc, moviesnow.co.in, romedynow.com, economictimes.indiatimes.com/et-now, etc. or any other domain name similar in fashion for any internet site or social media site, account or handle of the plaintiff or to create any third party interest in the domain name currently in use by the defendant and for direction to defendant to maintain accounts of profit illegally earned by them.
2. Summons in the suit were issued on 14th May, 2019 and on which date interim injunction was also granted in favour of the plaintiff restraining the respondent from starting any channel/programme in India by the mark "NOW" or any other mark deceptively similar to the mark "NOW".
3. The defendant thereafter filed an appeal challenging the order dated 14th May, 2019 granting interim injunction in favour of the plaintiff, wherein the Hon'ble Division Bench of this Court vide order dated 30th May, 2019 in FAO(OS)(Comm) 135/2019 took the view that the defendant should file an application under Order XXXIX Rule 4 seeking vacation of the ad-interim injunction. Accordingly, I.A. No. 8833/2019 was filed by the defendant seeking vacation of the said injunction order dated 14th May, 2019.
4. By I.A. 8832/2019, the defendant prays for rejection of the plaint filed by the plaintiff with exemplary costs, or in alternative, the return of plaint for presentation before a court of competent jurisdiction.
About the Plaintiff and its contentions
5. The plaintiff company is popularly known as the `Times Group' which primarily runs print media since 1838 and is the flagship company of the Times Group Company. As per the plaint, the plaintiff has 33 publishing centers, 37 printing centers with over 7000 employees and a circulation of approximately 4.3 million copies daily, 29 niche magazines and 32 radio stations. Apart from being involved in various businesses relating to media, it is also involved in television broadcasting and distribution for its channels which is collectively and popularly known as the `Times Network'. It is claimed by the plaintiff that the trademarks "TIME", "TIMES" and "NOW" are the property of the plaintiff company only, and its subsidiaries and affiliates have been allowed to use the same. The plaintiff has been using the series of mark "TIMES" and "NOW" in various combinations, in respect of television channels for more than a decade. Times Network houses `Times Now' channel, which is India's most viewed English News Channel operating successfully for over twelve years, `Times Now World' is the HD version of Times Now Channel, `ET Now' channel is India's most viewed English Business News channel, `Mirror Now' launched as `MAGICBRICKS NOW', was India's first 24x7 Real Estate and Property Business Television Channel, which was revamped and renamed as `Mirror Now', channel `Movies Now' is India's first and most viewed English Movie channel, `Romedy Now' and `Romedy Now HD. are India's premium English Entertainment Channels focused on Romance and Comedy. The suffix "NOW" is thus attached wi
The court affirmed that prior use of a registered trademark provides substantial grounds for an injunction against similar marks, emphasizing deceptive similarity effects on consumer perception.
The court affirmed the registered trademark holder's rights against similar marks and clarified standards for proving prior use and confusion under trademark law.
Trademark infringement under Section 29(2)(b) of the Trade Marks Act was established based on the likelihood of confusion among consumers due to the defendants' use of a mark similar to the plaintiff....
Important Point :The use of a trademark that is phonetically and visually similar to a registered trademark can lead to confusion, constituting infringement, especially when dishonest conduct is evid....
Jurisdiction in trade mark cases arises where cause of action occurs, including digital accessibility, not solely based on physical business locations.
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