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IN THE HIGH COURT OF DELHI AT NEW DELHI
C. Hari Shankar, J.
Bennet, Coleman And Company Ltd. - Appellant
Versus
Fashion One Television Llc & Anr. - Respondents
C.O. (COMM.IPD-TM) 255 of 2021 & C.O. (COMM.IPD-TM) 144 of 2022
Decided On : 18-12-2023
Trade Marks - Registration of Mark - [C.O. (COMM.IPD-TM) 255/2021, C.O. (COMM.IPD-TM) 144/2022] - The court discussed the concept of 'family of marks' and the application of the anti-dissection rule under Section 17 of the Trade Marks Act. It held that the petitioner's 'NOW'-centric marks constitute a 'family of marks' and that the registration confers rights to claim exclusivity in respect of each mark as a whole, not in respect of the 'NOW' part of each mark. The court also emphasized the identification of the dominant part of a composite mark and its significance in determining infringement. The registrations of the marks in favor of the respondent were quashed and set aside, and the Registrar of Trade Marks was directed to take immediate action to remove the said marks from the register.
Fact of the Case:
The petitioner was aggrieved by the registration of a mark in favor of the respondent in Class 38 for telecommunication and broadcasting services, which were similar to the services covered by the petitioner's registered marks. The court had previously observed that the petitioner's 'NOW'-centric marks constitute a 'family of marks' and that proprietorial rights can emerge from a family of marks held by a registrant.
Finding of the Court:
The court found that the registrations held by the petitioner confer rights to claim exclusivity in respect of each mark as a whole, not in respect of the 'NOW' part of each mark. It held that the registrations of the marks in favor of the respondent were invalid and directed the Registrar of Trade Marks to remove the said marks from the register.
Issues: The issues revolved around the registration of marks in Class 38 for telecommunication and broadcasting services, and the application of the concept of 'family of marks' and the anti-dissection rule under Section 17 of the Trade Marks Act.
Ratio Decidendi: The court emphasized that the registrations held by the petitioner confer rights to claim exclusivity in respect of each mark as a whole, not in respect of the 'NOW' part of each mark. It also highlighted the significance of identifying the dominant part of a composite mark in determining infringement.
Final Decision: The registrations of the marks in favor of the respondent were quashed and set aside, and the Registrar of Trade Marks was directed to take immediate action to remove the said marks from the register.
JUDGMENT (Oral)
C.O. (COMM.IPD-TM) 255/2021
1. Mr. Abhishek Saket, learned Counsel for the respondent appears and submits that, despite efforts to contact his client, he has not been successful. I had noted, on the last date, that this case could not be repeatedly adjourned awaiting the convenience of the respondent in contacting his counsel and instructing him in the matter.
2. Besides, the issue in controversy appears to be covered by the judgment of this Court in C.O. (COMM.IPD-TM) 117/2021 (Bennet, Coleman and Company Ltd. v. Vnow Technologies Pvt. Ltd., 2023 SCC OnLine Del 864).
3. The petitioner is aggrieved by Registration No. 2581941 whereby the Trade Marks Registry has registered the mark 
in favour of Respondent 1 in Class 38 of the NICE classification applicable to registration of trade marks, w.e.f. 19 August 2013, in respect of the service "broadcast of television programs".
4. The petitioner is the proprietor of the marks TIMES NOW, ET NOW, MOVIES NOW, ROMEDY NOW and MIRROR NOW, also registered in the petitioner's favour in Class 38.
5. The services in respect of which these registrations have been granted are the following:
| Marks | Class | Services |
| TIMES NOW | 38 | television and radio broadcasting, cable television broadcasting, news agencies, providing telecommunications and user access to a global computer network and services, telecommunications and communication by computer terminals, cellular telephone services, optic fibre networks, telegrams and telephone, electronic and facsimile transmission, transmission of message and images, wire service. |
| ET NOW | 38 | television & radio broadcasting; cable television broadcasting; news agencies; providing telecommunications & user access to a global computer network and services; telecommunications & communication by computer terminals; cellular telephone services; optic fibre networks; telegrams & telephone; electronic & facsimile transmission; transmission of messages & images, wire service. |
| MOVIES NOW | 38 | television and radio broadcasting cable television broadcasting: satellite transmission; news agencies; providing telecommunications and user access to a global computer network and services; telecommunications and communication by computer terminals; cellular telephone services; optic fibre networks; telegrams and telephone; electronic and facsimile transmission: transmission of news, messages and images through global computer network; wire service |
| ROMEDY NOW | 38 | television & radio broadcasting; cable television broadcasting; news agencies; providing telecommunications & user access to a global computer network and services; telecommunications & communication by computer terminals; cellular telephone services; optic fibre networks; telegrams & telephone; electronic & facsimile transmission; transmission of message & images, wire service. |
| MIRROR NOW | 38 | Telecommunications, television broadcasting, cellular telephone communication, communications by computer terminals, internet and websites, internet portals, internet broadcasting, electronic mail, providing online forums, satellite transmission, computer aided transmission of messages and images, providing access to databases, facsimile transmission, providing user access to global computer networks, providing telecommunications connections to a global computer network, transmission of digital files, transmission of cards online. |
6. This Court, in its judgment in Bennet Coleman, has observed and held as under:
"10. Having heard Ms. Mamta Rani Jha, learned Counsel for the petitioner, and perused the record, it is apparent, from the record, that the petitioner has registrations, in its favour, of several marks which involve `NOW' as the latter part of the mark, under class 38. The submission of Ms. Mamta Rani Jha is that, in the circumstances, an unwary viewer who views the defendant's channel, which provides identical services under the impugned 
mark, would be inclined to draw an association between the impugned mark and the `NOW centric' marks
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 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....
Distinctiveness in trademark law must be assessed concerning the goods or services; common terms can acquire distinctiveness based on usage, thus allowing for a prima facie case of infringement.
The commercial impression of a composite trademark is created by the mark as a whole, not by its component parts. The word 'PREMIER' was commonly used in conjunction with sporting leagues and had acq....
The court emphasized that the petitioner's claim was expansive beyond legitimate bounds, and the use of the word 'KWIK' on one of their many sub-brands could not give them dominance over what had alr....
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