A prior user of a trademark in a specific territory is entitled to seek relief against alleged infringement by a subsequent user, especially when consumer confusion and dilution of goodwill may occur.

JUDGMENT

Asha Menon, J.

I.A. 16049/2021 (of the defendant No.2 u/S 151 CPC for bringing on record its new postal address)

1. For the reasons stated in the application, the same is allowed and the new postal address of the defendant No.2 is taken on record.

2. The application stands disposed of.

I.A. 11913/2020 (of the defendants u/O XI R-5(1) CPC)

3. This application has been filed by the defendants for placing on record certain documents.

4. Arguments raised against the pleas of taking the additional documents on the record were that it has been improperly moved under Order XI Rule 1 CPC and whereas the defendants contended that these documents were essential to show that there was suppression and concealment by the plaintiffs and being public documents, their authenticity could not be questioned.

5. After hearing submissions, the application is allowed, and the documents are taken on record.

6. The application stands disposed of.

I.A. 7682/2020 (of plaintiffs u/O XXXIX R-1 & 2 CPC for interim relief)

7. This suit has been filed for permanent injunction to restrain the defendants from infringing trademark belonging to the plaintiffs, passing off and further seeking rendition of accounts and protection against dilution, damages, delivery-up etc. In the suit, the application [I.A. 7682/2020] sought to be disposed of by the present order seeks interim relief with the following prayers :

"a. An order of temporary injunction restraining the Defendants, partners or proprietors, their officers, servants, agents and all persons, in active concert or participation with the Defendants from using the Impugned Marks , , , and or any other mark which is identical or deceptively similar to the Plaintiff No. 1's registered STAR Marks including the STAR Device , thereby amounting to infringement of trademark.

b. An order of temporary injunction restraining the Defendants, partners or proprietors, their officers, servants, agents and all persons, in active concert or participation with the Defendants from using the Impugned Marks , , , and , or any other mark which is identical or deceptively similar to the Plaintiff No. 1's registered STAR Marks including the STAR Device , thereby amounting to passing off.

c. An ex-parte ad interim temporary order in terms of prayer clauses (a) to (b) made above, during the pendency of the present application;"

8. The plaintiffs are the owners and operators of various branded television channels whose logo contains the Star Device and its variant, as a prominent part in its family of marks. It is claimed that the plaintiffs have been using the trademark, tradename, and trading style "STAR" since 1991, continuously and uninterruptedly in the broadcasting space, and, in India, when they launched the first TV channel, "STAR TV" in 1992. The plaintiffs claim to have developed a distinct identity when they launched the "STAR SPORTS" channel in 1996. Presently, they have 17 sports channels in varied languages such as Star Sports 1, Star Sports 1 Hindi, Star Sports 1 Tamil, etc. The Star Sports Channels broadcast various sporting events from across the world in the fields of cricket, football, badminton, tennis, hockey etc. including the Indian Premier League, the French Open, the US Open, the Premier League, Formula 1.

9. It is claimed that since inception, the family of Star Channels contains a distinguishing Star Device. The plaintiffs claimed that this five pointed logo and the star marks in its reiterations has acquired the status of a well-known mark within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999 (hereinafter referred to as `T.M. Act') and as such the Star Device has become synonymous with the plaintiffs and their services. It is also claimed that the plaintiff No.1 is the prior adopter, prior user, registered proprietor and owner of the trademark "STAR" and a plurality of marks incorporating the word "STAR" and/or the uniquely designed five pointed star device includi