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Republic TV is Free to Use the Tagline NATION WANTS TO KNOW but Cannot Use the Trademark NEWSHOUR: Delhi HC [READ ORDER]

Republic TV is Free to Use the Tagline NATION WANTS TO KNOW but Cannot Use the Trademark NEWSHOUR: Delhi HC [READ ORDER]
A suit was filed in Delhi High Court by Bennett Coleman & Co. Ltd (Plaintiff), the parent company of the channel Times Now, against Arnab Goswami’s ARG Outlier Media Pvt. Ltd &Ors (Defendant) seeking a decree of permanent injunction in favor of the plaintiff and against the defendants, etc. from using the trademark/title/tagline NEWSHOUR or any other such mark/title/tagline comprising NEWSHOUR as a part thereof amounting to infringement of the plaintiff’s registered mark. Also, the plaint seeks a decree of permanent injunction to restrain the defendants from adopting or using the trademarks/titles/taglines NATION WANTS TO KNOW or any other trademark/title/tagline either by itself or comprising NATION WANTS TO KNOW or any derivatives or combinations thereof. 

The bench of Justice Jayant Nath was hearing the case wherein the learned senior counsel for the plaintiff claimed that ‘Times Now’ is a news channel operated by the plaintiff having several segments of programs. One such program, which was launched in 2006 titled as THE NEWSHOUR registered under classes 16, 35, and 38, is the plaintiff’s registered trademark and has been in continuous use since 2006 having been developed in various forms and derivatives including word and label marks. The mark THE NEWSHOUR has attained a distinct identity to differentiate the program amongst other programs in the industry.”

For the line/tagline/title NATION WANTS TO KNOW the learned counsel said that “It was created for and on behalf of the plaintiff. This tagline was coined and developed by the then editorial and marketing team of the plaintiff as keywords to be used during the discussions and debates conducted on the NEWSHOUR program.”

It was also put forward that Arnab Goswami was one part of the plaintiff’s company. He was playing a very vital role in the plaintiff’s channel as Editor-in-Chief. He was privy to the utmost confidential information. It was also said that Goswami is trying to take undue advantage of his past services with the plaintiff and the popularity of the plaintiff’s program under the said trademark/title/tagline.

Defendant filed a written statement on all the claims of the plaintiff. The written statement stated that “Viewers of news channels belonging to the plaintiff and defendant are well informed, literate and can never associate or confuse between the shows or programs aired on the respective news channels. The plaintiff’s animosity with the defendants is well known and publicized and hence, there is no question of any passing off in such circumstances. The present proceedings have been initiated in the form of vendetta litigation and merely in a purported attempt to harass and arm-twist the defendants. The present suit is devoid of any merits.”

Further, it stated that “The suit is not maintainable and is barred by the doctrine of Res Sub Judice as the plaintiff has already filed a suit related to similar claims. The plaintiff in the said suit alleged infringement of intellectual property but failed and/or deliberately omitted to sue the claims that have been made in the present suit even though no new facts have come to light subsequent to the filing of the earlier suit.”

The defendants denied the plaintiff’s claim on the mark NEWSHOUR and stated that “THE NEWSHOUR comprises of words which are generic in nature and are widely used by different news channels and websites in simple and non-distinct combinations in India and abroad. The word is descriptive in nature and is widely and commonly perceived as being used by news channels.” It was further stated that the registration of the trademark THE NEWSHOUR in favor of the plaintiff is not valid since the mark lacks distinctiveness and the same was wrongly granted in favor of the plaintiff. 

On the tagline NATION WANTS TO KNOW, it was stated that the defendant as a news anchor used the tagline frequently and consistently in continuation with the past usage. Defendant has been using the tagline to date. The same tagline was used by the defendant during his tenure with the plaintiff merely as words of common speech. The words were used as common speech while anchoring the program and no other news anchors or journalists who were employed with the plaintiff use the same as the same was descriptive in nature. The same was neither scripted nor pre-planned in any manner and the same was used in the form of extempore speech by the defendant.”

Court’s observation 

The court at first dealt with the point whether the present suit filed is barred by Res Sub Judice for which the court went to the earlier suit pleading and present suit pleading and concluded that “The facts that the plaintiff has to prove for relief in the first suit are prima facie different from the facts that are to be proved in the second suit. Prima facie, it is not possible to conclude that the present suit is barred by the principle of Res Sub Judice.”

The court then dealt with the first relief sought by the plaintiff i.e.., interim injunction to restrain the defendants from adopting or using the trademark/title ‘NEWS HOUR’ for which the court relied on the judgment Procter & Gamble Manufacturing (Tianjin) Co. Ltd. vs. Anchor Health & Beauty Care Pvt. Ltd. and said “The aforesaid judgment, in my opinion, squarely applies to the facts of this case. The pleas of the defendants that the trademark NEWS HOUR is descriptive and incapable of being registered are pleas which did not find favor when the plaintiff had applied for registration of the trademark.”

Further, the court said “that if the defendant's trademark is deceptively similar to that of the plaintiff, the mere addition of a word by the defendants to the trademark is of no consequence and the plaintiff is entitled to succeed in its action for infringement of its trademark. In the facts of this case, in my view, merely adding some prefixes or suffixes to the trademark NEWS HOUR, in my opinion, does not help the defendants to claim that the mark is being used by the defendants is not deceptively similar to that of the plaintiff.

The marks which are being used by the defendants, namely, ARNAB GOSWAMI’s NEWSHOUR, ARNAB GOSWAMI’s NEWSHOUR 9, etc. prima facie would be deceptively similar to the mark of the plaintiff THE NEWS HOUR. The plaintiff is entitled to relief on this account.”

The court then dealt with the second relief sought by the plaintiff i.e.., to restrain the defendants from adopting the trademark/title/tagline ‘NATION WANTS TO KNOW’. The court on this relief said that this issue needs a further examination of documents adduced by both sides and can be done when the parties lead evidence. The court said “The date of use of the tagline NWTK can only be decided appropriately after the parties have led their evidence. Based on these documents/screenshots of Twitter and other posts, etc., a prima facie case is not made out.”

“In these facts and circumstances, prima facie it is not possible, at this stage without leading of evidence, to come to a conclusion that the defendants seek to mislead the consumers of the news channel or that the action of the defendants in using the said tagline would cause damage to the plaintiff as claimed.”

The further court said “In my opinion, it is only after evidence has been led that it can be ascertained as to whether the plaintiff was using the aforesaid mark as a trademark or it was merely being used as a form of speech in the course of conducting the news channel or in the course of carrying on interviews/presentations by the defendant. These are aspects on which, prima facie, no view can be made at this stage based on the documents placed on record, namely, screenshots of various sites of Twitter, Facebook, etc.”

The court partly allowed the application by passing an interim injunction for the first relief restraining defendants to use the trademark NEWSHOUR and no interim injunction was passed for the second relief allowing defendants to use the tagline NATION WANTS TO KNOW. 

 

 

[READ ORDER]


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