Living Media India Ltd. and Ors. v. Alpha Dealcom Pvt. Ltd. and Ors.

Living Media India Ltd. and Ors. v. Alpha Dealcom Pvt. Ltd. and Ors.

2016 (66) PTC 200 (Del)

Brief Facts:

Appellant claimed to be a major media corporation in India. As per the Appellants, Appellant No. 1 was owner and publisher news magazine “INDIA TODAY”, since 1975.

Appellant No. 1 also published a business magazine under the  mark “Business Today”, a travel magazine “India Today Travel Plus”, an architecture and design magazine “Design Today”, and other magazines under the trade mark “Spice Today” and “Money Today” etc. Appellant also published a daily newspaper “MAIL TODAY”. Appellant manufactures and markets multimedia products under the trade mark “MUSIC TODAY”. Appellant No. 1 conducts “INDIA TODAY CONCLAVE”, wherein world leaders and eminent personalities converge and debate important and pressing issues on varied subjects. In addition to this, Appellant also had a English News Channel ‘Headlines Today’ and an Hindi News Channel ‘Aaj Tak’.

In October 2012, it was found that the Respondent No. 1 had applied for registration of the trademark ‘Nation Today’ allegedly claiming to be user of the trademark in respect of broadcasting and telecommunication services since June 23, 2010.

Respondent No. 1 had filed 3 applications for registration of the said trademark. Respondent No. 2, was a senior employee of the Appellant No. 2 and thereafter he apparently joined the Respondent No. 1.

Consequently, the Appellants filed a suit against the Respondents for permanent injunction seeking to restrain the Respondents from using the mark ‘NATION TODAY’ amounting to infringement and passing off of their mark ‘TODAY’. Appellants also filed an application for temporary injunction to restrain the Respondents from using the mark ‘TODAY’ during the pendency of the suit. The said application was dismissed by the Single Judge of the Hon’ble High Court of Delhi.

Proceedings before the Learned Single Judge:

The learned Single Judge was of the opinion that the mark NATION TODAY could not be said to be identical or deceptively similar to the  mark INDIA TODAY or HEADLINES TODAY owned by the Appellants and would not lead to any confusion. It was also held that the expression TODAY which was a mark registered in Classes 16 and 35, were stand alone and that the Appellants had never used them for Telecommunications and Broadcasting. After taking all this into consideration, the learned Single Judge, refused the injunction in favour of the Appellants.

Against the said order of dismissal, the Appellants had preferred the present appeal before the Division Bench of the Hon’ble High Court of Delhi.

Appellants’ Case:

• Appellant No. 1, under a license through the Appellant No. 2 broadcasts popular news channels namely, “AAJ TAK” (Till Today) in Hindi and “HEADLINES TODAY” in English besides few other media channels like “AAJ TAK TEZ” and “DILLI AAJ TAK”.
• Appellant No. 1 is the registered proprietor of the trademark “TODAY” and its variations not only in India but also in various foreign countries.
• Appellants are using said mark “TODAY” and its variants continuously since 1975 and have spent sufficient resources to promote and publicize these brands.
• Trademark “TODAY” has assumed and acquired a secondary meaning owing to the Appellants long, continuous and honest use
• Dominant presence of the mark INDIA TODAY and its variants in different services in the media and news industry, led to the undeniable fact that any use of the expression TODAY was likely to impinge upon the Appellants’ rights. It was emphasized that there is no denial of the fact that the mark TODAY is in use. In these circumstances since there was no challenge to this aspect, the likelihood of confusion was greatest.
• Learned Single Judge fell into error in holding that there was no deceptive similarity. The word TODAY is not just similar but identical and occurs in both the marks. As between the two the Appellants were in the market and were well known for the last four decades. Opposed to this the Respondents had not even started services and had merely applied for a license.
• Adoption by the Respondents of the impugned trademark has been done dishonestly, with clear knowledge and mala fide intention so as to reap benefits of the Appellants’ established reputation and goodwill.

Respondents’ case:

• Two marks were dissimilar
• Appellants cannot claim exclusivity over the word TODAY.
• Word TODAY is close to the trade, i.e news channel broadcasting, and descriptive.
• Appellant did not use the expression TODAY or INDIA TODAY for any news channel. That it used the word Aaj Tak (“Till Today”) did not imply that the expression TODAY was of such a distinctive character as to acquire secondary meaning.
• The list of permitted channels allowed to operate in India were using the word TODAY (i.e RUSSIA TODAY, LIVE TODAY, MANAGEMENT TODAY, etc.)
• Word TODAY in the context of current events coverage in the media is generic, and without a strong proof of secondary use, Appellants should not be given an injunction.
• If the injunction to use the expression TODAY, which describes its services, were to be granted, other words too can be prevented from use, despite their denoting the nature of the services. In such eventuality, the Appellant has to show that in the particular trade or service, how strongly is the word mark TODAY perceived by the general public and cannot fall back on the distinctiveness acquired in the magazine publishing field or in the Hindi news channel Aaj Tak.

Court’s observations:

Appellants are owners of several registered trademarks. Prominent amongst these is INDIA TODAY which has been used for a weekly magazine since 1975; others are MUSIC TODAY, BUSINESS TODAY, a travel magazine “INDIA TODAY TRAVEL PLUS”, an architecture and design magazine “DESIGN TODAY”, and other magazines under the trade-marks SPICE TODAY and MONEY TODAY etc. The Appellants also publishes daily newspaper MAIL TODAY. It has apparently acquired two trademarks TODAY in classes 16 and 35.

As per the Appellants, the bedrock of their reputation is the word mark TODAY, with which the users and members of the public invariably associate the Appellants.

Respondents resists the argument and point out that TODAY is a descriptive term: descriptive of the services rendered; it also has a strong descriptive or service associative meaning to the Respondents’ business, i.e news channel. Additionally, it is pointed out that TODAY has been used by several other channels and products and that per se absence of use of that word by the Appellant in the English news channel segment cannot entitle it to ad interim injunctive relief.

There is no dispute about the fact that Appellant has been in the news magazine publication business for over four decades; if it asserts that it has acquired a strong reputation for the title INDIA TODAY, which is its registered trademark, the Court would be correct in assuming it to be so. However, does that per se – along with sales figures and other financial details testifying to various brands and trademarks owned by the Appellant, crystallize into a right to prevent others from using a common word, “TODAY” in respect of television news channel services. It is here that the matter requires a slightly closer scrutiny.

The word TODAY is a common term and a dictionary one. Used in a non-contemporary sense, i.e without reference to time and as a mark, it could well be urged that it constitutes an arbitrary mark. However, its link with news is unmistakable. In this context, what acquires distinctiveness is the combination India Today.

It has been recognized that trademark use of generic or descriptive words have to be closely scrutinized before claims of injury are allowed. The Supreme Court ruling in Skyline Education Institute (India) Ltd. v. S.L. Vaswani declined to grant injunction to the plaintiff, who carried on business under the trademark “Skyline”. The Court noted that a large number of other businesses had used the term “Skyline” for the same business activity, i.e educational services.

On an overview of the circumstances, this Court is of opinion that the learned Single Judge was not in error in holding that the word TODAY had not acquired such distinctiveness for the Appellants, to make out a prima facie strong case for grant of ad interim injunction.