T.V. Today Network Ltd. & Anr. v. Kesari Singh Gujjar & Ors.
T.V. Today Network Ltd. & Anr. v. Kesari Singh Gujjar & Ors.
CS(OS) no. 1085 of 2005 before the Hon’ble High Court of Delhi at New Delhi
Decided on: 7th October, 2013
The Plaintiffs (T.V. Today Network Ltd. & Living Media India Ltd.) filed a suit for permanent injunction against the Defendants who were using the Trade Mark ‘Aaj Tak’. Plaintiffs were seeking a decree restraining the Defendant from passing off of their publication as those of the Plaintiffs along with delivery up, rendition of accounts and damages.
After the filing of the suit in August, 2005 Plaintiff No. 2 (Living Media India Ltd.) obtained registration for the Trade Mark ‘Aaj Tak’. Therefore, the Plaintiffs added the relief of permanent injunction seeking restrain on infringement of Trade Mark ‘Aaj Tak’.
PLAINTIFF’S CASE
- In 1995, Plaintiff No. 2 decided to start a news programme in Hindi under the name of ‘Aaj Tak’.
- The Plaintiff No. 2 was a registered proprietor of the Trade Mark ‘Aaj Tak’ in Classes 38 and 41 of the Fourth Schedule of the Trade Marks Act, 1999 and Plaintiff No. 2 operated a 24-hour news channed under the said name ‘Aaj Tak’ since 2000.
- As on 30th April, 2005, ‘Aaj Tak’ had a total viewership of 19.4 million and market share of 25.5%. The turnover of the Plaintiff for the year 2004-05 was Rs. 1390.68 lakhs
- In 2005, Plaintiff discovered that Defendants were publishing a newspaper under the name ‘Aaj Tak’.
DEFENDANT’S CASE
- The Defendants have been publishing their newspaper for the past 10 years, i.e. since 1996.
- The suit suffers from laches and acquiescence as the Plaintiffs knew about the presence of the Defendant since 1996.
- The Registration of the Plaintiff does not cover newspaper.
- Defendants’ newspaper is governed by the Press and Registration of Books Act, 1867 whereas the Plaintiffs are running a TV Channel.
HELD
- That the act of the Defendants constitutes infringement of Registered Trade Mark of the Plaintiff as well as Passing Off under Section 29(1), 29(2) and Section 29(4) of the Trade Marks Act, 1999.
- The Defendants are liable to pay the Plaintiffs Rs. 5 lakhs as punitive damages and Rs. 25,000 as costs.
BASIS
- The Plaintiffs admittedly hold registration for the mark ‘Aaj Tak’, wherein they have claimed a user since June, 1995.
- The certificates constitute prima facie evidence of the date from which use is claimed and the use claimed is prior to the dates on which the Defendants had applied for registration of the newspaper under the mark ‘Aaj Tak’.
- The mark adopted by the Defendants is identical to the registered mark of the Plaintiffs phonetically, structurally and visually.
- As per International Classification of Goods and Services (Nice Classification) the sub-classification in Classes 38 concerns ‘news agencies/wire services’ and sub-classification in Classes 41 concerns ‘news reporter services’ and ‘publication of texts, other than publicity texts’ and thus dissemination of news and news reporting would be covered under Classes 38 and 41.
- Even if Classes 38 and 41 are held not to cover newspapers, the publishing of newspapers is an allied and cognate activity similar to the goods and services for which the word mark ‘Aaj Tak’ has been registered in favour of Plaintiffs.
- Adoption and use of the impugned mark by the Defendants will cause detriment to the distinctive character and repute of the Plaintiff’s mark.
- Defendants have not led any evidence and thus the failure by the Defendants to examine themselves and to submit themselves to cross-examination as witnesses would result in discrediting the truth of their case.
- The Press and Registration of Books Act, 1867 does not deal with various aspects of trade marks, the rights of a trade mark owner and remedies for infringement.
Author: Ankit Rastogi