Delhi High Court: In a case wherein Defendant 1, Capital TV had produced programs under names that were identical to the plaintiff’s, TV Today Network Ltd. Programs, Prathiba M. Singh, J., restrained defendants from using the logos/marks “TO THE POINT”, “HALLA BOL”, “SPECIAL REPORT”, “BLACK & WHITE”, “KISMAT CONNECTION” or any other mark that was deceptively similar to plaintiff’s marks, in respect of news/current affairs programmes. However, the individual words by themselves, which were part of the common parlance in Hindi and English language, could be used in a different manner or in conjunction with other combinations in a way that the programs of Defendant 1 were clearly differentiable from plaintiff’s programs.
Background
The plaintiff filed the present suit seeking protection in respect of the programs run on its television channels. The plaintiff runs and broadcasts well known TV channels namely ‘AajTak’, ‘AajTak HD’, ‘India Today Television’ and ‘Good News Today (earlier known as Tez)’. The plaintiff had businesses in broadcasting, publishing, e-commerce, etc. and was part of the leading media group ‘India Today Group’, which also published the famous magazine ‘India Today’ amongst various other well-known magazines.
The plaintiff submitted that the programme names ‘TO THE POINT’ and ‘SPECIAL REPORT’ were registered under the Trade Mark Act, 1999 and Defendant 1, Capital TV had produced programs under names that were identical to the plaintiff’s programs. Defendant 1 was running a digital news and current affairs platform on its website www.capitaltv.in and had presence on YouTube, Facebook, Instagram, and X (Twitter) platforms.
Comparison of competing names used by plaintiff and Defendant 1 were as follows:
Analysis, Law, and Decision
The Court observed that plaintiff’s television channels were quite popular and some of the programmes were being curated and produced by plaintiff in a particular manner and the names had also been assigned based on the type of content in the said programmes. The Court opined that though the specific words used for the news programme might themselves not be capable of being monopolized, the combination marks could be protected if they had acquired a secondary significance. The Court further opined that defendants were imitating several logos/marks of plaintiff in identical/deceptively similar fonts, appearance, and color scheme. The fact that the names had been clearly picked from various television programmes of plaintiff would show that the intention of Defendant 1 was either to pass off its programmes as that of plaintiff or to claim some connection or affiliation with plaintiff.
The Court held that a prima facie case of passing off, trade mark infringement had been made out by plaintiff. The Court opined that balance of convenience lies in the favour of plaintiff, and if no injunction was passed at this stage, irreparable harm would be caused to plaintiff. Thus, the Court restrained defendants from using the logos/marks “TO THE POINT”, “HALLA BOL”, “SPECIAL REPORT”, “BLACK & WHITE”, “KISMAT CONNECTION” or any other mark that was deceptively similar to plaintiff’s marks, in respect of news/current affairs programmes. However, the individual words by themselves, which were part of the common parlance in Hindi and English language, could be used in a different manner or in conjunction with other combinations in a way that the programs of Defendant 1 were clearly differentiable from plaintiff’s programs.
The Court further ordered Defendant 1 to take down all links relating to these programmes on any online platform, failing which plaintiff shall communicate these URLs to the respective platforms, which shall take down the URLs as long as the names of the programmes were identical and if there were any doubts as any links/URLs, parties were permitted to approach this Court for clarification.
The matter would next be listed on 09-04-2024.
[TV Today Network Ltd. v. Capital TV, 2023 SCC OnLine Del 6550, Order dated 12-10-2023]
Advocates who appeared in this case :
For the Plaintiff: Arunabh Chowdhury, Radhika Gupta, Karma Dorjee, Advocates
For the Defendants: Mamta Rani Jha, Rohan Ahuja, Shruttima Ehersa, Vatsalya Vishal, Amishi Sodani, Rahul Choudhary, Advocates
Buy Trade Marks Act, 1999 HERE
