Delhi High Court grants permanent injunction to CNN News Channel for mark ‘CNN’ in relation to news services

Delhi High Court: In a case wherein a trade mark infringement suit was filed by the Plaintiff, Cable News Network Inc (‘CNN’) for grant of permanent injunction and restraining Defendant 1, City News Network from using the mark and or the mark ‘CNN’, C. Hari Shankar, J.*, granted permanent injunction to the Plaintiff and restrained Defendant 1 from using the impugned marks or any other mark deceptively similar to the registered device mark of the Plaintiff, either for providing news services or any goods or services in connection. The Court further directed Defendant 1 to remove related websites and to pay Rs. 7 lakhs cost to the Plaintiff.

Background

The Plaintiff owned a news channel under the mark and the mark was registered in favour of the Plaintiff under classes 9 and 16 with effect from 31-12-1991 and further in classes 38 and 41 which effected from 23-02-2004. The marks , and ‘CNN’ were displayed on the Plaintiff’s channel. Defendant 1 was an entity located in Lucknow and operated a website under the marks and . The Plaintiff submitted that the marks and websites used by Defendant 1 were identical to the plaintiff’s registered trade marks and there was likelihood of confusion in the mind of the public. Thus, the plaintiff approached this Court seeking a decree of permanent injunction restraining Defendant 1 from using the impugned marks. he dispute with Defendant 2 was settled with the intervention of the Delhi High Court Mediation and Conciliation Centre.

Analysis and Decision:

The Court noted that the mark ‘CNN’ had been declared as a well-known trade mark within the meaning of Section 2(1)(zg) of the Trademarks Act, 1999 (‘the Act’) by the Court in the case of Cable News Network, Inc. v. Anshu Jain, 2017 SCC OnLine Del 11885.

The Court opined that though the Plaintiff did not possess any word mark registration for ‘CNN’, it constituted the entirety of the registered device mark of the Plaintiff which was ‘CNN’ represented in a particular and peculiar pictorial fashion. The Court further opined that the Plaintiff was entitled to a monopoly to use the acronym CNN, especially where it had been used in respect of news channels or in connection with dissemination of news or for any related services.

The Court further opined that the trade mark infringement would fall within the meaning of Section 29(2)(c) read with Section 29(3) of the Act as the marks were similar and were used in respect of goods or services which were identical in nature. The Court observed that Defendant 1’s use of the expanded form ‘CITY NEWS NETWORK’ would exacerbate the possibility of confusion and the viewer might be led to believe that the services were in fact provided by the Plaintiff, which would constitute ‘passing off’.

The Court relied on Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65 and in Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90 and opined that in case of infringement and passing off, an injunction must follow.

Thus, the Court opined that the Plaintiff was entitled to a decree of permanent injunction. The Court considered that Defendant 1 had infringed the mark for providing identical services and got monetary profit using impugned mark and therefore restrained Defendant 1 from using the marks and or the mark ‘CNN’ or any other mark which might be deceptively similar to the registered device mark of the plaintiff, either for providing news services or in connection with any other goods or services. The Court further directed Defendant 1 to remove its websites or social media webpages and to pay Rs. 7 lakhs as cost to the Plaintiff.

[Cable News Network Inc v. City News Network, 2023 SCC OnLine Del 7676, decided on 04-12-2023]

*Judgment authored by: Justice C. Hari Shankar

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Advocates who appeared in this case :

For the Plaintiff: Dhruv Anand, Udita Patro and Nimrat Singh, Advocates

For the Defendants: Rishikesh Kumar, Sudhir, Sumit Choudhary, Sudhir Kumar Shukla and Sheenu, Advocates

Buy Trade Marks Act, 1999   HERE