Delhi High Court - Orders
Ht Media Limited & Anr vs Hindustan News Network & Ors on 27 September, 2023
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~57
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 681/2023 & I.As. 18978/2023, 18979/2023, 18980/2023,
18981/2023
HT MEDIA LIMITED & ANR. ..... Plaintiffs
Through: Mr Sidharth Chopra, Mr Vivek
Ayyagari and Mr Angad S Makkar,
Advocates (M: 9897896284).
versus
HINDUSTAN NEWS NETWORK & ORS. ..... Defendants
Through: Ms. Shweta Sahu and Mr Brijesh
Ujjainwal, Advs. for D-2 (M:
9987115749).
Mr. Aditya Gupta & Mr. Sauhard
Alung, Advs. for D-4 (M:
9425341404).
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 27.09.2023
1. This hearing has been done hybrid mode.
I.A. 18981/2023 (for exemption)
2. This is an application seeking exemption from filing originals/certified/cleared/typed or translated copies of documents, left side margins, electronic documents, etc. Original documents shall be produced/filed at the time of Admission/Denial, if sought, strictly as per the provisions of the Commercial Courts Act and the DHC (Original Side) Rules, 2018.
3. Exemption is allowed, subject to all just exceptions. Accordingly, the application is disposed of.
CS(COMM) 681/2023 Page 1 of 9This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 28/09/2023 at 21:42:20 I.A. 18980/2023 (for additional documents)
4. This is an application seeking leave to file additional documents under the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (hereinafter, 'Commercial Courts Act'). The Plaintiffs, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act and the DHC (Original Side) Rules, 2018.
5. Application is disposed of.
I.A.18979/2023 (for court fee)
6. This is an application for seeking exemption from filing the Court fees. Let the same be deposited within one week, and the challan be placed on record.
7. The application is disposed of.
CS (COMM) 681/2023
8. Let the plaint be registered as a suit.
9. Issue summons to the Defendants through all modes upon filing of Process Fee.
10. The summons to the Defendants shall indicate that the respective written statements to the plaint shall be positively filed within 30 days from date of receipt of summons. Along with the written statements, the Defendants shall also file an affidavit of admission/denial of the documents of the Plaintiffs, without which the written statement shall not be taken on record.
11. Liberty is given to the Plaintiffs to file the replication within 15 days of the receipt of the written statement. Along with the replication, if any, filed by the Plaintiffs, an affidavit of admission/denial of documents of the Defendants, be filed by the Plaintiffs, without which the replication shall not CS(COMM) 681/2023 Page 2 of 9 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 28/09/2023 at 21:42:20 be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
12. List before the Joint Registrar for marking of exhibits on 16th November, 2023. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
13. List before Court on 21st March, 2024.
I.A.18978/2023 (u/O XXXIX Rules 1 & 2 CPC)
14. Issue notice in the application.
15. The Plaintiffs' case is that it is the owner of the mark 'HINDUSTAN' which was adopted by it in 1913 and the said name has over the time been evolved into 'HINDUSTAN TIMES'. The mark 'HINDUSTAN TIMES' and the 'HINDUSTAN ' are used for print publications by the Plaintiffs. The Plaintiffs' newspapers 'HINDUSTAN TIMES' having been published since 1924 is also claimed to have been associated with the independence moment and owing to use of almost a 100 years, the name is now a household name in India.
16. The Plaintiffs have also, forayed into various other media including FM Radio Channels etc under the name 'Fever 104 FM', 'Radio Nasha 107.2 FM' and Radio One 94.3 FM'. The newspaper 'HINDUSTAN ' of the Plaintiffs is also stated to be the third largest read in daily newspapers across various languages. The Plaintiffs also claim rights in the mark 'HINDUSTAN TIMES' and 'HINDUSTAN ' being registered in various Classes including Class 16, 38, 41 and 42.
17. The Plaintiffs also claim copyright in the logo 'HINDUSTAN TIMES'.
18. It is stated that Plaintiff No.1- HT Media Ltd., is a public limited company with its registered office in New Delhi. Plaintiff No.2-Hindustan CS(COMM) 681/2023 Page 3 of 9 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 28/09/2023 at 21:42:20 Media Ventures Ltd., is a subsidiary of Plaintiff No.1 and is also involved in the print media and digital publication business. Plaintiff No.2 has its registered office in Patna and its corporate office in New Delhi, where it maintains its financial records.
19. The Plaintiffs' grievance is that the Defendant No. 1-Hindustan News Network has registered a domain name 'www.hindustannewsnetwork.in' on 20th March, 2023. It is stated that the Defendant No. 1 is using the said website for the purposes of disseminating news, which is an identical service in which the Plaintiffs are engaged. Moreover, the logo being used by the Defendant No. 1 has a writing style completely identical to that of the Plaintiffs. In the year 2022-23, the revenue earned by Plaintiff No. 2 is around 47,000 lakhs, and they expended around 3800 lakhs for publicity, in the same year.
20. The Plaintiffs' reputation in the field of news broadcast being unparalleled, Mr. Sidharth Chopra, ld. Counsel appearing for the Plaintiffs, submits that this is a case of complete dishonesty where the Defendants are using an identical mark 'HINDUSTAN TIMES' for identical services.
21. He further submits that the complete details of the Defendants were not available, and through the exchange of legal notice dated 22 nd August 2023, the Defendant No. 1 has been impleaded. The Registrant of the domain name is one Mr. Mohit, who has also filed a trademark application bearing '5178652' on 19th October 2021 for 'HINDUSTAN NEWS NETWORK' on a proposed to be used basis, but the domain name itself was registered only on 20th March, 2023. The comparative table of the Plaintiffs' and the Defendant No. 1's marks is set out below:
CS(COMM) 681/2023 Page 4 of 9This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 28/09/2023 at 21:42:20
22. The domain name Registrar is Defendant No. 2-M/s GoDaddy.com, LLC, who is represented before the Court. Defendant No. 3 is Meta Platforms Inc. and Defendant No. 4 is Google LLC. The Plaintiffs also object to Defendant No. 1 running a Youtube Channel called 'HINDUSTAN NEWS NETWORK'.
23. After having perused the Plaintiffs' reputation in the mark 'HINDUSTAN' since the last more than 100 years, and the manner in which Defendant No. 1 has entirely imitated the logo, writing style and color combination for a news network, this Court is of the opinion that the Defendants' attempt is merely to pass of their channel and name as that of the Plaintiffs, or as connected with the Plaintiffs.
24. Moreover, in the reply to the legal notice dated 22nd August 2023, the Defendant No. 1 took a position that he had already filed a trademark application for 'HINDUSTAN NEWS NETWORK' and that the said name/mark is different. The said reply is set out below:
"Dear , Hindustan Media Ventures Ltd and HT Digital Streams Ltd. We are not using your Trademarked Name "Hindustan", or any of Following, that you mentioned in the mail.CS(COMM) 681/2023 Page 5 of 9
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 28/09/2023 at 21:42:20 ....
Our Name is "Hindustan News Network" which does not match with your name or website or trademark, following is the trade mark applied for our name, please refer to the information given by us, if there is any problem or objection, you can contact us. Trade Mark: Hindustan News Network Application No. 5178652 Date Application : 19/10/2021"
25. Considering the above factual circumstances, this Court opines that the impugned marks are absolutely identical to the Plaintiffs' mark 'HINDUSTAN'. The segment of services where the Plaintiffs and the Defendant No. 1 operate are also identical. The logo and writing style in the impugned marks are identical to the Plaintiffs' mark 'HINDUSTAN'. The consumers and viewers the Defendant No. 1 and the Plaintiffs would be targeting are the Hindi-speaking segment of news readership/population, which is also identical in the present case.
26. In Laxmikant V. Patel v. Chetanbhat Shah & Ors., MANU/SC/0763/2001, the Supreme Court categorically observed that in cases where passing off is made out, the Court ought to grant an immediate ex-parte injunction. The relevant extract of the order is set out below:
"14. [.....Once a case of passing off is made out the practice is generally to grant a prompt ex-parte injunction followed by appointment of local Commissioner, if necessary....]"
17. We are conscious of the law that this Court would not ordinarily interfere with the exercise of discretion in the matter of grant of temporary injunction by the High Court and the Trial Court and substitute its own discretion therefore except where the discretion has been shown to have been exercised arbitrarily or CS(COMM) 681/2023 Page 6 of 9 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 28/09/2023 at 21:42:21 capriciously or perversely or where the order of the Court under scrutiny ignores the settled principles of law regulating grant or refusal of interlocutory injunction. An appeal against exercise of discretion is said to be an appeal on principle. Appellate court will not reassess the material and seek to reach a conclusion different from the one reached by the court below solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been exercised by the trial court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial court's exercise of discretion [(see Wander Ltd. v. Ant ox India P. Ltd. MANU/SC/0595/1990 and N.R. Dongre v. Whirlpool Corporation and Anr.: MANU/SC/1223/1996 :
(1996)5SCC714 . However, the present one is a case falling within the well accepted exceptions. Neither the Trial Court nor the High Court have kept in view and applied their mind to the relevant settled principles of law governing the grant or refusal of interlocutory injunction in trade mark and trade name disputes. A refusal to grant an injunction in spite of the availability of facts, which are prima facie established by overwhelming evidence and material available on record justifying the grant thereof, occasion a failure of justice and such injury to the plaintiff as would not be capable of being undone at a latter stage. The discretion exercised by the Trial Court and the High Court against the plaintiff, is neither reasonable nor judicious. The grant of interlocutory injunction to the plaintiff could not have been refused, therefore, it becomes obligatory on the part of this Court to interfere."
27. In Midas Hygiene Vs. Sudhir Bhatia, (2004) 3 SCC 90, the Supreme Court observed that if a prima facie dishonest intention to pass off one's goods as those of appellant is proved and even if there is mere delay, interim CS(COMM) 681/2023 Page 7 of 9 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 28/09/2023 at 21:42:21 injunction ought to be granted. The relevant extract of the order is set out below:
"5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.
6. ....
7. In our view on the facts extracted by the learned Single Judge, this was a fit case where an interim injunction should have been granted and should have been continued. In our view the Division Bench was entirely wrong in vacating that injunction merely on the ground of delay and laches. Under the circumstances, the impugned order is set aside and that of the trial court is restored. It is clarified that all observations made by the High Court and by this Court are prima facie and shall not be taken into consideration at the time of the trial of the suit."
28. Thus, in terms of the judgments extracted above as also the decision in Midas Hygiene (supra) and Laxmikant Patel (supra) it is clear that in cases relating to trade mark violations and passing off, if the evidence establishes a prima facie case, even at the ex-parte stage, injunction ought to be granted.
29. In this view of the matter, the Plaintiff has made out a prima facie case to grant the ex-parte ad-interim injunction. The Defendant No. 1 shall stand restrained from using the mark 'HINDUSTAN' as also the logo or any other name including the 'HINDUSTAN NEWS NETWORK' which is identical and similar to the Plaintiff's name/mark 'HINDUSTAN'. The Defendant No. 1 is restrained from using the following logo:
CS(COMM) 681/2023 Page 8 of 9This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 28/09/2023 at 21:42:21
30. Defendant No. 2-GoDaddy to lock and suspend the said domain name 'www.hindustannewsnetwork.in' within 72 hours of today's order. The specific URLs to be locked and suspended shall be communicated by the Plaintiffs to Defendant No. 4- Google LLC who shall take down the Youtube channels. The Youtube channel of 'HINDUSTAN NEWS NETWORK' shall also be taken down by the Defendant No. 4 within 72 hours. The URLs are mentioned at page 65 of the plaint. The Plaintiffs are also free to communicate any other infringing URLs to the Defendant No. 2 and Defendant No. 4.
31. The details of the Defendant No. 1, if any, such as address, email address, mobile number, KYC details, available with Defendant No. 2- GoDaddy shall also be communicated to the ld. Counsel for the Plaintiffs.
32. In addition, any other social media postings and listings including any Facebook pages shall also be taken down upon the infringing URLs being communicated to Defendant No. 3-Meta Platforms Inc. Ld. Counsel Mr. Tejas Karia, who is present in Court, is requested to accept notice on behalf of Defendant No.3.
33. Compliance under Order XXXIX Rule 3 within one week.
34. List before the Court on 21st March, 2024.
PRATHIBA M. SINGH, J.
SEPTEMBER 27, 2023 mr/dn CS(COMM) 681/2023 Page 9 of 9 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 28/09/2023 at 21:42:21