Delhi High Court
Time Warner Entertainment Company, ... vs A.K. Das on 16 May, 1997
JUDGMENT M.K. Sharma, J.
1. The plaintiff, Time Warner Entertainment Company, L.P. instituted the present suit seeking for permanent injunction against the defendants restraining them from conducting their television services under the name, mark or logo CBO/CABLE BOX OFFICE or under any name or style which is deceptively similar to the name or mark or logo of the plaintiff called HBO/HOME BOX OFFICE. The petitioner has a division - HOME BOX OFFICE for its premium television programming with the logo called HBO. HBO operates the world's oldest and largest cable television channel under the trade mark HBO/HOME BOX OFFICE, in use since September, 1972. According to the plaintiff the said HBO/HOME BOX OFFICE played a pioneering role in the cable television business and operates in 96 countries. The said trade mark HBO/HOME BOX OFFICE have been used separately or in conjunction with each other in several countries of the world as early as 1972 and the said trade mark is or are registered and/or pending registration in over 140 countries. These marks of the plaintiff have been extensively advertised and promoted since the year 1972 as a result of which they have come to be identified with the television programmes of the plaintiff company exclusively worldwide and evokes an image of high quality subscription television programming. The plaintiff is present in India from the year 1994 when it applied for registration of its trade mark HBO. The said application is dated 8.11.1994 and registration applied for is for motion pictures, television films and video cassettes. The said application of the plaintiff is pending final decision.
2. After the plaintiff applied for the aforesaid registration with the intention of entering into the Indian Market a large number of representatives of the trade have been writing to the plaintiff seeking to collaborate or do business with the plaintiff thereby clearly acknowledging the reputation of the plaintiff as being the world leader in the Cable TV Market. The representatives of the plaintiff company also visited India on several occasions and held discussions with different representatives of the trade including the defendants. Wide spread publicity was given in the Indian media about the various discussions held by the plaintiff company with the defendants to finalise the modalities and terms of the joint venture sought to be entered into between them. Draft Memorandum of Under-standings were also exchanged between the plaintiff and the defendants. The said MOU has been placed on record showing joint venture agreement between the plaintiff and the defendants and lays down the principles of the joint venture agreement. Subsequently however, the said joint venture project could not take off and failed to materialise as the defendants failed to come up with any concrete business plan. In March, 1996 the plaintiff company came to learn that defendant No. 2 proposed to launch a Cable Television Service using the name CBQ and/or CABLE BOX OFFICE in relation to its proposed programming service. The defendants in its reply letter dated 15.4.1996 declined to reframe from using the marks CBO and/or CABLE BOX OFFICE. In view of the aforesaid stand taken by the defendants the plaintiff instituted the present suit with a further application under Order 39 Rules 1 & 2 seeking for grant of temporary injunction restraining the defendants from advertising, representing or, conducting their television service in the name, make or logo CBO or CABLE BOX OFFICE together or separately or from fusing the component BOX OFFICE in conjunction with any prefix or suffix or from using any other name, mark or logo which is deceptively similar to the plaintiff's trade mark HBO/HOME BOX OFFICE.
3. It was stated by the plaintiff that the trade mark HOME BOX OFFICE and its abbreviation HBO are both distinctive and have acquired substantial reputation and goodwill as originated from plaintiff and that while taking apart the words 'Home', Box' & 'Office' and even/or 'Home' or 'Box Office' they are common dictionary words but their use in conjunction is entirely fanciful and coined words exclusively of the plaintiff because, of long use, of the plaintiff of the aforesaid trade mark since the year 1972 and the, registration of the said marks in over 90 countries of the world and pendency of such application for registration in India from 1994. It is said that the said marks acquired a high degree of distinctiveness and have earned a meaning and connective of the goods of the plaintiff.
4. The further contentions of the plaintiff are that the defendants adopted a mark namely CABLE BOX 'OFFICE completely on the lines with the plaintiffs mark namely HOME BOX OFFICE and by using similar words to constitute CBO in order to come as close as possible to the plaintiffs mark HOME BOX OFFICE. Since the defendants at one time were actively engaged in negotiation for a joint venture to create a Hindi and English Channel with the plaintiff, the defendants have full knowledge about the business of the plaintiff and naturally its trade mark and reputation as well. Such joint venture purely between the plaintiff and the defendants was also reported widely in the media wherein the plaintiff has been referred to as an Indian Giant and Super Indian Giant. The plaintiff also got a market survey conducted in accordance with the established principles for the conduct of such service. Some supportive affidavits have also been filed which disclose that a substantial number of relevant classes of consumers is likely to get confused and deceived about a connection of the defendants with the plaintiff or to believe that the defendants are associated with the plaintiff.
5. Considering the aforesaid statements made in the plaint as also in the application filed by the plaintiff under Order 39 Rules 1 & 2 and also taking note of the fact that the defendants are yet to enter into the market of television programming under their proposed trade mark CBO/CABLE BOX OFFICE, this court granted an ad interim temporary injunction restraining the defendants, their officers, servants, agents from advertising and conducting their television services under the name, mark or logo CBO and/or CABLE BOX OFFICE,' together or separately or under any other mark which is deceptively similar to the plaintiffs trade mark HBO/HOME BOX OFFICE.
6. Subsequent thereto the defendants entered appearance in the suit and filed their reply to the aforesaid application filed by the plaintiff under Order 39 Rules 1 & 2 and also independently filed an application under Order 39 Rule 4 CPC.
7. In the aforesaid reply and the application filed by the defendants under Order 39 Rule 4 of the CPC it was stated that defendants No. 4 is engaged in business pertaining to commercial exhibition of Hindi Movie Cable rights, hiring and running of video tapes over Cable Television Networks since past four to five years under the trade name CABLE INDIA LIMITED. In or about the end of 1995 the defendant No. 4 decided to launch an exclusive Hindi Movie-Channel to be aired through cable television network of defendant No. 3 under the mark CABLE BOX OFFICE/CBO. It was further stated that by that time the defendant No. 3 was already established in the business of providing Cable Television Services for the entertainment to its subscribers under the name "IN NETWORK". The said name or mark CABLE BOX OF-FICE/CBO was adopted by defendant No. 4 from the first word of its corporate name and trading style 'Cable Video (India) Ltd.' and that the said mark was adopted bonafidely being descriptive of the nature, object and purpose of the channel which was designed to relay essentially Hindi Box Office hit films through cable network. The defendants also cited the meaning of the word/expression 'BOX OFFICE' from various dictionaries and stated that in relation to film related entertainment industry, it is common trade practice to use the expression 'Box Office' to convey and communicate the performance and popularity of films amongst their viewers and public in general. It further stated that CABLE BOX OFFICE was adopted by defendant No. 4 essentially to indicate the channel which was showing popular Hindi Movies on cable network. It was also stated that it is a very common practice in the Cable chan-
nel business not only in India but all over the world to refer to their channel in day to day business and advertising or even otherwise by its abbreviated name, and such abbreviations in the case of the defendants called CBO is in accordance with and in conformity with its trade practice all over the world in relation to its television channels and broad casts.
8. I heard Mr. Nariman, learned Senior Advocate assisted by Mr. Praveen Anand appearing for the plaintiff as also Mr. Sudhir Chandra, Senior Advocate assisted by Mr. Arun Kathpalia appearing for the defendants at length on the applications under Order 39 Rules 1 & 2 CPC filed by the plaintiff as also on the application under Order 39 Rule 4 CPC filed by the defendants.
9. Mr. Nariman, during the course of his arguments submitted that plaintiff is the proprietor of the trade mark HBO/HOME BOX OFFICE and that the plaintiff is the prior user of the said trade mark in relation to the programme in USA since 8.11.1972 and since then in 58 other countries. According to the learned counsel the plaintiff company and its trade mark HOME BOX OFFICE/HBO acquired a goodwill or international reputation qualifying to be a well known trade mark and its reputation spills over to India due to tourist travel and international advertising having a circulation in India and accordingly it acquired a trans-border reputation. In support of his sub-missions that spill-over of foreign reputation can be a proprietary right in India even when there is no domestic use the learned counsel placed reliance on a decision of the Supreme Court in the case of N.R. Dongre v. Whirlpool Corporation, 1996 PTC (16) 583 ; Calvin Klein Inc. v. International Apparel, 1995 IPLR Vol. 20 No. 2 83 : 1996 PTC (16) 293; Hitachi Ltd. v. Ajay Kumar Aggarwal and Ors.,1996 PTC (16)262 : 1995 (II) AD 457; Apple Computers Inc. v. Apple Leasing & Industries, 1993 IPLR (18) page 63. The learned counsel also relied upon the fact that the defendants negotiated with the plaintiff for setting up of an Indian Channel in collaboration with, the plaintiff and therefore, according to the learned counsel for defendants were aware of the status and reputation of the marks HBO/HOME BOX OFFICE and of its trans-border reputation and also registration of the said trade mark with its logo HBO in atleast 96 countries of the world and pendency of the application for its registration in India since April, 1994, and that inspite of the aforesaid awareness the defendants deceptively and dishonestly tried to use the similar trade mark with that of the plaintiff under the proposed trade mark CBO/CABLE BOX OFFICE. The learned counsel submitted that combination of the expanded form HOME BOX OFFICE and abbreviation HBO is a unique combination of specially coined and fancy words of the plaintiff and has assumed in the market a secondary meaning and that the defendants have dishonestly made an endeavour to copy the said trade mark of the plaintiff by using a similar combination CABLE BOX OFFICE and its abbreviation CBO. The learned counsel, in support of the aforesaid submissions relied upon the decision in Victor Company of Japan v. International Video Corporation, 167 USPQ 252; Weiss Associates Inf. v. HRL Associates Inc. 14 USPQ 2d 1840; Alberto Culver Co. v. FDC Wholesale Corporation, 16 USPQ 2d 1597. The learned counsel also relied upon the market survey report conducted by MODE a well known agency indicating that the marks HBO & CBO appear to be similar. According to the learned counsel such market survey report conducted in accordance with the well known principles for conducting such surveys are relevant and admissible evidence. The counsel further submitted that the balance of convenience is in favour of the plaintiff and against the defendants. He particularly relied upon the fact that the defendants immediately after failure of the negotiations with the plaintiff continued for almost 2 years and even announcement of a possible tie-up adopted a similar trade mark as that of the plaintiff. The learned counsel also relied upon the very fact that the defendants without informing the court voluntarily changed its channel name CABLE BOX OFFICE to CVO/CABLE VIDEO OPERA and has used the said name extensively since November, 1996. Since the defendants have acquired goodwill and reputation under the aforesaid channel name CVO/CABLE VIDEO OPERA and therefore, factum of irreparable injury and balance of convenience are against the defendants and in favour of the plaintiff.
10. Mr. Sudhir Chandra, Senior Advocate appearing for the defendants on the other hand submitted that the words 'BOX OFFICE' and for that matter HOME BOX OF-FICE is a generic name and the plaintiff cannot claim any exclusiveness. He further Submitted that the mark of the plaintiff HOME BOX OFFICE is not known to the public at large i.e. to the television viewers in India inasmuch as the plaintiff has no television channel in India whether locally or beaming in India from abroad and that the plaintiff has never used the said trade mark in India in relation to any goods either directly or through advertisement and therefore, it cannot be said that the plaintiff had acquired any goodwill either by use or by spillover reputed trade mark HOME BOX OFFICE/HBO in India and could not have acquired trans-border reputation. According to the learned counsel there was no advertisement in India of the trade mark of the plaintiffs in any magazines which is in circulation in India. The learned counsel further submitted that the words 'BOX OFFICE' is a highly descriptive and generic expression incapable of giving description of any one user and accordingly beyond the realm of monopolistic use and such descriptive/generic use of expression 'BOX OFFICE' is common to the practice in trade and usage in the industry. The learned counsel relied upon several documents filed in the case in support of his contentions that the use of the mark CABLE BOX OFFICE/CBO cannot be said to have led to any confusion or deception amongst the public amounting to passing off as alleged by the plaintiff, he relied upon the decisions reported in Newsweek Inc. v. British Broadcasting Corporation, 1979 RPC 441; Cellular Clothing v. Maxton & Murray, Vol. 16 RPC 397; Office Cleaning Services v. Westminister and General Cleaners, Vol. 63 RPC 39; and also the decision of Home Box Office Inc. v. Channel 5 Home Box Office Ltd. and Ors., FSR 1982, 449. The learned counsel also re-
lied upon a few passages from Halsbury's Laws of England and also the law of Passing off by Christopher Wadlow.
11. In the light of the aforesaid submissions of the learned counsel for the parties the issues that arise for my consideration is as to whether the actions of the defendant in using the trade mark CABLE BOX OFFICE/CBO is designed or calculated to lead purchasers to believe that they are using the plaintiffs goods. The questions, there fore, are -
(i) As to whether the plaintiff has a reputation with regard to the goods and if so whether it has also acquired a transborder reputation?
(ii) Whether there is a possibility of confusion between the trade mark of the plaintiffs and the defendants in the sense that the people watching the channel of the defendant might do so in the belief that the same is a channel of the plaintiff?
(iii) Whether any injury or damage could be suffered by the plaintiff in case the defendant is allowed to use the aforesaid trade mark?
(iv) Whether the plaintiff would suffer irreparable loss and injury in case the injunction sought for is not granted and in whose favour the balance of convenience lies?
12. The answers to the aforesaid questions are to be determined prima facie in order to determine if any relief might be granted to the petitioner at this interlocutory stage. In Wander Limited and Anr. v. Antox India Pvt., 1990 (Suppl) SCC 727 the Supreme Court has laid down the various factors to be considered for grant of an interlocutory injunction in a passing off action. The three factors namely the prima facie case, the balance of convenience and irreparable loss and injury must be present and satisfied before an injunction could be issued. In Ruston and Hornby Ltd. v.
Zamindara Engineering Co., the distinction between an infringement action and a passing off action is succinctly laid down when it was held that in a passing off action the issue is as follows:
"Is the defendant selling the goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiff's goods".
But in an infringement action the issue is as follows:
"Is the defendant using a mark which is the same as or which is the colourable imitation of the plaintiffs registered trade mark?"
In that case it was held that although the defendant is not using the trade mark of the plaintiff, the get up of the defendant's goods may be so much like the plaintiff that a clear case of passing off would be proved. It was further held that although the defendant may be using the plaintiffs mark the get up of the defendant's goods may be so different from the get up of the plaintiffs goods and the prices also may be so different that there would be no probability of deception of the public. Nevertheless, in an action on the trade mark, that is to say, in an infringement action, an injunction would issue as soon as it is proved that the defendant is improperly using the plaintiffs mark. There is a clear distinction between an action for infringement and an action for passing off although there is some similarity between the two in some respect as held by the Supreme Court of India in the aforesaid decision when it has held thus -
"In an action for infringement where the defendant's trade mark is identical with the plaintiffs mark, the Court will not inquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register, but something similar to it the test of infringement is the same as in an action for passing off. In other words, the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing off actions."
13. The learned counsel for the defendant drew my attention to the passage from Halsbury's Laws of England, 4th Edition, Volume 43 page 165 in support of his submission on that to sustain an action for passing off the following three elements must be present - (a) that the plaintiffs goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature; (b) that there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the-public to believe that goods or services offered by the defendant are goods or services of the plaintiff; and (c) that the plaintiff has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the defendant's misrepresentation".
14. According to the learned counsel for the defendants the plaintiff completely failed to show the existence of any of the ingredients let alone all the three elements. It would, therefore, be necessary to test the arguments of the learned counsel appearing for the defendants in the context thereof. The learned counsel for the defendant submitted that the plaintiff has no reputation or goodwill in India. According to him the plea of trans-border reputation said to have been acquired by the plaintiff as claimed by Mr. Nariman, during the course of his arguments could not be proved with sufficiency of evidence.
15. Mr. Nariman, appearing for the plaintiff however, relied upon the decision of the Supreme Court in N.R. Dongre v. Whirlpool Corporation Limited, reported in 1996 PTC (16) 583 and also the decision of this court in Hitachi Ltd. v. Ajay Kumar Aggarwal and Ors., reported in 1995 II Apex Decisions, 457.
16. Let me therefore, consider the issue as raised in the present case to find out and decide whether the plaintiff could acquire goodwill and reputation which ever acquired a trans-border reputation in respect of its trade mark HOME BOX OF-FICE/HBO. From the definition of "passing off in Ruston & Hornby Ltd. v.
Zamindara Engineering Co. (Supra) there does not seem to be any requirement that the plaintiff must carry on business in India before bringing an action for passing off for he can prove that he has otherwise acquired reputation in the country. This court had accession to deal with trans-border reputation in the case of Apple Computer Inc. v. Apple Leasing & Industries; (Supra) and also in N.R. Dongre v. Whirlpool Corporation, reported in 1996 PTC (16) 583 : 1995 (II) Apex Decisions (Delhi page 409 and also in William Grant & Sons Ltd. v. McDowell & Co. Ltd., 1996 PTC (17) 134 : 1994 (III) AD (Delhi) 65.
17. In Apple Computer Inc. (Supra) it was held that the Indian Courts have recognised the existence of trans-border reputation. In William Grant & Sons Ltd. (Supra) it was held that by means of decisions in various cases the courts have recognised that the reputation of a trader trading or carrying on business in another country can travel to country where he has carried no business. The trader's trans-border reputation can be on the basis of the extensive, advertising and publicity and such a trader could obtain an injunction in a court where he was not trading, to protect his reputation. It noted with approval the decision of the Bombay High Court in Kamal Trading Co. and Ors. v. Gillette U.K. Ltd.(1988) 1 Patent Law Reports 135. The Delhi High Court recognised the trans-border reputation also in an unreported judgment in Blue Cross & Blue Shield Association v. Blue Cross Health. Clinic and Ors., in Suit No. 2458 of 1988 dated 5.94.989, In William Grant & Sons Ltd. case (Supra) reference was made to said unreported decision along with another decision of the Bombay High Court with approval that publicity does not take place merely by advertisement in India and that advertisement in foreign newspapers and magazines, circulated in India, and freely imported in India, are read. Besides this, large number of Indians go abroad temporarily to other countries, and can have the opportunity to use or see the goods and on return of those persons to India the reputation of the goods used by those who go abroad, will stay in "their minds, and the memories of those goods would be revived by advertisements' seen in foreign magazines arid newspapers which are available in India.
18. In William Grant & Sons case (Supra this court further held that in cases of trans-border reputation the question of likelihood of deception loses its significance in passing off action, and what becomes more important, is whether use of something by the defendant, out of the whole used by the plaintiff, is deceptively similar to what is of the plaintiff that it would lead to erosion of the reputation of the plaintiff, erosion of what is distinctive, especially so in the case of potable products which cannot bear a mark and only their containers can have a label.
19. In Apple Computer Inc. (supra) it was held by this court that the principle laid down in Budweiser's case (1984) FSR 413, namely that unless there was business activity in the local jurisdiction in the place where passing off was alleged to have been taking place, passing off action could not be maintained, was not accepted following the decisions of Courts in New Zealand, Australia, Canada and India. It was indicated that there was a strong trend to prevent deception of the public whether it was deliberate or innocent and in India because there was greater need to catch up with the more advanced countries it was all the more necessary that the deception of the public, innocent or deliberate be avoided by injunction. It was also held that the fields of activity of the plaintiffs and the defendants were the same, as computer and their education went hand in hand and since the defendants gave no explanation for the use of the word 'Apple' in their trading style and name and explanation was required and as to why it was needed to adopt a foreign word for their trading style in stead of adopting a trading style with an Indian name in case of adoption of a foreign language word.
More recent is the decision of N.R. Dongre v. Whirlpool Corporation Ltd. (supra) wherein the findings of the Single Judge as affirmed on appeal by the Division Bench were upheld by the Supreme Court holding that long prior user of the name 'WHIRLPOOL' by plaintiff No. 1 and a transborder reputation and goodwill extending to India to the use of that name having been proved and that no reliable evidence of the defendants having marketed their washing machines for any considerable length of time prior to grant of the interlocutory injunction being forthcoming and irreparable injury to the plaintiffs reputation and goodwill with whom the name of 'WHIRLPOOL', is associated having been proved, injunction as prayed for was granted.
In Newsweek (Supra), it was held that so far the United Kingdom is concerned, the word "Newsweek' is a descriptive word and the average television viewers in the United Kingdom would be unlikely to associate the television programme with anything but the BBC. It also held that with regard to the plaintiffs proposed entry into television, the whole matter is speculative. Apparently, therefore, the facts of the present case are distinguishable. The plaintiff has already submitted application for registration and therefore, their entry in India cannot be said to be speculative. 20. In Home Box Office Inc. v. Channel 5 Home Box Office Ltd. and Ors., Fleet Street Reports (1982) page 449 (Supra) placed before me initially by the learned counsel for the defendants and later on also relied upon by the learned counsel for the plaintiff, it was held that the plaintiff has a substantial goodwill, and reputation in the United States. That the plaintiff desired to enter the Indian market in or about the year 1994 cannot be disputed in view of the fact that the plaintiff applied for registration under the trade mark HBO in the month of November, 1994. It is also not disputed before me that the defendants entered into a memorandum of understanding with the plaintiff in relation to TV channel and at that point of time there were extensive media reports on the proposed joint venture between the plaintiff and the defendants to create Hindi and English Language TV channel with the plaintiff. All these factors individually as also conjunctively establish that the business of the plain-
tiff was not only known only in U.S. A where it started its TV channel network but also has registration in over 90 countries of the world but also in India with the defen dants themselves proposing to tie up with the plaintiffs by means of the joint venture projects. The very action of the defendants in seeking to enter into a joint venture project with the plaintiffs business is implicit of the fact that the defendants were aware of the status and reputation of the marks HBO/HOME BOX OFFICE and since HBO/HOME BOX OFFICE is quite well known in U.S.A. and has registered office in as many as 90 countries, it definitely has an international reputation as a well known trade mark and such reputation could have spilled over to India due to tourist travel and international circulation of magazines in India like TIME Magazine. In my considered opinion the ratio of the decisions of N.R. Dongre (Supra), Calvin Klein Inc. (supra), Hitachi Ltd. (Supra), Apple Computer inc. (supra) and William Grant & Sons; (supra) are applicable to the facts of the present case, I accordingly hold that the trade mark of the plaintiff under the name and style of HOME BOX OFFICE/HBO with the logo HBO attained a trans-border reputation spilling over to India.
21. The next question that arises for my consideration is - Whether there is a possibility of confusion between the trade mark of the plaintiffs and the proposed trade mark of the defendants.
22. The question of similarity between the two trade marks or the likelihood of deception or confusion arising from their use is not to be decided 'in vacuo' but be determined always in the background of surrounding circumstances and while doing so the following factors must be taken into consideration:
i) The nature of the marks whether they are words coined or descriptive or non-descriptive.
ii) The degree of resemblance between the marks - phonetic or visual, iii) The nature of the goods.
iv) The similarity in the nature, character and purpose of the goods of the rival trader.
v) The class of purchasers who are likely to buy the goods bearing the marks.
vi) The mode of purchase of the goods,
vii) Any other surrounding circumstances.
23. The product/goods of the plaintiff and the defendant is the same i.e. to deal with the movie channel. Since the goods are going to be shown on the Television the logo HBO and/or CBO would have more relevance than the actual words namely - HOME BOX OFFICE or CABLE BOX OFFICE. The learned counsel appearing for the defendants, however, submitted that the word BOX OFFICE is a word common to the English language and is descriptive expression which is used in the film related industry to describe the nature of the services, goods as also their quality. He further submitted that the words BOX OFFICE used in conjunction with any prefix or suffix are incapable of distinguishing the goods/services of any one user and therefore, no one can have any monopolistic use of the said words. Even according to the defendant even the use of the word 'CABLE' before the words 'BOX OFFICE' sufficiently distinguish the trade mark of the defendant from that of the plaintiff. The counsel submitted that the use of descriptive terms could be said to have acquired an exclusiveness only when it is proved that the same has acquired a secondary meaning. In support of his submission he relied upon the passages from Law of Passing Off by Christopher Wadlow (Second Edition, 1995). He particularly referred before me the passage in para 6.25 at page 381 wherein it is stated:
"....Since at least as early as Reddaway v. Bahman the Jaw has recognised that a word or phrase which is apparently descriptive may acquire what is called secondary meaning and become distinctive of the, plaintiff s goods, services or business. However, there are important differences in the way the law treats descriptive terms as opposed to arbitrary marks such as "fancy" words, visual marks and get up.
(1) A mark which is prima facie descriptive will only be protected if it can be shown to have acquired secondary meaning; that is to say, if it has become distinctive of the plaintiff. Of course, distinctiveness is an essential pre-condition for all marks, whether descriptive or "fancy", but the burden of proof is significantly higher for prima facie descriptive terms. So much so, that the decision to categorise a term as "descriptive" or "fancy" is often treated as virtually determinative of the whole action. It is arguable that the law is sometimes too ready to attribute distinctive-ness to fancy terms on the strength of very slight user, and too slow to protect those which are descriptive in origin.
(2) As an entirely separate matter, a term may be descriptive in the sense that it is the name of the goods themselves. In other words, it is generic, although that word is not often used in the decided cases. Generic names are often also prima facie descriptive, but this is no more than a coincidence arising from the tendency of traders in many fields of business to favour descriptive or suggestive terms. If a term is the name of the goods as such, it cannot simultaneously denote any particular trade source. It may therefore, be used in respect of goods of that sort by any competing trader without there being passing off.
(3) The defendant likewise cannot be prevented from using a descriptive term in its original descriptive sense, unless it has wholly lost that descriptive sense and become distinctive of the plaintiff in every context. More usually, some vestige of descriptive meaning remains, even after the term has acquired enough secondary meaning to be protected as the plaintiffs trade mark. Equivocal or ambiguous use will be restrained, and often indicates lack of good faith, but if the defendant's use of the term is clearly and accurately in a descriptive rather than a trade mark sense then there is no misrepresentation to restrain. Passing off gives no monopoly rights to words or marks of any sort, and this is all the more important when the term is in common use outside its capacity as the plaintiffs trade mark.
(4) Even if the plaintiff succeeds in proving that a prima facie descriptive term has acquired some degree of secondary meaning, he will find that the scope of protection for his mark is narrower than for a wholly arbitrary term. There is a rule of law that relatively minor differences will suffice to distinguish the defendant's goods or business when both use a mark which is descriptive of the goods or services they provide. This applies even though the defendant is using the closely similar term, in a trade mark sense. Office Cleaning Association was sufficiently different to Office Cleaning services even though it was the trading name of the defendant. The plaintiff was free to choose a name of higher inherent distinctiveness, and the penalty for his failing to do so was that a degree of confusion would be tolerated as the only alternative to giving him an unfair monopoly."
24 In this connection he also referred to a passage from Halsbury's Laws of England, (4th Edition, Volume 48, page 119 para 190) wherein it is stated that:
"Special considerations apply where the plaintiff seeks to restrain as Passing Off the use of words or phrases which are descriptive of the goods or services concerned or of their geographical origin.
It is possible for a word or phrase which is wholly descriptive of the goods or services concerned to become so associated with the goods or services of a particular trader that its use by another trader is capable of amounting to a representation that his goods or services are those of the first trader. In these circumstances it is sometimes said that, although the primary, meaning of the words is descriptive, they have acquired a secondary meaning as indicating the products of a particular trader and no other. However, a trader who seeks to prove that words which are prima facie descriptive have acquired such a secondary meaning faces a heavy burden, and the fact that such words, if used on their own without differentiation or explanation, will deceive does not mean that they cannot fairly be used with distinguishing words or in a context where their meaning is descriptive. Where the similarity between the trade marks or names of the plaintiff and defendant lies in descriptive words, the court will generally accept that small differences will be sufficient to distinguish them, even if some degree of confusion arises between the plaintiff and the defendant as a result, as to do otherwise would allow the plaintiff unfairly to monopolise words to common use in the English language. Descriptiveness is a matter of degree, and words which have some reference to the goods or services concerned are not necessarily to be treated in the same way as if they were the natural or usual description of those goods or services."
25. He also relied upon the ratio of the decision in Office Cleaning Sendees, LD, v. Westminister and General Cleaners, LD (RPC Vol. LXIII, page 391), Cellular Clothing Company Ltd. v. Maxton & Murray, (House of Lords (1899) A.C. 326) and News-weeks Inc. v. British India Broadcasting Corporation, 1979 RPC 441.
26. On the other hand the learned counsel for the plaintiff submitted that the defendant's mark CBO/CABLE BOX OFFICE is deceptively similar to the plaintiffs trade mark HBO/HOME BOX OFFICE on account of the fact that the combination of the expanded form HOME BOX OFFICE and abbreviated form of HBO is a unique combination and what the defendants have done is to use a similar combination CABLE BOX OFFICE and its abbreviation CBO. The counsel further relied upon the market survey report in support of his submission that the defendants are trying to use a similar combination and that the two trade marks of the plaintiff and the defendants respectively are deceptively similar and that the said two marks HBO & CBO also appear visually similar.
27. I have already noticed that the goods/products of the plaintiff and the defendant are the same namely - marketing of TV movie Channel, the market survey conducted by MODE and relied upon by the plaintiff discloses that the two words would create confusion amongst the viewers. The learned counsel for the defendants advanced lengthy arguments on the admissibility of the aforesaid evidence contending inter alia that such evidence is inadmissible. I however, cannot accept the contention of the learned counsel for the defendants inasmuch as the said market survey report is placed before this court through affidavits and to such affidavits the provisions of the Evidence Act would not apply as laid down under Order 19 Rule 3 CPC. Section 1 of the Evidence Act lays down that the provisions of the Evidence Act would not apply to affidavit presented to a court. Under the aforesaid circumstances, I would hold that the market survey report when filed through affidavits could be looked into and relied upon for the purpose of ascertaining as to whether an interlocutory order could be made or not on the allegation of passing off of a trade mark.
28. The defendants were carrying on its business under the trade names "In Network" and "Cable Video India Limited". It is not understood why immediately after failure of the joint venture project negotiated between the plaintiff and the defendant had failed, the defendants desired to start a Cable Network under the name CBO/CABLE BOX OFFICR The suffix 'BOX OFFICE' being the same with the mark of the plaintiff the intention appears to be to capitalize on the goodwill and reputation of the plaintiff in the matter of television channel for the defendants desired to enter into joint venture project with the plaintiffs and having failed to enter into such a negotiation immediately turned around and made the announcement of starting a TV channel of its own under the trade name CBO/CABLE BOX OFFICE. Although the words 'BOX OFFICE' and 'HOME BOX OFFICE' individually could be said to be descriptive but by long user by the plaintiff of the words 'BOX OFFICE' under the trade name 'HOME BOX OFFICE' or HBO the same could be said to be fancy words with secondary meaning coming to be associated with the plaintiffs. Copying of the said words by the defendant is apparent on the face of the records of the case as has been indicated by me herein above. Therefore, dishonesty is writ large and in view of these circumstances the decision in Office Cleaning (supra) is not applicable. In this connection I can also appropriately refer to the observations of this court in William Grants & Sons case (supra). In cases of trans-border reputation the question of likelihood of deception loses its significance in passing of action and what becomes more important is whether the use of something by the defendant, out of the whole used by the plaintiff, that it would lead to erosion of the reputation of the plaintiff, erosion of what is distinctive. In the light of aforesaid discussion and finding the ratio of the decision in Cellular Clothing (supra) is not applicable to the facts of the present case.
29. In order to prove a prima facie case the plaintiff has to only show that it has a "strong arguable case" and not that it would get the relief under any circumstances. In my considered opinion the plaintiff has been able to prima facie prove that it has indeed a strong arguable case and therefore, a prima facie case has been established by the plaintiff.
30. The counsel for the defendants also submitted before me that plaintiff has failed to prove that any injury or damages would be caused to the plaintiff and therefore, when the said factor is absent no injunction could be granted in favour of the plaintiff.
31. I have given my anxious consideration to the aforesaid submissions. Unfortunately however, I cannot agree with the submission made. If the presence of the plaintiff in India is recognised holding that it has acquired a trans-border reputation and if it is found that the trade mark sought to be adopted by the defendants is similar to that of the plaintiff and the intention of the defendant is to deceive, the same would definitely 'lead to erosion of the reputation of the plaintiff in view of the fact that the plaintiff has already acquired a world-wide reputation and on failure of the defendant to live upto the aforesaid reputation the plaintiffs are bound to suffer damages as there is a possibility of the viewers believing that the broadcast of movies by the defendants is that of the plaintiff and if there be any short-comings on the part of the defendants the viewers will be deceived to consider the short-comings as that of the plaintiff. Accordingly, there is every possibility of the plaintiff suffering irreparable loss or damages if the injunction as prayed for is not granted.
32. This leaves me with the factor to be considered in the present case i.e. the balance of convenience. It has been brought on record that immediately after grant of the ad interim temporary injunction in favour of the plaintiff the defendant has started a TV Channel changing its earlier name from CBO/CABLE BOX OFFICE to CVO/CABLE VIDEO OPERA without informing this court about the change. This fact came to light only when William Fischer filed a reply affidavit in this court on 1.2.1997 annexing thereto annexures A & B. The said annexures A & B disclose that the defendants have now started a TV channel under the name CVO/Cable Video Opera. The said fact is also could not be disputed by the counsel for the defendants in respect of which specific queries were made at the lime of arguments. The learned counsel admitted that after the grant of the ad interim temporary injunction in favour of the plaintiffs in respect of CABLE BOX OFFICE/CBO the defendants have started CVO/CABLE VIDEO OPERA in place of CBO/BOX OFFICE and at present continuing operation under the aforesaid trade name. The aforesaid action on the part of the defendants cannot be appreciated in view of the fact that as against the defendants an ad interim temporary injunction was granted and if they desired to start a TV Channel during the period when the matter was subjudice before this Court they should have atleast informed this court that they had started another TV Channel under the name CVO/CABLE VIDEO OPERA. Be that as it may since the defendants have started another TV channel in the name and style of CVO/CABLE VIDEO OPERA and has invested huge amount for its use as also for advertisement, no damage would also be caused to the defendants if the order of injunction passed by this court is confirmed till the disposal of the suit as the defendant has already earned goodwill and reputation in respect of CVO/CABLE VIDEO OPERA to be continuance of which the plaintiff cannot and has no objection. In the context of discussion the balance of convenience is also in favour of the plaintiff.
33. In the result, therefore, I allow the application filed by the plaintiff under Order 39 Rules 1 & 2 and confirm the order of injunction passed by me on 2.9.1996 till the disposal of the suit. Accordingly, the application filed by the defendants praying for vacation of the interim order stands rejected.
Let the suit be listed before the Joint Registrar for admission/denial of documents on 24.7.1997.