Delhi High Court
Bennett, Coleman & Company Ltd. vs Real Video Impact Pvt. Ltd. And Anr. on 8 August, 2014
Author: Manmohan Singh
Bench: Manmohan Singh
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Order delivered on: August 8, 2014
+ CS (OS) 1701/2014
BENNETT, COLEMAN & COMPANY LTD. ..... Plaintiff
Through Ms. Pratibha M. Singh, Sr.
Adv. with Kunal Tandon, Ms.
Nidhi Jain
versus
REAL VIDEO IMPACT PVT. LTD. AND ANR. ...Defendants
Through Mr. Romy Chacko
CORAM:
HON'BLE MR.JUSTICE MANMOHAN SINGH
MANMOHAN SINGH, J. (Oral)
1. By way of the present suit the plaintiffs seek permanent injunction alongwith other consequential reliefs against the defendants in respect of the mark "Now". It is stated that the defendants are unauthorizedly, illegally, dishonestly and with malafide intent using and diluting the mark "Now" in respect of their television channel known as TV NOW, which is deceptively similar of the Plaintiff's TIMES NOW thereby showing that it is associated with the plaintiff.
2. The Plaintiff, popularly known as the Times Group Company, primarily runs the print media since 1838 and became the flagship company of the Times group. The Times Group has a number of CS(OS) No.1701/2014 Page 1 of 9 publishing centres, printing centres, sales offices, over 11,000 employees, dailies, lead magazines, niche magazines and Radio Stations. The major brands owned by the Plaintiff in its print media are The Times of India, The Economic Times, Navbharat Times, etc. Apart from being involved in various businesses relating to Media, the Plaintiff is also engaged in television business by broadcasting televisions channels popularly known as "Times Television Network Channels", some of which are broadcast through its 100% owned subsidiaries Times Global Broadcasting Company Limited and Zoom Entertainment Network Limited. "Times Now", "ET Now", "Movies Now", "Romedy Now", "Zoom" and "Romedy Now+" are being run successfully for the past more than 9 years. The details of scale, business and goodwill of each of the respective channels covered under Times Television Network is given in Para 8 of the plaint.
3. It is stated that the channels of the Plaintiffs are well known, have a huge subscriber base in India and internationally, and are extremely popular, and cater to a class of subscribers. All the channels put together have a reach of 27 million in India and 15 millions TVTs. 4 out 5 channels are named with the trademark 'NOW'. The Plaintiff has been using the trademark "Now" since 2006.
4. It has been stated that initially the mark "NOW" was suffixed with the known brand of the Plaintiff 'Times', however, with the passage of time, the trademark NOW became a well known trademark, and came to be associated and identified with the Times Group. The suffix NOW attached with any other word for the CS(OS) No.1701/2014 Page 2 of 9 purposes of the name of a channel is distinctive of the Plaintiff. The NOW series of names for TV channels is exclusively associated with the Plaintiff. Thus, the Mark NOW suffixed with all the channels that were operated by the Plaintiff or its subsidiaries e.g. Movies Now, Romedy Now and Romedy Now+ to create its separate identity. The NOW marks and series have acquired distinctiveness and earned immense reputation as a brand and identity of the Plaintiffs TV channels.
5. The plaintiff has spent huge amount on developing and creating the various artistic logos of the mark NOW in combination and in isolation. The plaintiff has also spent substantial amount for the production, advertisement, marketing and publicity of the mark NOW to create an image, goodwill and reputation. The plaintiff has applied for the registration of a total of 158 marks containing the mark "NOW", out of which 64 marks have been registered in the name of the plaintiff. A list of the registered marks containing the mark "NOW" under various classes is given in Para 12 of the plaint.
6. It has been stated that the Plaintiff's channels are differentiated, known and recognized due to the word and logo "Now" which is suffixed with each of their channel title except "Zoom" and all viewers from across the world recognize the channels as Plaintiff's or Times Television Network channels from the appearance of the word "Now" in their logos and titles. In fact, the word 'NOW' is used and associated with the Times Television Network Group, as the same has been coined by the Times Group has attained the status of a well CS(OS) No.1701/2014 Page 3 of 9 known trademark and distinctiveness. It is stated that the word NOW used in respect of television channels is a suggestive mark and is inherently distinctive.
7. There has been progressive increase in the reach of the Mark "NOW" over the years in terms of viewership, market share and the distribution platforms by the association of the Mark with the Plaintiff's channels like Times Now, ET Now, Movies Now, Romedy Now, since the launch of the channels the Plaintiff has been using the mark "NOW" for the purposes as proposed by the registered trade mark and continues to provide the services under the mark "NOW", and has plans to launch many other television channels associated with the mark "NOW" in near future.
8. Defendant No.1 is a broadcast equipment leasing and rental company engaged in the business of and providing turnkey solutions in professional Audio/Video system integration and designs for television broadcasting. Defendant No.2 is the channel run by the Defendant No. 1.
9. Around April, 2014, the Plaintiff learnt that the Defendants are running a news channel with the name "TV NOW", in Malayalam language in Kerala. The logo and the placement of the word "NOW" in the Defendants' channel's name and logo is stated to be deceptively similar to the logo and the placement of the word 'NOW' in the logo owned by the Plaintiff.
CS(OS) No.1701/2014 Page 4 of 910. Even though the Defendants claim to have been running the said Channel for a period of about 10 months, the market information reveals that the said channel "TV Now" is still at testing stage, and has not been commercially commissioned, except that one MSO based in Kerala is showing the said channel in its digital feed, which shows that the channel is launching soon.
11. Certain agencies have already inquired about the launch of the channel TV Now from the Plaintiff and whether the same is being launched by the Times Group.
12. Defendants had initially used the word "Perfect News" for its channel in its application filed with the Ministry of Information and Broadcasting. However, for reasons best known to the Defendants, they changed the name of the channel from "Perfect News" to "TV Now". It is alleged by the plaintiff that the said change of the name was done with an intention to gain mileage of the scale, business, reputation and goodwill of the mark NOW which is associated with Times Group only, being a well known trademark.
13. Defendant No. 1 applied for registration in the name of "Perfect News" and then changed it to "TV Now" and even the same is objected by the Examiner, Trademark Mark Registry under Section 9 and 11 of the Trademarks Act, 1999. The Defendant No.1 has also not informed the Ministry of Information and Broadcasting about the said development. Furthermore, the mark has been shown to be in use only since 29th January, 2013.
CS(OS) No.1701/2014 Page 5 of 914. The Plaintiff thereafter found out that the Defendants have applied for registration of their mark "TV Now" both word and logo under class 38 with the Registrar of Trade Mark, Chennai. The Registry had raised objections to the same and issued Examination Reports dated 20th May, 2013 and 7th January, 2014. Defendants have till date not filed any response to the said Examination Report. Despite of its marks are objected by the Examiner of Trade mark Registry, the Defendants are running the website www.tvnowlive.com for its channel "TV Now" by using the Mark Now.
15. It has been stated that the Plaintiff, on learning about the Defendants' channel, had issued a Cease and Desist notice dated 30th April, 2014, however, the Defendants sent an evasive and frivolous reply dated 3rd May, 2014 to the said cease and desist notice. The Defendants, despite the receipt of the Cease and Desist Notice, have continued to use the Plaintiff's Mark in gross infringement and violation of the Plaintiffs registered mark in various classes. Hence the plaintiff filed the present suit.
16. When the suit was listed before Court alongwith the interim application being I.A. No. 10849/2014 under Order 39 Rule 1 & 2 CPC, the defendants were restrained from adopting and using the plaintiff's registered trademark "NOW" or by suffixing or prefixing with any other word, mark, logo or with any other mark of the plaintiffs as a trademark or trading style or domain name or key words or metatags, amounting to infringement, passing off and dilution of the plaintiff's trademarks and from using the website/domain name CS(OS) No.1701/2014 Page 6 of 9 TVNOWLIVE.COM, which are identical or similar to the plaintiff's domain name/website TIMESNOW.TV; MOVIESNOW.CO.IN; ROMEDYNOW.COM, ECONOMICTIMES.INDIATIMES.COM/ET- NOW and from transferring, alienating or in any manner creating any third party interest in the domain name TVNOWLIVE.COM.
17. Thereafter the defendants filed the application being I.A. No. 11521/2014 under Order 39 Rule 4 CPC for vacation of the ex parte interim order.
18. Both the applications were listed before Court. However, the learned counsel for the defendants made a statement before the Court on 23rd July, 2014 that the defendants are prepared to settle the matter. The matter was adjourned for 8th August, 2014.
19. On 8th August, 2014, the learned Counsel for the defendants has handed over the original letter dated 28th July, 2014 of the defendants which reads as under:
"28/07/2014 To Mr. ROMY CHACKO, Advocate, 199, Samachar Apartments, Mayur Vihar Phase 1, Delhi-110 091 Sir, Sub : CS(OS) No.1701/2014 - Bennett Coleman & Co. Ltd. vs. Real Video Impact Pvt. Ltd. & Ors. Ref : Your letter dated 24/07/2014 CS(OS) No.1701/2014 Page 7 of 9 With reference to the above I do hereby inform you that we have already changed name of our channel from 'TV NOW' to 'TV NEW' and the name of our website from 'TV NOW live.com' to 'TV NEW.in'.
The name change has been made effective from 4th July, 2014. We have already applied to the MIB for approval of the new name and this has been duly approved.
We do hereby undertake that we have no intention to use the suffix 'NOW' or name the website 'TV NOW' hereafter and we will not be using such names.
We request you to please take necessary steps to get the suit filed by M/s. Bennett Colman & Co. Ltd. withdrawn any damage to us.
Thanking you Yours faithfully, For Real Video Impact Pvt. Ltd.
(Bhagath Chandrasekhar) Director"
20. The learned counsel states that the defendants have no objection if permanent injunction is passed in terms of Para 11 of the interim order dated 29th May, 2014 already passed in I.A. No. 10849/2014. The same is reproduced as under:
"11. Accordingly, the defendants, their directors, officers, employees, cable operators, multi system operators, direct to home operators and all such persons associated with or in conjunction with the defendants are restrained from adopting and using the plaintiffs? registered trademark "NOW" or by suffixing or prefixing with any other word, mark, logo or with any other mark of the plaintiffs as a trademark or trading style or domain name or key words or metatags, amounting to infringement, passing off and dilution of the plaintiffs? trademarks and from using the website/domain name TVNOWLIVE.COM, which are CS(OS) No.1701/2014 Page 8 of 9 identical or similar to the plaintiff's domain name/website TIMESNOW.TV; MOVIESNOW.CO.IN; ROMEDYNOW.COM,ECONOMICTIMES.INDIATIMES. COM/ ET-NOW and from transferring, alienating or in any manner creating any third party interest in the domain name TVNOWLIVE.COM., till the next date of hearing."
In view of the statement made by the learned counsel for the defendants, the learned counsel for the plaintiff is not pressing for other reliefs including the reliefs of damages, rendition of accounts and costs. The decree be drawn accordingly.
21. The learned counsel for the plaintiff has made an oral prayer for refund of Court Fees under Section 16A of the Court Fees Act, 1870. Since the disputes between the parties have been resolved in the Court and the evidence has not yet commenced, the plaintiff is entitled to refund of half of the Court Fee in terms of Section 16A of the Court-Fees Act, 1870. The Registry is to issue refund voucher in respect of half the amount of the Court fee affixed on the plaint, in the name of Collector of Stamps and hand over the same to plaintiff through counsel within six weeks from today.
(MANMOHAN SINGH) JUDGE AUGUST 08, 2014 CS(OS) No.1701/2014 Page 9 of 9