COMMENT: In this Judgment, the Hon’ble Delhi High Court has laid down the
following important proposition.
1. The dissemination of news and news
reporting would be covered under Classes 38 and 41. It cannot, therefore, be
said that the publishing of a newspaper by the Defendants is in a class of
goods and services different from that for which Plaintiffs hold the trade mark
registration. (Para 23)
2. Even if Classes 38 and 41 are held not to cover newspapers,
the publishing of newspapers is an allied and cognate activity similar to the
goods and services for which the word mark 'Aaj Tak' has been registered in
favour of the Plaintiffs. The adoption and use of such mark by the Defendants would
undoubtedly cause confusion in the minds of the public and it is likely that
the public will associate the activity of the Defendants with the Plaintiffs.
Therefore, the ingredients of Section 29 (2) (b) of the TM act are also
satisfied. (Para No.25).
3. The PRB Act
is concerned with registration for the purposes of publication. The PRB Act
does not deal with various aspects of trade marks, the rights of a trade mark owner
and remedies for infringement. (Para 31).
IN THE HIGH COURT OF DELHI AT NEW DELHI
CS (OS) No. 1085 of 2005
Reserved on: September 12, 2013
Decision on: October 7, 2013
T.V. TODAY NETWORK LTD. & ANR. ..... Plaintiffs
Through: Mr. Saurabh Srivastava with Ms. Shilpa Gupta,
Advocates.
versus
KESARI SINGH GUJJAR & ORS. ..... Defendants Through: Mr.
Y.D. Nagar, Advocate.
CORAM: JUSTICE S. MURALIDHAR
JUDGMENT
7.10.2013
1. This is a suit filed by TV Today Network Ltd. (Plaintiff
No.1) and Living Media India Ltd. (Plaintiff No.2) against the Chief Editor and
Editor (Defendants 1 and 2 respectively) of United Group of Media (Defendant
No.3), Mr. Uttam Prakash (Defendant No.4), and M/s. Roshan Offset (Defendant
No.5) for permanent injunction restraining the Defendants from passing off of
their publications and for delivery up of all products of the Defendants and
for rendition of accounts and damages.
2. After the filing of the suit in August 2005, the
Plaintiff No.2 obtained registration for the trade mark 'Aaj Tak'. Accordingly,
by an order dated 17th May 2006, the Plaintiffs were permitted to amend the
plaint to seek the relief of permanent injunction restraining the Defendants
from infringing the Plaintiffs' registered trade mark 'Aaj Tak'.
3. The Plaintiffs are companies having registered office in
New Delhi. They state that Plaintiff No.2 is the publisher of several reputed
news publications including 'India Today', 'Business Today', 'Computers Today'
and 'Readers Digest'. From the year 1987, it has also been engaged in producing
TV news programmes. In 1995, it decided to commence a news programme in Hindi
under the name of 'Aaj Tak' and was granted registration for the said trade
mark in classes 38 and 41. It also applied for registration of the trade mark
in Classes 9 and 16 of the Schedule to the Trade Marks Rules. Plaintiff No.2
also acquired trademark registration in respect of the marks 'Subha Aaj Tak',
'Khel Aaj Tak' and 'Saptahik Aaj Tak' in Class 9. Copies of the trade marks
registration certificates have been filed along with the plaint.
4. In 2000, Plaintiff No.2 launched a 24-hour news channel
under the name 'Aaj Tak'. Plaintiff No.1 was established by Plaintiff No.2 as a
new corporate entity for managing and administering the 'Aaj Tak' news channel.
Plaintiff No.2 also licensed the use of the word, logo and trade mark/trade
name 'Aaj Tak' to Plaintiff No.1. The Plaintiffs state that 'Aaj Tak' is a
household name in India and several other countries where the TV signals of the
'Aaj Tak' channel are beamed. The trade mark/service mark 'Aaj Tak' has
therefore been continuously and uninterruptedly used by the Plaintiffs since
1995. The Plaintiffs states that the news channel has won several awards and
citations. It is stated that the trader mark/service mark 'Aaj Tak' is an
arbitrary, unique combination/collection of two words in Hindi language thereby
making the mark a highly distinctive one. Members of the public associate the
mark only with the Plaintiffs. It is stated that Plaintiff No.1 has become the
exclusive perpetual licensee of trade mark/logo 'Aaj Tak'. It is stated that
'Aaj Tak' is a well known trade mark within the meaning of Section 2(1) (zg) of
the Trade Marks Act, 1999 ('TM Act'). The Plaintiffs state that trade mark/service
mark 'Aaj Tak' enjoys tremendous goodwill and reputation on account of the high
quality of programming. It is stated that as on the week commencing 30th April
2005, 'Aaj Tak' had a total viewership of 19.4 million at an all-India level
pointing to a market share of 25.5%. The expenses incurred by the Plaintiff
No.1 in promoting the mark for the years 2000-01 to 2004-05 have been set out
in para 6. The turnover figures for the same period have been set out in Para
7. For the year 2004-05 the turnover was Rs.1390.68 lakhs.
5. In addition to the above the Plaintiff has also domain
name 'www.aajtak.com' to provide news through the internet and on which website
the said mark and logo are depicted. The Plaintiffs own other domain names:
www.aajtak.in, www.aajtak.co.in, www.aajtak.firm.in, www.aajtak.gen.in,
www.aajtak.org.in, www.aajtak.net.in, and www.aajtak.ind.in.
6. It is stated that in 2005, the Plaintiffs discovered that
the Defendants were publishing a Hindi newspaper depicting under the same word
mark 'Aaj Tak'. The Defendants had also registered an email address
aajtakindia@rediffmail.com. The newspaper was a weekly being sold free in Delhi
and Noida. The mark of the Defendants was phonetically, identically and
visually similar to that of the Plaintiffs. It is stated that the Defendants
used a style similar to that of the Plaintiffs in representing their mark in
various advertisements. It is stated that the Defendants were misleading the
public into believing that the Defendants were connected/affiliated to or
licensed by the Plaintiffs to publish the impugned publications. Thus, the
Defendants were illegally encashing on the reputation and goodwill of the
Plaintiffs.
7. The Plaintiffs deputed an investigator to visit premises
of the Defendants. A correspondent of the Defendants' newspaper informed the
investigator that the newspaper 'Aaj Tak' is a weekly publication and also gave
the investigator a rate list for booking advertisements in the newspaper. The visiting
card of the correspondent and the rate list has been included in the documents
filed with the plaint. It is stated by the Plaintiffs that the Defendants are
deceiving the public into thinking that the Plaintiffs have started another
newspaper under the name 'Aaj Tak'. The Defendants are also exploiting the
goodwill and reputation of the mark by inviting advertisements to be placed in
the newspaper. Further the Defendants are inviting applications from persons
desirous of becoming 'Aaj Tak' models.
8. While directing summons to issue in the suit on 9th
August 2005, the Court restrained the Defendants from making use of the mark
'Aaj Tak' or any deceptive variant thereof in respect of the Defendants'
publications or in any manner till the order was modified, varied or vacated.
That order has continued during the pendency of the suit.
9. In their written statement filed on behalf of all the
Defendants, it is stated that the Defendants have been publishing the newspaper
for ten years. The newspaper bears Registration No. 64796/96 having been
registered in the office of the Registrar of Newspapers, under the Ministry of
Information and Broadcasting. The copy of the certificate has been included
in the documents filed with the written statement. It is next contended that
the Plaintiffs were aware of the existence of newspaper since 1996 and,
therefore, the suit was liable to be rejected both on the ground of latches and
acquiescence. A reference is made to Section 33 of the TM Act. It is stated
that newspapers fall in a different and distinct class of goods and service
different from that in respect of which the trade mark registration is held by
the Plaintiffs. The Defendants claim that it has an increasing number of members/subscribers
since 1996. As on the date of filing the written statement, i.e. on 9th
September 2005, there were around 5000 members/subscribers for the Defendants'
newspaper. It is further stated that Defendant No.3 is a society registered
under the Societies Registration Act, 1860 in accordance with its aims and
objects and brought out the newspaper 'Aaj Tak' published in Hindi. The
financial statement of Defendant No.3 for the years 2002 and 2004 has been
enclosed. It is stated that newspaper is sold at a nominal rate of Rs.2 to
cover the cost of publication and, therefore, is a social venture. It is denied
that the Defendants are copying the trade mark of the Plaintiffs in any manner.
It is denied that any investigator of the Plaintiffs visited the premises of
the Defendants and met a correspondent of the Defendants' newspaper Mr. Manish
Kumar or that he gave his visiting card or the rate list for advertisements. It
is denied that 'Aaj Tak' is an arbitrary and unique mark. It is further
submitted that the Defendants' newspaper is governed by the Press and
Registration of Books Act ('PRB Act') whereas the Plaintiffs are running a TV
channel. Therefore, the Defendants were exercising their legal rights to
publish the newspaper. It is submitted that in common parlance, in respect of
news, it is generally said: 'Kya Hai Aaj Tak Ki Kabhar' and from those words
the words 'Aaj Tak' was appropriately used for the Defendants' newspaper in
Hindi. The Defendants claim to have eminent subscribers and, therefore, no
cause of action for a suit for infringement or passing off has arisen.
10. A replication was filed by the Plaintiffs on 9th
November 2005 wherein, apart from reiterating the averments in the plaint, it
is pointed out that PRB Act was for regulating newspapers and cannot override
the TM Act, 1999 which is special enactment. As long as the Plaintiffs hold
registration for the trade mark/service mark 'Aaj Tak' there was no provision
in the PRB Act permitting the Defendants to infringe or pass off the
Plaintiffs' registered trade mark.
11. By an order dated 8th February 2006, the Plaintiff was
directed to file an affidavit to explain whether it had approached the
Registrar of Newspapers for deregistration of the Defendants' publication. An
affidavit was filed by the Plaintiffs on 17th February 2006 answering the said
question in the negative. The Defendants were directed by the same order to
disclose on affidavit as to what the circulation of the news paper was when it
started and what its present circulation was. An affidavit dated 20th February
2006 was filed stating that the Registrar of Newspapers granted registration of
Defendants' newspaper under the PRB Act after verification on 15th December
1995. It was stated in Para 4 of the said affidavit that the circulation of the
Defendants publication had gone down. At the time of inception in 1996-97 the
circulation of the Defendants' newspaper was 17,000 and in terms of the Annual
Report of the Registrar of Newspapers for 2005 it had gone done to 2000. It is
further claimed that immediately before the filing of the suit the circulation
was 5,000 on account of "improvement in the newspaper such as size,
colour, printing, and increase in number of pages, printing quality".
12. IA No. 7855 of 2005 was filed by the Defendants under
Order XXXIX Rule 4 CPC for vacating the interim order of stay. Both IA No. 6052
of 2005 under Order XXXIX Rules 1 and 2 CPC and the aforementioned IA No. 7855
of 2005 were heard together. A detailed order was passed by the Court on 19th
May 2008 affirming the injunction granted by the Court on 9th August 2005.
13. On 21st August 2008, the following issues were framed by
the Court:
"(1) Does the Plaintiff prove entitlement to injunctive
relief, as claimed, based on ownership of the registered trade mark 'Aaj Tak'?
OPP
(2) Does the Plaintiff prove the Defendant's use of the mark
or words 'Aaj Tak' amounts to infringement and/or passing off? OPP
(3) Does the Defendant prove its entitlement to use the word
'Aaj Tak' on the basis of registration under the registered Press and
Registration of Books Act, 1867? OPD
(4) Is the Plaintiff entitled to damages and/or rendition of
accounts, as claimed? OPP
(5) Relief."
14. On behalf of the Plaintiffs Mr. Ashok Kumar Vermani,
their duly authorised signatory filed an affidavit dated 13th January 2009 of
examination-in-chief. The board resolution authorizing him to act on behalf of
the Plaintiffs was marked as Exhibit P-1. The trade mark registration
certificates were marked as Exhibit P-2. The advertisements of the Plaintiffs'
mark published in various newspapers in 1995 were marked Exhibit P-3. Documents
pertaining to the goodwill and reputation of the Plaintiffs news channel 'Aaj
Tak' were marked as Exhibit P-4. The visiting card of Mr. Manish Kumar, the
correspondent of the Defendants whom the Plaintiffs' investigator met was
marked as Exhibit P-5. The affidavit reiterated the averments in the plaint.
15. Further, for the Plaintiffs, an affidavit dated 8th
December 2011of Ms. Divisha Bopana, the authorised signatory of Plaintiff No.2,
was filed. The statement of Ms. Divisha Bopana as PW-1 was recorded on 21st May
2012. She was cross-examined on 23rd November 2012.
16. On 29th September 2008, the Defendants had filed a list
of 15 witnesses. However, on 11th February 2013, a statement was made by
learned counsel for the Defendants that the Defendants had no evidence to lead
in the case. On the same date, Ms. Divisha Bopana was recalled for further
cross-examination. She confirmed that the resolutions dated 17th March and 27th
July 2005 do not show her name as the authorised representative of the
Plaintiff No.2.
17. Mr. Saurabh Srivastava, learned counsel appearing for
the Plaintiffs submitted that this was a case of infringement of the registered
trade mark of the Plaintiffs and the Defendants contention that the PRB Act
permitted the Defendants to publish their newspaper using an identical mark was
no answer to the infringement in terms of the TM Act. He submitted that 'Aaj
Tak' was an arbitrary and distinct mark and the Plaintiffs are the prior users
thereof. He contended that the field and activity of Defendants viz.,
publishing newspapers was closely related to the principal activity of the
Plaintiffs viz., news broadcasting, and that was causing a high degree of
confusion in the minds of the public. According to him, there was a clear
infringement of the registered mark of the plaintiffs in terms of Section 29 of
the TM Act. Reliance was placed on the decisions in Playboy Enterprises v.
Bharat Malik 2001 PTC 328 (Del), Century Traders v. Roshan Lal Duggar 15 DLT
(1979) 269, Ziff-Davis Inc. v. Dr. D.K. Jain 1998 PTC (18), Novartis AG v.
Wanbury Ltd. 2005 (31) PTC 75 (Del) and Bengal Waterproof Ltd. v. Bombay Waterproof
Mfg. Co. 1997 PTC (17). He further pointed out that as the
Defendants failed to avail of the opportunity of leading evidence the
Plaintiffs' case was virtually uncontested. He relied upon the decisions inSwaran
Singh v. State of Punjab (2003) 1 SCC 240 and Mohd. Naved v.
Hindustan Petroleum Corporation 2004 (1) MPHT 16.
18. Mr. Srivasatava referred to Rule 22(2) of the Trade
Marks Rules, 2002 ('TM Rules') which stated that the goods and services
specified in the Fourth Schedule only provided a means by which the general
content of the numbered international classes could be quickly identified and
that reference had to be made to the alphabetical index of goods and services
for determining the classification of particular goods and services. According
to him, therefore, news report services were in Class 41 and television
broadcasting and news agency under Class 38 as per the international
classification of goods and services. According to him, by this classification,
the Plaintiffs could be said to be holding registration for the above goods and
services as well.
19. Appearing for the Defendants Mr. Y.D. Nagar, learned
counsel, submitted that the Defendants had a right to publish their newspaper
as part of their right to freedom of speech and expression. He placed reliance
on the decision of the Karnataka High Court in Times Publishing House Limited
v. Financial Times Limited 1995 (1) Kar LJ 219 and submitted that the PRB Act
is a special law which not only provided for publishing and printing of
newspapers but safeguarded the title of the newspaper. According to him, the
registration of the Defendants' newspaper under the PRB Act was obtained much
prior to the application made by the Plaintiffs for registration of the trade mark
in relation to the news channel. He also placed reliance on the decision in
Competition Review (P) Ltd. v. N.N. Ojha 1996 PTC (16) to submit that 'Aaj Tak'
was a generic term and the Plaintiffs could not claim exclusive use to the said
words. According to Mr. Nagar, it was unlikely that the subscriber to the
Defendants' newspaper would be confused into thinking that it emanated from
Plaintiffs. Reliance was placed on the decisions in Ram Kumar Jalan v. R.J.
Wood & Co. Ltd. (28) AIR 1941 Lahore 262, J.K.
Kapoor v. Micronix India 1994 Supp (3) SCC 215, Parry and Co.
Ltd. v. Perry & Co. AIR 1963 Madras 460, SBL Ltd. v. Himalaya Drug Co. 1997
PTC (17) (DB), Rupee Gains Tele-Times Private Ltd. v. Rupee Times 1995 PTC (15)
and Johnson and Johnson v. Christine Hoden India (P) Ltd. AIR 1988 Delhi 249.
The thrust of the submissions of Mr. Nagar was that since the Plaintiffs held
registration for their trade mark in a different class of goods and services
and since in any event the Defendants hold valid registration for their
newspaper under the PRB Act, no case for infringement could lie against the
Defendants. He further submitted that the suit was barred by delay and
acquiescence.
20. The Plaintiffs admittedly hold registration for the mark
'Aaj Tak'. Placed on record are the relevant trade mark registration
certificates as Exhibit P-2 (collectively). Registration No. 1242921 has been
granted in favour of Living Media India Limited for the word mark 'Aaj Tak' in
Class 41.The registration has been issued on 7th October 2005. It has been
indicated that the mark has been used since 1st June 1995. The Class 41
certificate describes the goods and services as "Education, Providing of
Training, Entertainment, Sporting and Cultural Activities". Registration
No. 1242922 has been issued on 23rd November 2005 in favour of Plaintiff No.2
for the word mark 'Aaj Tak' in Class 38 with use claimed since 30th June 1995.
The Class 38 certificate describes the goods and services as
"Telecommunication included in class 38".
21. Section 28(1) of the TM Act, 1999 states that the valid
registration of a trade mark shall give to the registered proprietor "the
exclusive right to the use of the trade mark in relation to the goods and
services in respect of which the trade mark is registered and to obtain relief
in respect of infringement of the trade mark in the manner provided by the
Act". There is no doubt, therefore, that in the present case the Plaintiffs
hold the valid registration of the trade mark 'Aaj Tak' in Classes 38 and 41.
The certificates relate back to the date of making of the application. They
also constitute prima facie evidence of the date from which the use is claimed.
Significantly, in both these certificates the use has been claimed from 1st
June and 30th June 1995 respectively which are prior to the dates on which the
Defendants applied for registration of the newspaper using the same word mark 'Aaj
Tak'.
22. Section 7(1) of the TM Act, 1995 states that the
Registrar shall classify goods and services "as far as may be in
accordance with International Classification of Goods and Services for the
purposes of the registration of the trade marks". This has to be read
with Rule 22 of the TM Rules which reads as under:
"22(1) For the purposes of the registration of
trademarks, goods and services shall be classified in the manner specified in
the Fourth Schedule.
(2) The goods and services specified in the Fourth Schedule
only provide a means by which the general content of numbered international
classes can be quickly identified. It corresponds to the major content of each
class and are not intended to be exhaustive in accordance with the
international classification of goods and services. For determining the
classification of particular goods and services and for full disclosure of the
content of international classification, the applicant may refer to the alphabetical
index of goods and services, if any, published by the Registrar under Section 8
or the current edition of the international classification of goods and
services for the purpose of registration of trade mark published by the World
International Property Organisation or subsequent edition as may be published.
(3) The Registrar shall identify and include in the
alphabetical index of classification of goods and services, as far as
practicable, goods or services of Indian origin".
23. The Fourth Schedule to Rule 22 gives a detailed
description of each of the classes of goods. For the purposes of the present
case both Classes 38 and 41 fall under the sub-heading 'Services' in the Fourth
Schedule to the TM Rules. Class 38 is "Telecommunications" and Class
41 is "Education; providing of training; entertainment; sporting and
cultural activities". The International Classification of Goods and
Services (Nice Classification) (9th Edition) issued in Geneva in 2006 gives the
further sub-classifications of the broad classification of the goods. Under
Class 38, sub-classification '380012' concerns "news agencies/wire
services". Sub-classification '380005' concerns "television
broadcasting". Under Class 41, the relevant sub- classifications are
'4110103' "news reporters services", '410026' "production of
radio and television programmes" and '410016' "publication of texts,
other than publicity texts". It is, therefore, seen that the
dissemination of news and news reporting would be covered under Classes 38 and
41. It cannot, therefore, be said that the publishing of a newspaper by the
Defendants is in a class of goods and services different from that for which
Plaintiffs hold the trade mark registration.
24. Turning to Section 29 (1) of the TM Act it is seen that
infringement can result when a person not being a registered proprietor uses in
the course of its trade a mark "which is identical with or deceptively
similar to the trade mark in relation to goods or services in respect of which
the trade mark is registered and in such manner as to render the use of the
mark likely to be taken as being used as a trade mark." In the present
case it is seen that the Defendants are using an identical trade mark i.e. 'Aaj
Tak'. A perusal of the sample newspaper of the Defendants depicting the
infringing mark shows that the word mark 'Aaj Tak' is identical to the
registered word mark of the Plaintiffs. Further, the visiting card of Mr.
Manish Kumar, correspondent of the Defendants' newspaper shows the words 'Aaj
Tak' with the word 'Aaj' above the word 'Tak'. This is identical to the
Plaintiffs' depiction of their mark. Even the depiction of the name of their
newspaper in an advertisement in the newspaper inviting enquiries for placing
advertisement depicts the mark in a manner identical to the depiction of the
Plaintiffs' mark i.e. the word 'Aaj' shown above the word 'Tak'. It also shows
the address of the Defendants.
25. Even if Classes 38 and 41 are held not to cover
newspapers, the publishing of newspapers is an allied and cognate activity
similar to the goods and services for which the word mark 'Aaj Tak' has been
registered in favour of the Plaintiffs. The adoption and use of such mark by
the Defendants would undoubtedly cause confusion in the minds of the public and
it is likely that the public will associate the activity of the Defendants with
the Plaintiffs. Therefore, the ingredients of Section 29 (2) (b) of the TM act
are also satisfied.
26. Under Section 29 (4) of the TM Act, where the registered
mark is shown to have a reputation in India and the use of the impugned mark by
the Defendant results in taking unfair advantage of the registered mark or is
detrimental to, the distinctive character or repute of such registered mark
there is no need for the owner of the registered trade mark to demonstrate the
likelihood of confusion in the mind of the public. As far as the present case
is concerned, the uncontroverted evidence of the Plaintiffs clearly establishes
that the Plaintiff No.2 is assignee and Plaintiff No.1 is the registered
proprietor of the word mark 'Aaj Tak'. Secondly, the registrations are in
respect of services under Classes 38 and 41 of the Fourth Schedule to the TM
Rules. By virtue of Rule 22(2) of the TM Rules read with the Fourth Schedule
these classes cover news reporting and dissemination of news as well. Thirdly,
the Defendants are not the registered proprietor of the trade mark 'Aaj Tak'.
The impugned mark 'Aaj Tak' adopted by the Defendants is identical to the
registered mark 'Aaj Tak' phonetically, structurally and visually. The
statements made on affidavits by the Plaintiffs regarding the reputation
enjoyed by the registered mark in India and worldwide and the demonstrable
exploitation of that mark by the Defendants by inviting applications for 'Aaj
Tak Models 'and for advertisements by issuing tariff rates remains
uncontroverted. It has been satisfactorily proved by the Plaintiffs that that
the adoption and use of the impugned mark by the Defendants will cause
detriment to the distinctive character and repute of the registered mark of the
Plaintiffs. It is also been shown that the Defendants have by such use taken
unfair advantage of the goodwill and reputation of the Plaintiffs' mark. There
is nothing in the cross-examination of Plaintiffs' witnesses which disproves
their case.
27. Significantly, the Defendants have not led any evidence
whatsoever to counter the evidence of the Plaintiffs. As explained in A.Raghavamma
v. A. Chenchamma AIR 1964 SC 136 and Mohd. Naved v. Hindustan
Petroleum Corporation, the failure by the Defendants to examine themselves and
to submit themselves to cross- examination as witnesses would result in
discrediting the truth of their case.
28. To summarise, the Court is of the view that the
Plaintiffs have been able to demonstrate that there has been an infringement of
the Plaintiffs' registered trade mark in terms of Section 29(1) and 29 (2) (b)
of the TM Act. Further by the material brought on record, the Plaintiffs have
been able to demonstrate that the trade mark 'Aaj Tak' has a distinctive
character and reputation in India and that the Defendants have sought to take
unfair advantage of the reputation and goodwill of the Plaintiffs' mark and
that such use is detrimental to the distinctive character and reputation of the
registered trade mark thus attracting infringement in terms of Section 29(4) of
the TM Act.
29.1 Since considerable reliance has been placed by learned
counsel for the Defendants on the decision of the Division Bench of the
Karnataka High Court in Times Publishing House Ltd., the Court proposes to
discuss the said decision at some length. The facts in the said case were that
the Plaintiff Financial Times Limited ('FTL') filed a suit in the civil court
in Bangalore against Times Publishing House Ltd. ('TPHL') alleging infringement
of its trade mark 'Financial Times' by TPHL. Admittedly, FTL held registration
for the mark 'Financial Times'. An interim injunction was granted by the civil court
restraining TPHL from printing and publishing 'The Financial Times'. TPHL was
publishing 'The Economic Times' and offering 'The Financial Times' on a
complementary basis along with 'The Economic Times' by printing it on a light
pink paper which was similar to the colour of 'The Financial Times' as
published by FTL. TPHL contended that it was registered under the PRB Act and
that printing of newspaper was exclusively governed by PRB Act and, therefore,
the Trade & Merchandise Marks Act, 1958 ('TMM Act') was not applicable.
TPHL further contended that it was legitimately publishing 'The Financial Times'
as a weekly newspaper after getting the necessary declaration from the RNI. The
Division Bench of the Karnataka High Court relied upon the decision of this
Court in M.K.Agarwal v. Union of India 53 (1994) DLT 751 where it was observed
that the PRB Act being a special enactment prevailed when it comes to
registration of newspapers and that when a conflict arose between the two
enactments it could be resolved on the basis of well settled principles of
interpretation of statutes.
29.2 The Karnataka High Court, which was considering the
above question at the interlocutory stage, concluded that the PRB Act not only
provided for printing and publishing newspapers but safeguarded the title of
newspapers. Since TPHL had applied for, obtained registration of the title and
thereafter used it, no malafides could be attributed to TPHL.
29.3 The second factor that weighed with the High Court was
that there was a variation in the number of pages, news items, articles and the
price of 'The Financial Times' published by FTL. Its circulation was only 231
copies and was available to selected members/contributories. It was held that
without a PRB Act registration, there was no right to publish a newspaper in
India. In those circumstances it was held that there was no possibility of
deception since the readers were literate and could recognise the differences
between two newspapers. More importantly, the PRB Act at the relevant time
restricted publication of a newspaper by non- residents. In the circumstances,
the hardship that would be caused to TPHL would be greater if the injunction
was grated in favour of FTL. It was held that the trial court committed an
error in holding that the TMM Act alone would govern the publication of newspapers.
30. The above decision is distinguishable on facts for more
than one reason. In the first place it was a decision at the interlocutory
stage of the matter and the fact that weighed to the Division Bench was that
the newspaper published by FTL hardly had any circulation in India. Secondly,
being a foreign entity it could not seek registration under the PRB Act.
Thirdly, TPHL had a large circulation and was holding registration under the
PRB Act and was in the business of publication of newspapers for long.
Fourthly, as far as the present case is concerned, the Plaintiffs have been
able to show that they have been in the business of disseminating news since
1995. The use claimed in both trade mark registration certificates is from June
1995. Admittedly, this is prior to the date on which the Defendants applied for
and obtained registration of its title under the PRB Act. No parallel can
therefore be drawn between the facts in the Times Publishing House Limited case
and the instant case.
31. As explained in the decision of this Court in Playboy
Enterprises, the PRB Act is concerned with registration for the purposes of
publication. The PRB Act does not deal with various aspects of trade marks, the
rights of a trade mark owner and remedies for infringement. The Times
Publishing House Limited decision was rendered at a time when the TM Act had
not been enacted. Under Section 7 of the TM Act read with Rule 22 and the
Fourth Schedule of TM Act, it is clear that the classification of goods and
services under the TM Act read with the TM Rules is of a wider nature. Further
under Section 29 (4) of the TM Act there is an express protection afforded to
well-known marks, and marks that are shown to have a reputation in India, even where
they are in respect of goods and services different from those in respect of
which the infringer has adopted and used an identical or similar mark.
Therefore, even in law it is possible that the decision in the Times Publishing
House Limited case may have been different had the above provisions existed at
the time it was rendered. This Court is therefore of the view that the decision
in the Times Publishing House Limited does not help the case of the Defendants.
32. Turning to the question of damages, the Court is of the
view that in the circumstances of the case, the Plaintiffs are entitled to a
decree for punitive damages against the Defendants. In Time Incorporated v.
Lokesh Srivastava 2005 (30) PTC 3 (Del) the Court awarded the Plaintiff Rs. 5
lakhs as punitive damages after holding that "a large number of readers of
the defendants' Magazine 'TIME ASIA SANSKARAN' also have suffered by purchasing
the defendants' Magazines under an impression that the same are from the
reputed publishing house of the plaintiff company."
The Court explained:
"the award of compensatory damages to a plaintiff is
aimed at compensating him for the loss suffered by him whereas punitive damages
are aimed at deterring a wrong doer and the like minded from indulging in such
unlawful activities.... The punitive damages are founded on the philosophy of
corrective justice and as such, in appropriate cases these must be awarded to
give a signal to the wrong doers that law does not take a breach merely as a
matter between rival parties but feels concerned about those also who are not
party to the lis but suffer on account of the breach."
33. Consequently, the Court is of the view that in the
instant case, the Defendants should be asked to pay the Plaintiffs punitive
damages in the sum of Rs. 5 lakhs to act as a deterrent against the Defendants
infringing the registered mark of the Plaintiffs.
34. The Court answers the issues framed as under:
Issue No.1: Does the Plaintiff prove entitlement to injunctive
relief,as claimed, based on ownership of the registered trade mark 'Aaj Tak'?
The above issue is answered in the affirmative by holding
that the Plaintiffs are entitled to a permanent injunction, as claimed, against
the Defendants and their agents, employees and servants, jointly and severally,
based on the Plaintiffs' ownership of the registered trade mark 'Aaj Tak'.
Issue No.2: Does the Plaintiff prove the Defendant's use of
the mark or words 'Aaj Tak' amounts to infringement and/or passing off?
The above issue is answered in favour of the Plaintiffs and
against the Defendants holding that the Defendants' use of the impugned mark
and word mark 'Aaj Tak' amounts to infringement and/or passing off of the
Plaintiffs' registered trade mark.
Issue No.3: Does the Defendant prove its entitlement to use
the word 'Aaj Tak' on the basis of registration under the Press and
Registration of Books Act, 1867?
The above issue is answered in the negative against the
Defendants by holding that the Defendants have failed to prove their
entitlement to the use of word mark 'Aaj Tak' on the basis of the registration
under the PRB Act.
Issue No.4: Is the Plaintiff entitled to damages and/or
rendition of accounts, as claimed?
The Plaintiff is entitled to punitive damages in the sum of
Rs. 5 lakhs from the Defendants, jointly and severally. The Plaintiffs are also
awarded costs of Rs.25,000 against the Defendants.
35. The suit is decreed in the above terms. Decree sheet be
drawn up accordingly.
S. MURALIDHAR, J.
OCTOBER 7, 2013
