TaxTMI 
TaxTMI 
2013 (10) TMI 500
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....efendants 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....
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....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....
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.... 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 ....
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.... 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 o....
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...., 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 n....
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....oods 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 Fo....
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....he 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....
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....o 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....
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....btained 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 ha....