2013 (10) TMI 500 - HC - Companies Law

Trademark infringement - Passing off action - Infringement of trademark Aaj Tak - Defendant published newspaper with the name Aaj Tak - Email adrees with similar name also made - Held that - 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. 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 - 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 - Following decision of Time Incorporated v. Lokesh Srivastava 2005 (1) TMI 630 - DELHI HIGH COURT - Decided in favour of appellant.

Summary

Issues Involved:
1. Entitlement to injunctive relief based on ownership of the registered trade mark 'Aaj Tak'.
2. Infringement and/or passing off by the Defendant's use of the mark or words 'Aaj Tak'.
3. Entitlement of the Defendant to use the word 'Aaj Tak' based on registration under the Press and Registration of Books Act, 1867.
4. Entitlement of the Plaintiff to damages and/or rendition of accounts.

Issue-wise Detailed Analysis:

Issue 1: Entitlement to Injunctive Relief Based on Ownership of the Registered Trade Mark 'Aaj Tak'
The Plaintiffs hold valid registration for the mark 'Aaj Tak' in Classes 38 and 41, which cover telecommunication and entertainment services, respectively. The registration certificates (Exhibit P-2) indicate use since June 1995, predating the Defendants' application for newspaper registration. Section 28(1) of the Trade Marks Act, 1999 (TM Act) grants exclusive rights to the registered proprietor to use the trade mark and obtain relief for infringement. The Court concludes that the Plaintiffs are entitled to a permanent injunction based on their ownership of the registered trade mark 'Aaj Tak'.

Issue 2: Infringement and/or Passing Off by the Defendant's Use of the Mark or Words 'Aaj Tak'
The Defendants' use of the identical mark 'Aaj Tak' in their newspaper and advertisements is likely to cause confusion among the public, associating the Defendants' activities with the Plaintiffs. The Court finds that the Defendants' use of the mark constitutes infringement under Section 29(1) and 29(2)(b) of the TM Act. The Plaintiffs' mark 'Aaj Tak' has a distinctive character and reputation, and the Defendants' use of the mark takes unfair advantage and is detrimental to the Plaintiffs' mark, satisfying the conditions under Section 29(4) of the TM Act.

Issue 3: Entitlement of the Defendant to Use the Word 'Aaj Tak' Based on Registration Under the Press and Registration of Books Act, 1867
The Defendants argued that their registration under the Press and Registration of Books Act (PRB Act) entitled them to use the mark 'Aaj Tak'. However, the Court held that the PRB Act does not override the TM Act, which is a special enactment governing trade marks. The PRB Act is concerned with the regulation of newspapers and does not deal with trade mark rights. Therefore, the Defendants' registration under the PRB Act does not entitle them to use the mark 'Aaj Tak', and this issue is resolved against the Defendants.

Issue 4: Entitlement of the Plaintiff to Damages and/or Rendition of Accounts
The Court awarded punitive damages to the Plaintiffs, emphasizing the need to deter the Defendants and others from infringing registered trade marks. The Plaintiffs were awarded Rs. 5 lakhs in punitive damages and Rs. 25,000 in costs. The decision was based on the philosophy of corrective justice to signal that the law is concerned with the broader implications of such infringements.

Conclusion:
The Court decreed the suit in favor of the Plaintiffs, granting a permanent injunction against the Defendants from using the mark 'Aaj Tak', awarding punitive damages of Rs. 5 lakhs, and costs of Rs. 25,000. The Defendants' arguments based on the PRB Act were rejected, and the Plaintiffs' claims of trade mark infringement and passing off were upheld.