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TMI Blog2013 (10) TMI 500X X X X Extracts X X X X X X X X Extracts X X X X ..... f 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... aj 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 cir ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e, 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) 26 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... R 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 Educati ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 subclassifications are 4110103 news reporters services , 410026 production of radio and television programmes and ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... er 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 sa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e 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 seco ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... on 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 u ..... X X X X Extracts X X X X X X X X Extracts X X X X
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