'Today' not proprietary trade-mark of 'India Today' group?

In a recent decision the Delhi High Court has culled out the principles for a trademark and passing off action. In Living Media India Ltd. v. Alpha Dealcom Pvt. Ltd. [FAO(OS) 110/2014, decision dated 29.01.2016] the High Court refused grant of interim injunction against use of trademark 'Nation Today' (for broadcasting and telecommunication services). The injunction was sought by the India Today group which claimed to be running 'Business Today', 'India Today Travel Plus', 'Design Today', 'Spice Today', 'Money Today' magazines, 'Mail Today' news paper and 'Music Today' CDs, VCDs, DVDs, etc., inter alia claiming the use of 'Today' mark since 1975 and thus praying to the High Court to restrain the other party from using the trademark 'Nation Today' by the Defendants.

The India Today group presented before the High Court its claim for injunction alleging that the brand name 'Nation Today' was claimed for registration as the opposite party was "aware of the tremendous brand value, reputation, popularity and goodwill associated with 'TODAY' and its variants" by the India Today group. It was thus claimed that the alleged action "not only infringes their rights in and to the said trade mark and its variations but also amounts to passing off its services as and for services of the Plaintiffs and/or their affiliates/subsidiaries".

The defence reply was noted by the High Court in the following terms;

"7. The defendant filed a reply to the temporary injunction application, refuting the plaint allegations. It was also urged that the two marks were dissimilar and that the plaintiff could not claim exclusivity over the word TODAY. It was submitted that the plaintiff does not have a news channel using the mark INDIA TODAY. Other pleas such as the composite nature of the plaintiff's mark and how the viewers would not be confused or deceived by mere use of the word TODAY were taken."

A Single Judge of the High Court disagreed with the claim and refused to grant injunction. This decision was under challenge before the Division Bench of the High Court which concurred with the Single Judge to affirm the denial of injunction. Justifying its conclusion to reject the injunction, the Division Bench of the High Court summed up the legal position and its reasoning inter alia in the following terms;

18. There is no dispute about the fact that the plaintiff has been in the news magazine publication business for over four decades; if it asserts that it has acquired a strong reputation for the title INDIA TODAY, which is its registered trademark, the Court would be correct in assuming it to be so. However, does that per se - along with sales figures and other financial details testifying to various brands and trademarks owned by the plaintiff, crystallize into a right to prevent others from using a common word, "TODAY" in respect of television news channel services. It is here that the matter requires a slightly closer scrutiny. The word TODAY is a common term and a dictionary one. Used in a non-contemporary sense, i.e without reference to time and as a mark, it could well be urged that it constitutes an arbitrary mark. However, its link with news is unmistakable. In this context, what acquires distinctiveness is the combination India Today.

19. The law demands closer scrutiny, when it comes to the use of common words (such as TODAY), that are descriptive (or semi-descriptive) of the services or goods offered by the service provider or trader. This reluctance was best described in Re J Crosfield & Sons Ltd  "Wealthy traders are habitually eager to enclose part of the great common of the English language and to exclude the general public of the present day and of the future from access to the inclosure.”

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20. In India too, it has been recognized that trademark use of generic or descriptive words have to be closely scrutinized before claims of injury are allowed. The Supreme Court ruling in Skyline Education Institute (India) Ltd v S.L. Vaswani declined to grant injunction to the plaintiff, who carried on business under the trademark "Skyline". The Court noted that a large number of other businesses had used the term "Skyline" for the same business activity, i.e educational services.

Caveat

We may clarify that this order of the High Court is in the context of the affirmation of an interim order and thus may not be considered as a final observation on merits of the legal position. Nonetheless this facet in our view does not dilute in any manner the binding nature of the Division Bench order and the legal consequences flowing therefrom.

Trade Dress: A relatively new IPR

A recently decision of the Delhi High Court, which is full of pictures of competing products, brings to fore a relatively new IPR namely "trade-dress". Authored by Nandrajog and Gupta JJ. of the Delhi High Court, their decision in Devanagiri Farms Pvt. Ltd. v. Sanjay Kapur [FAO(OS) 247/2014] offers an interesting insight to both the students of law as also the subject-matter experts as to what constitutes trade-dress protection law in the context of Indian IPR regime.

The case of the Respondents was that they were selling tea in a niche packing for over decades which packing was adopted by the Appellant to sell its similar product and hence the lis. In order to reflect upon the degree of similarity in the two packings, the High Court reproduced the pictures of the competing products which was essential in view of the High Court for "words may sometimes mislead, and the eye may be a better medium to convey a thought".

Having noted the similarity in the product packing, the High Court applied the following test to reach to its conclusion;

"7. Tested on the well recognized touchstone of the principle of deception, it would be apparent to the naked eye that any purchaser of tea with the usual imperfect recollection to which all humans are prone to, would be deceived when she comes across the tea packaged by the appellant.
8. It is the overall get up and similarity which has to be seen and not the minor variations because it is similarity which strikes and not the dissimilarities which distinguish when an ordinary person recollects an object seen in the past."

In view of the High Court the law is well settled in terms of various decisions, including those of the Supreme Court which requires the judge to examine "the overall effect of a colour scheme which has to be the focus of attention in a dispute concerning a packaging material in which the product is sold". On this background the High Court opined that there indeed was deception and violation of trade-dress in the following terms;

"Commonsense guides us that if two persons sell their product in same size rectangular shaped cuboid, nobody can urge that there is deception, but where the add-on grievance is to fabric sleeve used over the rectangular shaped cuboid, deception may occur if the overall similarity in the get up is of the kind that an ordinary purchaser, with the usual imperfect recollection is likely to be deceived. There is no case law cited, and we know of none that merely because a trademark is displayed on the packaging material, notwithstanding a striking similarity in the packaging material there would be no likelihood of deception. Whilst it may be true that in issues concerning trade dress the Courts have considered the display of a trademark, but it is only one of the various factors put in the weighing basket. It needs no argument to bring home the point reached by the learned Single Judge that the overall get up of the trade dress, even taking into account the display of the trademarks, is likely to cause deception; save and except to look at the packaging of the two competing products; and this is the reason why we have reproduced the coloured printout of the packaged product.
13. So striking is the theft by the appellant of the packaging used by the Kapurs that even an elite, educated, widely exposed and travelled person is likely to be deceived."

On such note the High Court has concluded in favour of trade-dress protection. An interesting decision indeed.