28 Feb 2016

'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.”
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.

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.

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