[Breaking] Delhi High Court Restrains Republic TV From Using Trademark "News Hour", Allows Using Tagline "Nation Wants To Know"

The Single Bench of Justice Jayant Nath has held that Goswami led Republic TV channel is free to use the said tagline as part of his speech/presentation of any news but in case he chooses to use the same as a trade mark with respect to any of their goods/services, then the channel will have to maintain accounts for such usage.

Whereas the Plaintiff company had argued that the expression was used by it as a trade mark, the Court held that the same can be decided only after evidence is completed between the parties.

Tagline- Nation Wants To Know

Notably, Goswami had claimed that the tagline in question was used by him when he was employed at the Plaintiff-company, as a "common speech" for which there is no intellectual property.

He argued that the expression was "spontaneous and creative" and pleaded that none of the documents adduced by the Plaintiff company indicated a connection of the mark to any of its goods or services.

The Times Group on the other hand claimed that this tagline was coined and developed by the then editorial and marketing team of the plaintiff as key words to be used during the discussions and debates conducted on the NEWSHOUR programme. It also submitted that Goswami is trying to take "undue advantage" of his past services at the Times Group, where he was privy to the Company's utmost confidential information during his tenure as its Editor-in-Chief. 

"In my opinion, it is only after evidence has been led that it can be ascertained as to whether the plaintiff was using the aforesaid mark as a trade mark or it was merely being used as a form of speech in the course of conducting the news channel or in the course of carrying on interviews/presentations by defendant No. 2. These are aspects on which, prima facie, no view can be made at this stage based on the documents placed on record, namely, screen shots of various sites of Twitter, Facebook, etc.," the Court held.

Tagline- News Hour

It may be noted however that the High Court has restrained Goswami and his channel from using the trade mark 'NEWS HOUR', as the same is a registered mark of the Plaintiff.

The Times Group had been using the said expression since 2006 when its programme titled "News Hour" was launched and it was argued that the mark has attained "distinct identity" to differentiate the company's programmes amongst others in the industry. It was further submitted that the mark was registered under Classes 16, 35 and 38 in May 2014, with user claim since 2006.

The Group was thus aggrieved by use of expressions "ARNAB GOSWAMI's NEWSHOUR" and "ARNAB GOSWAMI's NEWSHOUR 9", as Republic TV had "wholly and identically incorporated and usurped the most dominant feature of their registered mark NEWSHOUR".

The Court was also of the opinion that "if the defendants' trade mark is deceptively similar to that of the plaintiff, mere addition of a word by the defendants to the trade mark is of no consequence and the plaintiff is entitled to succeed in its action for infringement of its trade mark."

Reliance was placed on the Supreme Court's verdict in Procter & Gamble Manufacturing (Tianjin) Co. Ltd. v. Anchor Health & Beauty Care Pvt. Ltd. and Ruston & Hornsby Ltd. v. Zamindara Engineering Co., AIR 1970 SC 1649.

The bench clarified that usually exclusive use of a common word would not be given. However, protection of a combination of words can be given

Goswami had argued that his mark is with addition of prefixes and suffixes with NEWS HOUR and cannot be said to be deceptively similar to the alleged mark of the plaintiff. He also submitted that "NEWSHOUR" comprises of words which are generic in nature and are widely used by different news channels and websites in simple and non-distinct combinations in India and abroad. The word is descriptive in nature and is widely and commonly perceived as being used by news channels.

The Court however held,

"The undisputed facts show that the mark NEWS HOUR is a registered trade mark prima facie used by the plaintiff since 2006.

In the facts of this case, in my view, merely adding some prefixes or suffixes to the trade mark NEWS HOUR, in my opinion does not help the defendants to claim that the mark which is being used by the defendants is not deceptively similar to that of the plaintiff.

The marks which are being used by the defendants, namely, ARNAB GOSWAMI's NEWSHOUR, ARNAB GOSWAMI's NEWSHOUR 9, etc. prima facie would be deceptively similar to the mark of the plaintiff THE NEWS HOUR. The plaintiff is entitled to relief on this account."

Notably, Goswami had submitted that they shall challenge the registration of the said trade mark in the Plaintiff's favour however, the Court noted that "No such challenge appears to have been made so far. Clearly, there is prima facie no merit in the plea of the defendants that the mark in question is generic and incapable of being protected as a trade mark."

The Court also noted,

"The pleas of the defendants that the trade mark NEWS HOUR is descriptive and incapable of being registered are pleas which did not find favour when the plaintiff had applied for registration of the trade mark. There were no objections received on the ground of applicability of Section 9 of the Act. The marks were not prima facie considered by the authorities having expertise in the matter as being descriptive of the goods, etc. or incapable of distinguishing the goods or services of one from another."

Goswami had also informed the Court that it was only when he left the Times Group did the company file an application for registering the tagline 'Nation Wants To Know' as "proposed to be used"; thus, indicative of the fact that the Group had accepted that it had no intellectual property rights in the said tagline when he was employed with the Plaintiff. 

Maintainability

Goswami had argued that the present suit is barred by the principle of Res Sub Judice as similar reliefs were directly and substantially in issue in a previous suit filed by the Plaintiff being CS (COMM) 370/2017. It was argued that the Plaintiff was bound to include the whole of the claim which he is entitled to make in respect of the "cause of action". Where a plaintiff omits to sue in respect of any portion of his claim, he shall not claim thereafter for the portion so omitted and relinquished.

The Court noted that the earlier suit was filed by the plaintiff seeking the relief of injunction to restrain the defendants from using the intellectual properties of the plaintiff. The grievance was that Goswami and other defendants had wilfully and deliberately converted for their own use and for airing on Republic TV, the intellectual property of the plaintiff channel.

In contrast, the Court said, as is apparent from the prayer clause of the present suit, the present suit is filed to restrain the defendants from infringing the registered trade mark of the plaintiff 'NEWS HOUR and to restrain the defendants from using the mark/title/tagline 'NATION WANTS TO KNOW' in a manner which tantamounts to passing off of the defendants business /services as those of the plaintiff.

Case Title: Bennett Coleman & Co. Ltd. v. ARG Outlier Media Pvt Ltd & Ors.

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