Addition of Words as Prefixes or Suffixes Is an Infringement of a Registered Trademark: Delhi High Court

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Justice Jayanth Nath allowed the Times Group to use its registered trademark “Newshour”, in the case of Bennett Coleman and Co. Ltd v. ARG Outlier Media Pvt Ltd & Ors. The Court ordered to bar Arnab Goswami from using the mark by addition of prefixes to the same.

Facts 

The Plaintiff, Bennett Coleman Company has been owned by the Times group. The Channel has operated its news channel, Times Now. “The Newshour” has been its trademark since 2006. It has continuously used the tagline “The Nation wants to know” on its channel.

The Defendant Company, ARG Outlier Pvt. Ltd (“Goswami’s Company”), has been the owner of the channel, Republic TV. Arnab Goswami was the former Editor-in-Chief on the Times Now channel. 

The Plaintiff filed the present suit to stop the Respondents from use of the above-stated mark and tagline.

Plaintiff’s Arguments

It was contended that the trademark of “The Newshour” has been vested with the Plaintiff since 2006. “Arnab Goswami’s Newshour” contained the whole of their registered trademark “Newshour”. Under the established test of trademark infringement, elements added to a registered trademark do not prevent its infringement.

The tagline “Nation wants to know” was based on distinctiveness, goodwill, and reputation due to its use since 2006. The Defendant could not claim for the tagline as the anchors’ dialogues were based on a script. The team working behind the camera through a teleprompter were in-charge of providing prompts, and earphones in the anchor’s ear were placed for the same purpose.

Under the employment contract, all intellectual property created, developed, and used by the Defendant in the channel, belonged solely to the Plaintiff. All intellectual property rights, goodwill, and reputation in the trademark/tagline belonged to the Plaintiff. The Defendants could not claim any right over it.

Respondent’s Arguments

“The Newshour” mark comprised of generic words and have been used by news channels and websites in India and abroad.

It was submitted that their mark with the addition of prefixes or suffixes with “Newshour” was not like the registered mark of the Plaintiff. It was submitted that the Plaintiff’s mark lacked distinctiveness and has been wrongly registered.

The expression “Nation wants to know” was not registered in favour of the Plaintiff. The tagline was said to be an integral part of Arnab Goswami’s image and inseparable from his individuality. It was never associated with the Times Now channel. The tagline was not scripted but was used as words of common speech. Thus, it was submitted that the Plaintiff did not hold intellectual property rights with it.

Court’s Observations

The Court noted that the trademark “News Hour” was not descriptive and incapable of registration by the Registry. There were no objections received on the ground of applicability of Section 9 of the Trademarks Act. The authorities having expertise did not consider the mark to be incapable of distinguishing the services from one another.

Also, no challenge to the above mark’s registration has been made so far by any person. Hence the mark “Newshour” was not generic and incapable of being protected as a trademark. The Court stated that the mere addition of words to the Plaintiff’s trademark, “Newshour” was counted as being similar. The Defendants could not claim the non-infringement of the trademark.

In conclusion, the Court stated that there has been no evidence about the Plaintiff, putting to use the expression “The Nation wants to know” as a trademark or as a form of speech.

Court’s Decision

The Bench partly allowed the application. The trademark “News Hour” was prohibited to be used by the Goswami’s Company. But the Court held that the tagline “Nation wants to know” could be used by Arnab Goswami without any restriction. If the said tagline was put to use as a trademark by Goswami’s Company, relevant accounts of the same were to be submitted to the court.

Click here to read the judgment


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