[Breaking] Delhi High Court Grants Interim Injunction in Favor of Times Now, Republic TV Can’t Use Trademark “News Hour” Allows to Use Tagline “Nation Wants to Know”
[Read Order]
(Judicial Quest News Network)
The Delhi High has passed an Interim Injunction in favor of Times Now Channel against Republic TV. Restraining them from using the trade mark ‘NEWS HOUR’ or any other mark which is deceptively similar to the trade mark ‘NEWS HOUR’
The partial relief of interim injunction was granted in favor of the Bennet Coleman & CO., the parent company of the channel Times Now, by a Single Judge Bench of Justice Jayant Nath.
The plaintiff company (Times Now) in its petition had argued that the expression was used by the team and team members as a trade mark.
The Media Conglomerate had moved DHC seeking a permanent injunction against Arnab Goswami’s ARG Media Outlier from using the marks ‘NEWS HOUR’ and ‘NATIONAS WANTS TO KNOW’ or any other derivatives or combination of the same.
The Plaintiff Company Further contended that the plaintiff states that the programme ‘THE NEWS HOUR’ which pertains to discussions, panel discussions, debates on current topics was launched in 2006. It is a registered trade mark and has been in continuous use since 2006. The said trade mark has been registered under Classes 16, 35, 38 and 41 on 15.05.2014 with user claimed since 31.01.2006. Hence, as per the plaintiff being the proprietor of the trade mark NEWS HOUR it has a statutory right to exclusive use thereof in India.
The Dispute between Times Group and Republic Network started when Anchor Editor Arnab Goswami’s exit from Times Now in 2016 to set up his own venture ARG Outlier Media Ltd of which the Republic Network is a Product. Arnob Goswami while defending claimed that the tagline in question was used by him when he was employed in plaintiff Company as a “common speech “for which there is no intellectual property.
This was Times Now ‘s flagship debate/ discussion programs titled News Hour in 2006.The plaintiff company had registered the same “NEWS HOUR” under classes 16,35, and 38 in 2014 and mark itself has been in use since 2006.Therefore, the plaintiff Group claimed statutory right over this trade mark. The suit was filed seeking the following reliefs: –
“(a) Pass a decree of permanent injunction in favor of the Plaintiff and against the Defendants permanently restraining the Defendants, their directors, agents, officers, employees, cable operators, multi system operators, direct to home operators and all such other persons associated with the Defendants from adopting and using the trade mark/title/tagline NEWSHOUR or any other trademarks/titles/taglines either by itself or comprising “NEWSHOUR” as a part thereof amounting to infringement of Plaintiff’s registered trade mark as enumerated above in the plaint including dilution;
(b) Pass a decree of permanent injunction in favor of the Plaintiff and against the Defendants permanently restraining the Defendants, their directors, agents, officers, employees, cable operators, multi system operators, direct to home operators and all such other persons associated with the Defendants from adopting and using the trademarks/titles/taglines NEWSHOUR, NATION WANTS TO KNOW or any other trademarks/titles/taglines either by itself or comprising of NEWSHOUR, NATION WANTS TO KNOW or any derivatives or combinations thereof or any other deceptively similar trademarks/titles/taglines of the Plaintiff and its channel Times Now on their television channel Republic TV, its website, i.e. www.republicworld.com or on any other website/medium or channel in any manner whatsoever amounting to passing off of the Defendants’ business/services.
With respect to the tag line “NEWS HOUR” the bench referring to a few judgements including Kavi Raj Pandit Durga Dutt Sharma vs. N.P. Laboratories, AIR 1965 SC 980 Procter & Gamble Co. Vs. Joy Creators & ors., 2011(45) PTC 541 (Del.)
Reliance is placed on the judgment of the Division Bench of this court in the case of Cadila Healthcare Limited v. Gujarat Co-operative Milk Marketing Federation Ltd., ILR (2010) II Delhi 85.
It is further pleaded that as per the employment contract signed between defendant No. 2 and the plaintiff all intellectual property created, developed and used by defendant No. 2 in or on the channel including in relation to such programme exclusively belongs to the plaintiff. Accordingly, all intellectual property rights, goodwill and reputation in the trade mark/title/tagline in the NEWSHOUR and the NWTK belong to the plaintiff and the defendants cannot claim any right over it. Reliance is placed on clause 5 of employment agreement dated 31.05.2004 and clause 4 of the employment agreement dated 31.03.2005
It is further pleaded that the plaintiff’s trade mark/tagline NATION WANTS TO KNOW (hereinafter referred to as NWTK) is based on distinctiveness, goodwill and reputation of the plaintiff on account of its use since 2006 for goods/services in relation to television broadcast. It is pleaded that defendant No.2 in its written statement admits that NWTK mark has acquired immense goodwill and reputation. The claim of the defendants is that the said goodwill and reputation is associated with
and not the plaintiff. It is pleaded that this contention is misconceived. Defendant No. 2 was only an anchor while the entire show was a team work involving a team of editors, researchers, production control team, creative team and script writers. In fact, in the programmes, the anchors’ dialogues/comments are based on a script and promps are provided by the team working behind the camera through a teleprompter and an ear phone which is placed in the anchor’s ear. Defendant No. 2 cannot claim credit for the said mark/tagline.
The Times Group Under Classes 38, and 41 in December 2016, had applied from registration of trademark on this tagline just days after Goswami’s notoriously unceremonious exit from Times Group where as Goswami sought to stake claim on the tagline since just two days after his departure from the plaintiff’s company.
It is also alleged by the plaintiff company that Arnab Goswami had taken undue advantage of the popularity of the programme he anchored at Times Now. Despite his employment agreement with Times Group vesting all rights to intellectual property exclusively with the plaintiff company, Goswami proceeded to use the disputed marks, the Times Group averred.
“… any brand image which may have been accrued to defendant No.2 over the period of time on accent of being an anchor of the plaintiff’s show was due to the investment made by the plaintiff and defendant No.2 represented the plaintiff and hence, all goodwill and propriety rights created during such period belong to the plaintiff and hence, all goodwill and propriety rights created during such period belong to the plaintiff .” The Court recorded the plaintiff’s stance.
The Republic TV on the other hand claims that the viewers of two news channels are “ informed and literate” and cannot confuse the programs aired on the two channels especially since the animosity between the two is matter of public knowledge.
Time Group initiated the present proceedings “In the form of Vendetta litigation” Merely with the intention to “attempt to harass and arm twist”
The Court While passing the interim injunction in favor of the plaintiff (Times Now) and against the defendants refraining them from using the trade mark “NEWS HOUR” or any other mark which is deceptively similar to the trade marks “NEWS HOUR” of the plaintiff.
Regarding the tagline NATION WANTS TO KNOW, no interim order is passed at this stage in favour of the plaintiff. As submitted by the learned counsel for the plaintiff, defendant No. 2 is free to use the same as part of his speech/presentation of any news channel, etc. However, if the defendants choose to use the same as a trade mark with respect to any of their goods/services, the said defendants will maintain accounts for such usage. Such accounts shall be filed in court regularly on an affidavit of one of the directors of defendant No. 3 once in every six months.
