15 July 2019


Judgments

High Court of Delhi

Entertainment Network (India) Ltd. Vs. HT Media Limited

MANU/DE/2456/2018

13.07.2018

Intellectual Property Rights

In order to conclude whether one mark is deceptively similar to another, broad and essential features of the two are to be considered

The Plaintiff has instituted present suit for permanent injunction restraining the Defendant from using any trade mark that is identical or deceptively similar of the plaintiff's trade mark 'PEHLA NASHA', either as a radio channel titled 'RADIO NASHA' or a trade mark, trading style, name, logo, part of name or in any other manner. It is the case of the Plaintiff that, Defendant, just prior to the institution of the suit has launched a new FM radio channel under the name/mark 'RADIO NASHA' wherein they are using nearly identical/deceptively similar mark as that of the Plaintiff as its channel/brand name, to usurp the well established goodwill and reputation of the Plaintiff.

The observations, even if any made for refusing ad interim injunction in the form of ex parte injunction, even before the Defendant has had an opportunity to file its written statement, are not to affect the decision of the application for interim injunction. It is immaterial that, the music platform under the mark 'PEHLA NASHA' of the Plaintiff is accessible from use of medium of Wi-Fi/internet and the music platform of the Defendant under the mark 'RADIO NASHA' is accessible through the medium of radio/transistor and transmitted through frequency modulation airwaves.

With the widespread use of smart phones having the facility of radio also, even music through airwaves, at least in the cities of Delhi and Bombay is accessed more through smart phones than through radios and transistors which, once an essential fixture in a household and to the extent of requiring licence, are today hardly found in any household. Thus, it cannot also be said that the instrument, through which the music under the mark 'PEHLA NASHA' of the Plaintiff and music under the mark 'RADIO NASHA' of the Defendant can be accessed are different or that the same obliterates the similarity/deceptive similarity.

In the face of the admission of the Defendant of the Plaintiff being the prior adopter of the mark 'PEHLA NASHA' by at least about two years before the Defendant, the reason for the Defendant to adopt the mark 'RADIO NASHA' indeed becomes intriguing. The Defendant had no explanation for adopting the mark 'RADIO NASHA'.

Even otherwise, in today's day and world, trade marks especially for services as that of the Plaintiff and the Defendant have acquired importance several times more than what they did in yesteryears. The Defendant must have engaged professionals for coining the mark 'RADIO NASHA' for its service. It can at this stage safely be assumed that, the Defendant hoped, either to cause loss or harm to the plaintiff by incorporating the word 'NASHA' in its mark or to gain from the goodwill of the Plaintiff. In either situation, the intention of the defendant would qualify as 'not bona fide' and the plaintiff would be entitled to interim injunction.

The word 'NASHA' is a word of Hindi language and means intoxication and/or mania and which need not always be of alcohol and can also be of anything or anyone. The Plaintiff, by adopting the said word in its mark for music services, is attempting to lure the patrons to get intoxicated and addicted to its music and will certainly suffer if any of its patrons, owing to the confusion aforesaid, is directed to the service of the defendant. 'NASHA' is the dominant part of the mark of the Plaintiff with the word 'PEHLA' therein being unlikely to be remembered.

The Supreme Court in Parle Products (P) Ltd. Vs. J.P. & Co., Mysore, held that, a mark is likely to be remembered by the idea it conveys and it is too much to expect the consumers to remember the exact details of the marks. It was further held that, marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. It was yet further held that, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with, for reasons of their own. It was thus held that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered.

The Plaintiff, after acquiring more goodwill in the mark 'PEHLA NASHA' cannot be prevented from also providing services of an FM Radio under the said mark since both fall in the same class of goods/services in which goods and services are classified under the Trade Mark laws. The balance of convenience is in favour of the Plaintiff and against the Defendant. The loss of even one patron confusing the Defendant for the Plaintiff would be irreparable.

The Defendant, during the pendency of the suit, is restrained from using the mark 'RADIO NASHA' or any other mark similar or deceptively similar to the mark 'PEHLA NASHA' of the Plaintiff in relation to broadcasting, re-broadcasting, radio broadcasting and internet broadcasting services. However it is deemed appropriate to make the said injunction effective with effect from 30 days of the passing of this order/judgment so that the Defendant has sufficient time to effect the change. The application is thus allowed.

Relevant

Parle Products (P) Ltd. Vs. J.P. & Co., Mysore MANU/SC/0412/1972
: (1972) 1 SCC 618, Cadila Healthcare Ltd. Vs. Cadila Pharmaceuticals Ltd. MANU/SC/0199/2001
: (2001) 5 SCC 73

Tags : Mark Similarity Injunction Grant

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