I am pleased to bring to you our next guest post by Sudarshan Mohta. Sudarshan is a Mumbai based lawyer pursuing media and entertainment laws and is currently working with Shemaroo Entertainment Ltd. He had earlier written a post for us on intermediary liability here.
On 16th November, 2018, a permanent injunction restraining infringement and passing off trademark “AAJ TAK” was awarded in favour of Living Media India Limited in CS(COMM) 990/2016 by the Hon’ble Delhi High Court.
ABOUT THE PARTIES
Plaintiff – Plaintiff claimed to be a renowned news channel having received various recognition and award for its work.
Defendant – claimed to be the owner of a fortnightly periodical.
ISSUE FOR CONSIDERATION
- Defendant had infringed and was passing off the trademark of the Plaintiff.
FACTS OF THE CASE
- Defendant had received a cease and desist notice from the Plaintiff in 2014.
- Despite service none appeared on behalf of the Defendants.
- Plaintiff claimed to be the owner of the trademark “AAJ TAK” and claimed continuous and uninterrupted usage of it since 1995.
- Defendant No.1 claimed to be the owner of a fortnightly magazine “AAJ TAK AAMNE SAMNE”.
- Defendant No.2 claimed to be the owner/registrant of the domain name “aajtakaamnesamnie.com” as per the Whois database.
- Plaintiff claimed to have spent considerable amounts of money on advertising and promotion of the trademark “AAJ TAK”.
- Plaintiff claimed that the trademark “AAJ TAK” had earned a well-known status and commands highest level of protection irrespective of the class.
- Plaintiff also claimed to have been running various other news channels including “AAJ TAK TEZ” and “DILLI AAJ TAK”.
- Basis the unrebutted evidence filed on behalf of the Plaintiff, it was established they are the registered proprietor of the trademark “AAJ TAK”.
- The goods and services sold under the deceptively similar mark will also lead to passing off the goods or services of the Defendant as that of the Plaintiff.
- Decree of Rs. 1,00,000/- is passed in favour of the Plaintiff and against the Defendant along with interest at 8% from the date of decree till payment is received.
WHAT IS INFRINGEMENT OF A TRADEMARK?
Trademark is said to be infringed when a registered trademark is said to be used by a person who is neither the registered proprietor nor the licensee of the registered trademark in relation to the goods/services for which it is registered.
Infringement is a statutory remedy provided u/s. 28(1) of The Trademark Act, 1999.
WHAT IS PASSING OFF?
Passing off is a tort actionable under common law and arises when an unregistered trademark is used by a person who is not the proprietor of the said trademark in relation to goods/ services of the trademark owner.
The concept of passing off is founded on a basic tenet that, ‘a man is not to sell his own goods under the pretence that they are goods of another’.
Essential characteristics of a passing off action are as follows –
- Act must be done in the course of trade;
- The ultimate customer of the plaintiff’s goods have been misrepresented;
- The act of misrepresentation is calculated to injure the business or goodwill of the plaintiff;
- The act causes actual damage to the business or goodwill of the plaintiff.
To adjudicate a case of passing off, courts in India have adopted the Classical Trinity Test, which requires the plaintiff to prove the following in order to establish its claim –
- Goodwill/ Reputation – The plaintiff has to prove that he had acquired a reputation/ goodwill in his mark.
- Misrepresentation – Whether intentional or unintentional on behalf of the defendant which led the purchaser to believe that the good/ services of the defendant are associated with that of the plaintiff.
- Damages – Plaintiff has already suffered damage or is likely to suffer damages due to such misrepresentation.
JUDGEMENTS ON TRADEMARK INFRINGEMENT AND PASSING OFF
- Wockhardt Limited vs. Torrent Pharmaceuticals Ltd.
Fraud is not a necessary element in the case of passing off –
“Though passing off is, in essence, an action based on deceit, fraud is not a necessary element of a right of action, and that the defendant’s state of mind is wholly irrelevant to the existence of a cause of action for passing off, if otherwise the defendant has imitated or adopted the Plaintiff’s mark”
- Cadbury India Ltd. & Anr. vs. Neeraj Food Products
Relevance in a name –
It would be also useful to consider the principles which were laid down in 1996 RPC 697 Harrods Ltd. v. Harrodian School Limited wherein it was held that the deception is the gist of the tort of passing off and it is not necessary for a plaintiff to establish that the defendant consciously intended to deceive the public if that is the probable result of his conduct, nevertheless, the question why the defendant chose to adopt a particular name or get up is always highly relevant. It is a question which calls for an answer.
- Ranga Rao vs. Anil Garg
Obligation of the subsequent entrant –
“…. Thus, in Harold F. Ritchie, Inc.’s case (supra), it was held that the second comer has a duty to so name and dress his product as to avoid all likelihood of confusion amongst the consumers. …”
Registration of a trademark is not mandatory, however, in case of infringement of a registered mark, there is only a limited burden of proof on the registrant. In the case of passing off an unregistered trademark the plaintiff will have to prove deceptive similarity, confusion caused to the public and likelihood of injury to the plaintiff’s goodwill.
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