Title: TV 18 BROADCAST LTD. Vs BENNETT, COLEMAN AND COMPANY LIMITED
Judgement Delivered: 04.07.23
+ CS(COMM) 279/2022
CORAM: HON’BLE MR. JUSTICE AMIT BANSAL
Introduction
Delhi High Court dismissed the petition filed by TV 18 Broadcast, seeking interim injunction on the use of term “Bhaiyaji” under class 41.
Facts of the case
The plaintiff is a member of the largest media and entertainment conglomerate in India, the Network18 group. The plaintiff’s business operations include managing a number of television networks in India, including CNBC-TV18, CNN News18, and News18, which broadcast in fifteen different languages and 26 states across the nation. Additionally, the company operates entertainment and informational media channels as Colours, Nickelodeon, MTV, and History TV18. In addition of creating TV shows, the plaintiff is also involved in creating TV programme and one such program is named as “Bhaiyaji Kahin” and they adopted the device mark for the same with effect from 29th December 2016 under classes 38 and 41, Since then the show aired 1200 episodes and generated a revenue of Rs.16,26,42,000 alone in the year 2021-22.
The defendants used the trademark to launch “Bhaiya Ji Superhit” in January 2022, which was intended to use comedy and satire to highlight newsworthy topics. Due to the resemblance of the two parties’ trademarks and the nature of their respective shows, the plaintiff sent the defendant with a cease-and-desist letter dated January 10, 2022, ordering them to stop using the contested mark “Bhaiya Ji Superhit” among other things.
However, the defendant asked the plaintiff to drop the stop and desist letter, pointing out that there was no similarity between the defendant’s programme format and the plaintiff’s, nor was there any chance that the impugned mark and the plaintiff’s trademark would be confused.
Reiterating the arguments made in its initial cease and desist letter, the plaintiff once more sent the defendant a legal notice on February 24, 2022. The accusations mentioned in the notifications, however, were disputed by the defendant.
In order to prevent the defendant from violating the plaintiff’s trademarks, passing off, and other ancillary reliefs, the plaintiff brought the current lawsuit.
Analysis and Decision of the Court
The High Court held that, the “Bhaiyaji Kahin” mark used by the plaintiff is registered under classes 38 and 41. In contrast to the registration under class 38, the registration under class 41 contains a disclaimer about the term “Bhaiyaji”. There is no question in my opinion after reading the aforementioned classification that television shows, particularly those relating to news, belong in class 41 and not class 38. In reality, there is a blatant exclusion for television broadcasts in class 38. Telecommunication services, such as television transmission, are also included in class 38.
Therefore, names of television stations like Times Now, CNN News18, News18, and similar ones will be included in class 38. The subject of class 41 would be the titles of the shows that are shown on these networks. Therefore, class 41 would be the applicable class for finding infringement.
The name “Bhaiyaji” is the only commonality between the plaintiff’s and defendant’s marks. The terms “Kahin” used by the plaintiff and “Superhit” used by the defendant are not interchangeable. The plaintiff cannot prevent the defendant from using the term “Bhaiyaji” due to the disclaimer about the term under class 41. This is also made explicit by Section 28(2) of the Trade Marks Act, which states that all restrictions and conditions that are a part of the registration granted apply to the exclusive right to use a trademark.
In spite of this, the term “Bhaiyaji” is a well-known pronoun in several Indian states, such as Uttar Pradesh and Bihar, and it literally means “brother”; as a result, it lacks distinction. The defendant has also provided enough evidence to the court to demonstrate that the term “Bhaiyaji” is commonly used in trade in India and is used in a number of radio and television broadcasts. Thus, in my initial assessment, “Bhaiyaji” is a generic phrase that is in common usage, and nobody has the exclusive right to use such generic words. According to Section 17 of the Trade Marks Act, 1999, the plaintiff is not entitled to exclusive rights over the mark “Bhaiyaji” in light of the aforementioned.
Attention has also been brought to the Plaintiff’s response to the examination report of the registry where they had applied for registration of the mark “Bhaiyaji Kahin” under class 41, while distinguishing it from “Bhaiya Aisa Kyun”, the Plaintiff has clearly taken a stand that their mark is not similar to the said mark and it is to be compared as a whole and cannot be dissected thus they cannot take contrary view on using of term “Bhaiyaji” by the defendant, it is not permissible to approbate and reprobate.
Plaintiff has placed reliance on Shree Nath Heritage Liquor Pvt. Ltd. v. M/s. Allied Blender & Distillers Pvt. Ltd., 2015 OnLine Del 10164, wherein the court upheld the interim order of the division bench in respect of the defendant using the mark “Collector’s Choice” as against the plaintiff’s registered mark of “Officer’s Choice” in respect of alcoholic beverages, but this reliance is flawed as the dominant word was officer and their was no disclaimer but in the present case the dominant word is “Bhaiyaji” and there is a disclaimer present thus the aforesaid judgement does not advance the case of the plaintiff. Aditya Birla Fashion & Retail Ltd. v. Under Armour, Inc., 2023 SCC OnLine Del 2269, there was no disclaimer included in the registration issued in favour of the plaintiff as there is in the current case. as a result, the abovementioned judgement does not strengthen the plaintiff’s case.
Also, regarding the format of the show, the shows are quite different from each other both in terms of nature as well as the format. Therefore, in my prima facie view there is no likelihood of confusion between the two television shows. In view of the discussion above, the plaintiff has failed to make out a prima facie case for grant of interim injunction. Accordingly, the application is dismissed.
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Written By – Shreyanshu Gupta