Bennett, Coleman & Company Limited vs. E! Entertainment Television Llc

* IN THE HIGH COURT OF DELHI AT NEW DELHI
st
% Decided on: 31 May, 2023

+ CS (COMM) 253/2019

BENNET, COLEMAN & COMPANY LIMITED ..... Plaintiff
Represented by: Mr. Hemant Singh, Ms. Pragya Jain,
Ms. Soumya Khandelwal, Advs.
versus
E! ENTERTAINMENT TELEVISION LLC. ... Defendant
Represented by: Ms. Shwetashree Majumdar,
Mr.Prithvi Singh and Ms.Devyani
Nath, Advs.

CORAM:
HON'BLE MS. JUSTICE MUKTA GUPTA

I.A. 7077/2019 (under Order XXXIX Rule 1 and 2 CPC – by Plaintiff)
I.A. 8833/2019 (under Order XXXIX Rule 4 CPC – by defendant)
I.A. 8832/2019 (under Order VII Rule 10 & 11 CPC – by defendant)

1. By I.A. 7077/2019, the plaintiff prays for an order restraining the
Defendant, its directors, agents, officers, employees, cable operators, multi-
system operators, direct to home operators and other persons associated
with it from adopting and using the mark “NOW”, “E NOW” and “E
NEWS NOW” or any other mark or name which is identical or deceptively
similar, either singly or in conjunction with any other word or mark, to
plaintiff‟s channel name/ registered mark, or/ and the plaintiff mark‟s logo
style, format, font, get up or color scheme. The plaintiff also prays for
restraining the Defendant and its directors, partners, officers, employees,
agents, licensees, cable operators, franchisees or any other persons from
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using the plaintiff‟s domain name/ website timesnow.tc, moviesnow.co.in,
romedynow.com, economictimes.indiatimes.com/et-now, etc. or any other
domain name similar in fashion for any internet site or social media site,
account or handle of the plaintiff or to create any third party interest in the
domain name currently in use by the defendant and for direction to
defendant to maintain accounts of profit illegally earned by them.
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2. Summons in the suit were issued on 14 May, 2019 and on which
date interim injunction was also granted in favour of the plaintiff restraining
the respondent from starting any channel/ programme in India by the mark
“NOW” or any other mark deceptively similar to the mark “NOW”.
3. The defendant thereafter filed an appeal challenging the order dated
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14 May, 2019 granting interim injunction in favour of the plaintiff,
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wherein the Hon‟ble Division Bench of this Court vide order dated 30
May, 2019 in FAO(OS)(Comm) 135/2019 took the view that the defendant
should file an application under Order XXXIX Rule 4 seeking vacation of
the ad-interim injunction. Accordingly, I.A. No. 8833/2019 was filed by the
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defendant seeking vacation of the said injunction order dated 14 May,
2019.
4. By I.A. 8832/2019, the defendant prays for rejection of the plaint
filed by the plaintiff with exemplary costs, or in alternative, the return of
plaint for presentation before a court of competent jurisdiction.

About the Plaintiff and its contentions
5. The plaintiff company is popularly known as the „Times Group‟
which primarily runs print media since 1838 and is the flagship company of
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the Times Group Company. As per the plaint, the plaintiff has 33 publishing
centers, 37 printing centers with over 7000 employees and a circulation of
approximately 4.3 million copies daily, 29 niche magazines and 32 radio
stations. Apart from being involved in various businesses relating to media,
it is also involved in television broadcasting and distribution for its channels
which is collectively and popularly known as the „Times Network‟. It is
claimed by the plaintiff that the trademarks “TIME”, “TIMES” and “NOW”
are the property of the plaintiff company only, and its subsidiaries and
affiliates have been allowed to use the same. The plaintiff has been using
the series of mark “TIMES” and “NOW” in various combinations, in
respect of television channels for more than a decade. Times Network
houses „Times Now‟ channel, which is India‟s most viewed English News
Channel operating successfully for over twelve years, „Times Now World‟
is the HD version of Times Now Channel, „ET Now‟ channel is India‟s
most viewed English Business News channel, „Mirror Now‟ launched as
„MAGICBRICKS NOW‟, was India‟s first 24x7 Real Estate and Property
Business Television Channel, which was revamped and renamed as „Mirror
Now‟, channel „Movies Now‟ is India‟s first and most viewed English
Movie channel, „Romedy Now‟ and „Romedy Now HD‟ are India‟s
premium English Entertainment Channels focused on Romance and
Comedy. The suffix “NOW” is thus attached with all the channels of the
plaintiff except „Zoom‟, „MN+‟, „MNX‟ and „MNX HD‟ operated by the
plaintiff or its subsidiaries and therefore, any other word for the purposes of
a name of a channel is distinctive of the plaintiff.
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6. It is the case of the plaintiff that on and from 13 October, 2008, it
started using the logo “E Now” for entertainment and film review shows
where „E‟ represents Entertainment and “NOW” represents a connection
with the brand of Times Group. The plaintiff decided to launch a new logo
of “E Now” and applied for registration of the trademark under class 38 and
41, and simultaneously, application for trademark registration of old logo
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and word mark “E Now” was also applied by the plaintiff on 09 February,
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2018 with a user date from 13 October 2008. The registration of these
marks was opposed by the defendant claiming rights over the logo and use
of “E!” by the defendant. It was contended on behalf of the plaintiff that the
present suit is limited to class 38 and 41 of the trademark registrations
which pertain to “television broadcasting services” and “television based
entertainment services” respectively.
7. It was contended on behalf of the plaintiff that the cause of action is
based on the assertion of proprietary right in respect of „E! Now‟ and „E!
News Now‟ by the defendant for television entertainment services falling
under class 41. It was contended that the defendant has not filed any
trademark application for „E! Now‟ or „E! News Now‟ in India till date and
hence, no right can be claimed by the defendant. It was submitted that the
present suit does not pertain to defendant‟s trademark “E!”, rather the
present suit is to prevent the defendant from using the mark “NOW” in
India. Further, it was submitted that the defendant aims to capitalize on the
reputation and goodwill of the plaintiff by choosing the plaintiff‟s mark
“NOW” for launching its portals with the mark „E! Now‟ or „E! New Now‟
and claiming rights over the same and use of these said marks by the
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defendant in relation to the identical services and business is bound to cause
confusion and deception. The plaintiff has been using the „E NOW‟ since
2008, the “NOW” mark is per se registered and it is an essential feature of
the plaintiff‟s mark. It was contended on behalf of the plaintiff that it has a
large collection of marks with “NOW” as suffix and prefix and other
variations and hence, it is the proprietor of the “NOW” family marks in the
television broadcast and entertainment services. The plaintiff claims to have
over 250 registrations with the mark “NOW”, with 78 registrations in class
38 and about 76 registrations in class 41, and hence the plaintiff claims to
have an exclusive right to use the “NOW” family of marks in terms of
Sections 28 and 29 of the Trademarks Act. Reliance was placed on the
decisions cited as 2009 (40) PTC 417 (Del.) (DB) Amar Singh Chawal
Wala v. Shree Vardhman Rice , AIR 1965 SC 980 Kaviraj Pandit Durga
Dutt Sharma v. Navaratna Pharmaceutical and AIR 1963 SC 449
Amritdhara Pharmacy v. Satya Deo Gupta . It is claimed that on account of
their prior adoption, extensive use and promotion of the “NOW” marks, the
plaintiff‟s said marks have acquired distinctiveness and earned immense
reputation as a brand and unique identity of its channels, for which the
plaintiff also relies upon various decisions of this Court where the mark
“NOW” was recognized; Bennett Coleman and Company Ltd. v. Real Video
Impact Pvt. Ltd and Anr ., [CS(OS) No. 1701 of 2014, order dated
08.08.2014], Bennett Coleman and Company Ltd. v. M. Akram Pasha ,
[CS(OS) No.828 of 2018, order dated 08.08.2018] and Bennett Coleman
and Company Ltd. v. Future Vision Broadcast Private Limited ,
[CS(COMM) No.846 of 2016, order dated 23.12.2016].
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8. It was further contended that the marks of the defendant i.e. „E! Now‟
and „E! News Now‟ have a structural similarity with the plaintiff‟s marks E
NOW used in relation to television programmes which constitutes
infringement as also passing off. It was further contended that although the
defendant has asserted its proprietary right and challenged the plaintiff‟s
marks before the Registrar as well as by way of cease and desist notice, but
the defendant is yet to use its marks in India. Further, the plaintiff has no
ways and means to anticipate defendant‟s plan in Indian market, however,
the rights asserted and rights challenged constitute sufficient basis for the
apprehension that the activities of defendant might violate plaintiff‟s right
and hence, plaintiff seeks relief by way of a quia timet action. Reliance was
placed on the decision cited as AIR 2000 SC 1410 Kuldip Singh v. Subhash
Chander Jain & Ors . It is thus prayed that in view of the prima case having
been established, alongwith the balance of convenience and irreparable
injury in its favour, the plaintiff is entitled to the relief of injunction.

About the Defendant and its contentions
9. As per the defendant, it is an American pay television channel owned
by the NBC Universal Cable Entertainment Group Division of NBC
Universal Media LLC, which is a global media and entertainment
conglomerate with its presence in various countries. It runs various
programs, shows and activities under mark “E!” and E! formative marks
such as „E! Entertainment‟, „E! Online‟, „E! News‟, „E! HD‟, etc. The
defendant used the name „E! News Now‟ for a digital/ online news
segment/ bulletin around the year 2007, and „E! Now‟ online television
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service was launched in or around March 2013 in USA and other countries.
The said service is featured and promoted online on its E! Online website
i.e. eonline.com. The defendant claims to be the registered proprietor of
several E! and E! formative marks under class 9, 38 and 41 of the
Trademarks Act. It was contended on behalf of the defendant that the
plaintiff filed applications seeking registration of “E NOW” and its variants
in classes 38 and 41 which were duly opposed by the defendant on the
grounds of the similarity with its E! and other E! formative marks. The
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defendant also issued a cease and desist notice to the plaintiff on 30 May
2018.
10. It was the case of the defendant that the earliest registration of the
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mark “NOW” by the plaintiff is of 31 July, 2008 which is subsequent to
the date of use of „E! News Now‟ by the defendant, and hence, the “NOW”
label and marks have been wrongly registered. It was contended on behalf
of the defendant that the services for which the injunction has been granted
clearly fall under class 38, where the plaintiff has no registration over the
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mark “NOW”. The order granting interim relief dated 14 May, 2019
wrongly records that the trademark “NOW” is registered in various
categories since 2006, however, the plaintiff has no registration on the
standalone mark “NOW” and therefore, the said interim order was based on
misrepresented facts. It was further contended that in view of the fact that
the plaintiff does not have a standalone registration in class 38, the
plaintiff‟s family of “NOW” marks cannot be compared to the trademarks
of the defendant i.e. „E! Now‟ or „E! News Now‟, rather only that particular
mark of the plaintiff which allegedly infringes the mark of defendant should
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be compared. It was contended that there is no evidence to prove the use of
“TIMES NOW” or any other “NOW” suffix marks by the plaintiff since
2006 and the filing of trademark registration certificates is not sufficient to
demonstrate use and/ or prior use which is critical for grant of interim relief.
It was submitted that the onus is on the plaintiff to show that it had attained
goodwill in 2007 when the defendant started using E! News Now in the
international market and not just in India. It was further contended by the
defendant that the mark “NOW” per se cannot be well known mark as the
same has never been used by the plaintiff for any goods or services, rather
all are uses of composite marks. Reliance was placed on
MANU/DE/0832/2020 Peps Industries Pvt. Ltd. v. Kurlon Ltd .
11. It was contended on behalf of the defendant that the essential feature
of the defendant‟s mark is E!, which is distinctive arising out of bona fide
adoption of E! News Now since 2007 and E! Now since 2013 having
transborder reputation, and as a prior user, the defendant‟s rights are
superior to that of the plaintiff‟s. Further, there is no use of the standalone
mark “NOW” for which mere registration is not sufficient. It was contended
that the plaintiff had applied for registration of E News, E TV and E Net in
classes 9, 38 and 41, but those applications were withdrawn pursuant to
oppositions filed by the defendant. It was further contended that the plaintiff
had suppressed, concealed and misrepresented material facts. The plaintiff
had expressly stated before the trademark registry in its reply to objections
to „Romedy Now‟ that no exclusivity can be claimed over the mark “NOW”
as it is “common to the trade”. It was submitted that these disclaimers also
demonstrate that even in the opinion of the Trademark registry, “NOW” is
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common to trade, and as the plaintiff did not take up the issue of disclaimer
with registry, it can be assumed that the disclaimer was acceptable to the
plaintiff, and only after defendant pointed out the same in the present
proceedings, that the plaintiff wrote to the Registry expressing concern over
the disclaimer. Reliance was placed on the decision cited as
MANU/DE/2363/2018 Mankind Pharma Ltd. v. Chandra Mani Tiwari and
(2016) 1 HCC (Del) 250 SK Sachdeva & Anr. v. Shree Educare Ltd. & Anr .
It was further contended that the mark NOW is a publici juris as a number
of third parties are also using the same for example, Kotak Now,
PlayStation Now, Eros Now, VCNOW and so on, and when one part of a
composite mark is a publici juris , the consumers focus on the rest of the
mark. Reliance was placed on MANU/DE/0311/1997 SBL Ltd. v. Himalaya
Drug Co ., MANU/DE/0009/2010 Skyline Education Institute Pvt. Ltd. v. SL
Vaswani , MANU/SC/0052/1955 Registrar of Trademarks v. Ashok
Chandra Rakhit , MANU/DE/0869/2007 Astrazenca UK Ltd. v. Orchid
Chemicals & Pharmaceuticals Ltd . and MANU/DE/3179/2009 Schering
Corporation & Ors. v. Alkem Laboratories Ltd .
12. It was further contended that the „disclaimers‟ were not disclosed to
this court at the time when interim injunction was granted or in its plaint or
application. Further, there are three trademarks where the word “NOW”
appearing as a suffix has been disclaimed i.e. trademark registration nos.
2500350, 2500351 and 569469, and there are six other registrations with
NOW as a suffix which have been challenged by a third party, but neither of
these facts have been disclosed by the plaintiff. It was further contended
that the plaintiff does not have any trademark registration on the use of the
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mark “NOW” in class 38, hence ad interim injunction could not possibly
have been extended to internet/ web portals and television programs which
fall under the head telecommunications (class 38). Furthermore, it was
submitted there are at least 39 other registrations in class 38 and 34 other
registrations in class 41 which use “NOW” as a suffix. There is nothing on
record to show that the plaintiff has been using the mark “NOW” as a
standalone mark and therefore, the plaintiff cannot be given the benefit
when it has failed to disclose this fact of non-use of the standalone mark.
Further, even otherwise, the defendant is not using “NOW” as a standalone
mark over which the plaintiff seeks protection, and thus there is no basis to
restrain the defendant from starting any channel/ programme in India.
Reliance was placed on the decision reported as MANU/DE/0295/2016
Living Media India Ltd. & Anr. v. Alpha Dealcom Pvt. Ltd. (SB),
MANU/DE/0461/2014 Living Media India Ltd. & Anr. v. Alpha Dealcom
Pvt. Ltd. (DB) and (2010) 2 SCC 142 Skyline Education Institute (Pvt.) Ltd.
v. SL Vaswani & Ors . The defendant also submitted that an equitable relief
cannot be granted to a party who has approached the court with unclean
hands as held in the case reported as 155 (2008) DLT 56 Warner Bros.
Entertainment Inc. & Anr. v. Harinder Kohli & Ors. , (2017) 241 DLT 319
Paramount Surgimed Ltd. v. Paramount Bed India Pvt. Ltd. & Ors. , 2017
SCC OnLine Del 8122 Columbia Sportswear Company v. Harish Footwear
& Anr. and AIR 2004 SC 1469 R. Vishwanatha Pillai v. State of Kerala .
13. It was further contended that the present suit cannot be seen as a quia
timet action because the defendant‟s marks E! News Now and E! Now have
been in existence since 2007 and 2013 respectively and the Indian
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customers are well aware of the same and that the defendant has a
tremendous goodwill and reputation in India due to internet exposure. It
was further contended that the fact that defendant will execute agreements if
it wants to launch a channel in Delhi is not a basis of jurisdiction and the
threat cannot be said to be real and imminent to sustain quia timet action.
The Indian customers have been exposed but no specific targeting of Indian
customers and no commercial transaction was done in Delhi and the onus is
on the Plaintiff to establish that the defendant had targeted the people in
Delhi. It was also contended that there is no “real and imminent” threat for
quia timet action as no steps have been taken by the defendant to launch a
channel or programme in India for which, reliance was placed on the
decision cited as 2017 (70) PTC 316 (Del.) Radico Khaitan Ltd. v.
Nakshatra Distilleries & Breweries Ltd & Ors. and Allied Blenders &
Distilleries v. RK Distilleries Pvt. Ltd. [FAO(OS) 251/2016 dated
28.02.2017].
14. It was further contended that the elements of “classical trinity” i.e.
goodwill, misrepresentation and damage must be proved for claiming
injunction. Plaintiff‟s mark “NOW” which is descriptive and non-
distinctive mark cannot be said to have attained goodwill internationally
within one year when the plaintiff‟s channel TIMES NOW was allegedly
launched in 2006 and the defendant started using the mark E! News Now in
2007. The defendant‟s use of E! News Now is prior to that of the plaintiff‟s
use of E NOW, and therefore there is no scope of any misrepresentation.
Further no damage whatsoever has been caused to the plaintiff as the
defendant is not using its marks E! Now or E! News Now in India for any
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programme/ channel for which reliance was placed MANU/SC/0472/1995
Gujarat Bottling Co. Ltd. v. Coca Cola Co. , MANU/SC/0553/1994 Morgan
Stanley Mutual Fund v. Kartick Das and (2017) 241 DLT 48 Radico
Khaitan Ltd. v. Nakshatra Distilleries & Breweries Ltd. & Ors .
15. The defendant had moved the above mentioned I.A.No.8832/2019 for
rejection/ return of plaint, as the suit is without jurisdiction and without any
cause of action and therefore, the same being not maintainable is liable to
be returned/ rejected. It was contended on behalf of the defendant that this
court does not have the territorial jurisdiction to deal with the present suit as
the registered office of the plaintiff is at Mumbai which has not been
disclosed by it, rather the plaintiff has claimed that its registered office is at
New Delhi with an aim to create jurisdiction of this Court. Even in its reply
to the said appeal FAO(OS)(Comm) 135/2019, the plaintiff claimed the
mentioning of incorrect address to be a typographical error, for which the
plaintiff even sought to amend the pleadings. It was submitted that the
Delhi office of the plaintiff is not its registered office and the mentioning of
the Delhi address cannot be typographical error. Even the Delhi address so
given by the plaintiff is incorrect as the same is not its own office address
but that of its attorney. Further, no cause of action can be said to have arisen
in Delhi just because cease & desist and subsequent correspondence was
sent from Delhi. Although the cease & desist notice was addressed to the
Delhi office, but there is no law under Section 29 of the Trademarks Act as
relied upon by the plaintiff to show that in an infringement suit, issuance of
a letter to their wrongly identified principal office can create a cause of
action without any of the acts of alleged infringement having occurred in
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Delhi. It was for the plaintiff to show what was the special happening in
Delhi which has not happened in Bombay. Further, there is nothing on
record to show that the defendant was targeting the customers in Delhi or
that there is commercial transaction which took place in Delhi. Defendant
does not run any TV Channel in Delhi or in India, and mere accessibility of
a website in a geographical area does not constitute a cause of action when
the defendant has not targeted Indian customers as a whole or in Delhi in
particular and for this, reliance for was placed on 2010 (42) PTC 361 (Del.)
Banyan Tree Holding (P) Ltd. v. A. Murali Krishna Reddy & Anr . It was
contended that in terms of section 134 of the Trademarks Act and the
decisions reported as AIR 2015 SC 3479 Indian Performing Rights Society
Ltd. v. Sanjay Dalia & Ors. , 2016 (65) PTC 469 (Del.) Ultra Home
Construction Pvt. Ltd. v. Purushottam Kumar Chaubey & Ors. , 2017 SCC
OnLine Del 6783 HSIL Ltd. v. Marvel Ceramics & Ors. , 2018 SCC OnLine
Del 7545 Huntsman International (India) Pvt. Ltd. v. Abiss Textile
Solutions Pvt. Ltd. & Ors. and 2017 (71) PTC 155 (Del.) Federal Express
Corporation v. Fedex Securities Limited & Ors. that misstatement of the
plaintiff is fatal to its claim, and hence, liable to be returned. It was
contended that the use of Delhi address in a trademark application cannot
confer jurisdiction on this court and reliance was placed on (2006) 9 SCC
41 Dhodha House v. SK Maingi .
16. It was contended on behalf of the defendant that no cause of action
whatsoever has arisen in Delhi. E! News Now and E! Now has not been
used in India for any channel/ programme or offering any services to
internet user in India and the defendant‟s E! family of trademarks enjoys
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transborder reputation in India. The test of jurisdiction lies in purposefully
availing it by targeting the consumers in that jurisdiction and mere
accessibility of the website. While, defendant‟s marks have been exposed to
Indian public and acquired fame and reputation in India, defendant has
never specifically targeted Indian customers under these marks, and hence,
this court has no jurisdiction. It was also contended that no cause of action
can arise from the cease and desist letter and that the said letters were sent
to the Delhi office only because the relevant trademark applications were
filed using the Delhi address. Reliance was placed on ILR (2005) 2 Del.
751 Golden Peacock Overseas v. Ranjit Industries and (2011) 177 DLT 789
M/s. Carmel Overseas Ltd. v. Sturdy Industries Ltd.
17. In its rejoinder arguments, it was contended on behalf of the plaintiff
that the cease and desist notice has been given a statutory sanction for
giving rise to a cause of action as Section 142 of the Trademarks Act
provides that a groundless threat of legal proceedings gives rise to a cause
of action and if the plaintiff is threatened by the said cease and desist notice,
plaintiff can seek a declaration. In this case, there is not only a challenge to
a plaintiff‟s right, but his proposed action also, and hence, the plaintiff can
seek injunction. It was further submitted that the broadcasting business is
conducted from the Delhi‟s office of the plaintiff, and in terms of Section
60 of the Copyright Act which is equivalent to the Section 142 of the
Trademarks Act, the cease and desist notice would give rise to a cause of
action. Furthermore, to counter the argument that the plaintiff misled the
Registrar, reliance was placed on Section 18 of the Act and Rule 3 of the
Trademark Rules.
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18. It is stated that it was the defendant who chose to serve the notice
upon the plaintiff at Delhi office and as the substantial part of the cause of
action arose in Delhi, cease and desist notice was received by plaintiff at
Delhi and the corporate office of the plaintiff is at Delhi, the court at Delhi
would have the jurisdiction and the plaint would be maintainable before this
Hon‟ble Court and the application under Order VII Rule 10 and 11 of the
Code of Civil Procedure would not be maintainable. Reliance was also
placed on the decisions cited as (2006) 6 SCC 207 Om Prakash Srivastava
v. Union of India & Anr. , 2004 (28) PTC 251 SC Exphar SA & Anr. v.
Eupharma Laboratories & Anr. , 2011 (48) PTC 380 (Del) South African
Breweries International (finance), B.V. and Anr. Vs. Mohan Goldwater
Breweries Ltd. & Anr ., 2016 (68)PTC 178 (Del) (DB) RSPL Ltd. vs.
Mukesh Sharma & Anr ., and 2018 (76) PTC 90 (Del) Burger King
Corporation vs. Techchand Shewakrami & Ors .
19. It was further submitted that the assertion by the defendant that it
neither has any TV or broadcasting business in India nor has any
application services in India, but its website targets the customers in US,
Latin America, Italy and some other European nations and not in India, is
incorrect as the defendant has asserted its rights in India in its written
statement, legal notice and pleadings before the Registrar. If the said
assertion is to be believed then in absence of a mark in India, the defendant
cannot claim that it has a trans-border reputation. Further, in the absence of
any use of trademark E! Now and E! News Now in India, no proprietary
right can be claimed by Defendant in India. Reliance was placed on (2018)
73 PTC 1 (SC) Toyota Jidosha Kabushiki Kaisha v. Prius Auto Inds. Ltd. &
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Ors. and (2012) 49 PTC (Del.) Trans Tyres India Pvt. Ltd.v. Double Coin
Holdings Ltd. & Anr.
20. It was further countered on behalf of the plaintiff that the defence of
“common to trade” cannot be based on mere presence of marks on the
trademark register, rather any plea of “common to trade” has to be
established by evidence of substantial usage, which has not been shown by
the defendant in the present case. Further, the issue in the present suit is
inter se the parties and therefore, the third party usages as cited as a defence
to the acts of infringement and passing off cannot be given any weightage
as has been held by the court in various decisions cited as 2008 (38) PTC 49
(Del.) (DB) Pankaj Goel v. Dabur India Ltd ., AIR 1971 SC 898 National
Bell v. Metal Goods , AIR 1960 SC 142 Corn Products Refining Co. v.
Shangrila Food Products Ltd. , and 2009 (41) PTC 57 (Del.) Novartis AG v.
Crest Pharma Pvt. Ltd. & Anr . It was further submitted that the plaintiff
was unaware about the said “common to trade” remark and learnt about the
same when pointed out by the defendant in its application under Order
XXXIX Rule 4. The letter mentioning the remarks “common to trade” was
sent by the erstwhile attorney without the plaintiffs‟ consent and a remedial
action against the same was taken by the plaintiff and in any event, the
exclusivity, goodwill and distinctiveness of the word “NOW” has to be
tested independently. It was further submitted that merely because plaintiff
took a stand while seeking registration cannot operate as estoppel in law
against the plaintiff from exercising its statutory rights and reliance was
placed on 2019 (79) PTC 99 (Del.) Telecare Network India Pvt. Ltd. v. Asus
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Technology Pvt. Ltd. , and 2018 (74) PTC 229 (Del.) H&M Hennes &
Mauritz AB & Anr. v. HM Megabrands Pvt. Ltd .
21. It was also submitted by the plaintiff that the defendant pleaded
concealment and misrepresentation by the plaintiff in respect of the three
trademark registration namely LOVCOM in class 9, LOVCOM NOW in
class 16 and Romedy Now in Class 38. It was countered by the plaintiff that
there are 77 registrations in class 38 and 73 registration in class 41 without
any disclaimer, and just one declaimer in class 38 does not affect the
proprietary right conferred in the Plaintiff in respect of “NOW” family of
marks. Reliance was placed on 2007 (35) PTC 95 (Del.) Cadbury India v.
Neeraj Food Products and 2012 (50) PTC 60 (Del.) Research in Motion v.
Data Infosys . It was submitted that even otherwise, disclaimers do not
affect the passing off action and reliance was placed on the decision in
(1955) 2 SCR 252 Registrar of Trademarks v. Ashok Chandra . It was
further submitted that the plaintiff was unaware about the disclaimer issued
to the registration under class 38 and that the said disclaimer was
incorrectly incorporated by the Registrar as no objection was raised to
registration of “NOW” as a part of trademark application for LOVCOM
NOW in class 9 and 16 and Romedy Now in class 38. Romedy NOW is
already registered in class 38 and 41 without any disclaimer as a word mark
vide registration no. 2500343 and as trademark vide registration no.
2500344 respectively.
22. It was further countered that in terms of Section 31 of the Trademark
Act, there is a prima facie presumption of the validity of the Trademark,
and that this court cannot go into the validity of the registration, as held in
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(2018) 2 SCC 112 Patel Field Marshal Agencies & Anr. v. P.M. Diesels
Ltd. & Ors .
23. Heard counsel for both the parties and perused the record.

I.A. 8832/2019 (under Order VII Rule 10 & 11 CPC – by defendant)
24. The grounds urged by the defendant seeking return of the plaint, inter
alia , are that neither the plaintiff nor the defendant work for gain in Delhi
and also no cause of action has arisen in Delhi in terms of the test laid down
by this Court in the decision reported as 2010 (42) PTC 361 (Del.) Banyan
Tree Holding (P) Ltd. v. A. Murali Krishna Reddy & Anr . Mere sending of
the legal notice by lawyers of defendant addressed to the authorized officers
of plaintiff at Delhi will not create a cause of action, particularly when there
was no threatened action contemplated in the said notice. Further, the
rejoinder which according to the plaintiff was the cease and desist notice
was not addressed to the plaintiff‟s corporate office at New Delhi but to the
counsel.
25. Section 134 of the Trade Marks Act (in short the TM Act) reads as
under:

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Rights Society Ltd. v. Sanjay Dalia & Ors. , Hon‟ble Supreme Court held:
16. “Corporation” in the Explanation to Section 20 CPC
would mean not only the statutory corporation but companies
registered under the Companies Act, as held by this Court in Patel
Roadways Ltd. v. Prasad Trading Co. [(1991) 4 SCC 270] and New
Moga Transport Co. v. United India Insurance Co. Ltd. [New Moga
Transport Co. v. United India Insurance Co. Ltd., (2004) 4 SCC 677]
The domicile of the company is fixed by the situation of its principal
place of business as held in Jones v. Scottish Accident Insurance Co.
Ltd. [(1886) LR 17 QBD 421 (DC)] In the case of companies
registered under the Companies Act, the controlling power is, as a
fact, generally exercised at the registered office, and that office is
therefore not only for the purposes of the Act, but for other purposes,
the principal place of business, as held in Watkins v. Scottish
Imperial Insurance Co. [(1889) LR 23 QBD 285 (DC)] A company
may have subordinate or branch offices in fifty different jurisdictions
and it may be sued in any one of such jurisdictions in respect of a
cause of action arising there, has been held in Peoples' Insurance
Co. Ltd. v. Benoy Bhusan Bhowmik [1943 SCC OnLine Cal 15 : AIR
1943 Cal 199] , Home Insurance Co. Ltd. v. Jagatjit Sugar Mills Co.
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Ltd. [AIR 1952 Punj 142] and Prag Oil Mills Depot v. Transport
Corpn. of India [1978 SCC OnLine Ori 72 : AIR 1978 Ori 167] .
17. Accrual of cause of action is a sine qua non for a suit to be
filed. Cause of action is a bundle of facts which is required to be
proved to grant relief to the plaintiff. Cause of action not only refers
to the infringement but also the material facts on which right is
founded. Section 20 CPC recognises the territorial jurisdiction of the
courts inter alia where the cause of action wholly or in part arises. It
has to be decided in each case whether cause of action wholly or in
part arises at a particular place, as held by this Court in Rajasthan
High Court Advocates' Assn. v. Union of India [(2001) 2 SCC 294 :
AIR 2001 SC 416] . Thus, a plaintiff can also file a suit where the
cause of action wholly or in part arises.
18. On a due and anxious consideration of the provisions
contained in Section 20 CPC, Section 62 of the Copyright Act and
Section 134 of the Trade Marks Act, and the object with which the
latter provisions have been enacted, it is clear that if a cause of
action has arisen wholly or in part, where the plaintiff is residing or
having its principal office/carries on business or personally works for
gain, the suit can be filed at such place(s). The plaintiff(s) can also
institute a suit at a place where he is residing, carrying on business
or personally works for gain dehors the fact that the cause of action
has not arisen at a place where he/they are residing or any one of
them is residing, carries on business or personally works for gain.
However, this right to institute suit at such a place has to be read
subject to certain restrictions, such as in case the plaintiff is residing
or carrying on business at a particular place/having its head office
and at such place cause of action has also arisen wholly or in part,
the plaintiff cannot ignore such a place under the guise that he is
carrying on business at other far-flung places also. The very
intendment of the insertion of provision in the Copyright Act and the
Trade Marks Act is the convenience of the plaintiff. The rule of
convenience of the parties has been given a statutory expression in
Section 20 CPC as well. The interpretation of provisions has to be
such which prevents the mischief of causing inconvenience to the
parties.
[emphasis supplied]
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27. Following the law laid down by the Hon‟ble Supreme Court in
Sanjay Dalia (supra) this court in the decision reported as 2016 (65) PTC
469 (Del.) (DB) Ultra Home Construction Pvt. Ltd. v. Purushottam Kumar
Chaubey & Ors. , observed:

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residing or carrying on business, etc. as the case may
be. Section 20 of the Code of Civil Procedure enables a
plaintiff to file a suit where the defendant resides or where
cause of action arose. Section 20(a) and Section 20(b) usually
provides the venue where the defendant or any of them resides,
carries on business or personally works for gain. Section 20(c)
of the Code of Civil Procedure enables a plaintiff to institute a
suit where the cause of action wholly or in part, arises. The
Explanation to Section 20 CPC has been added to the effect
that corporation shall be deemed to carry on business at its
sole or principal office in India or in respect of any cause of
action arising at any place where it has subordinate office at
such place. Thus, “corporation” can be sued at a place having
its sole or principal office and where cause of action wholly or
in part, arises at a place where it has also a subordinate office
at such place.
15. The learned author Mulla in Code of Civil Procedure,
th
18 Edn., has observed that under clauses (a) to (c) of Section
20, the plaintiff has a choice of forum to institute a suit. The
intendment of the Explanation to Section 20 of the Code of
Civil Procedure is that once the corporation has a subordinate
office in the place where the cause of action arises wholly or in
part, it cannot be heard to say that it cannot be sued there
because it did not carry on business at that place. The linking
of the place with the cause of action in the Explanation where
subordinate office of the corporation is situated is reflective of
the intention of the legislature and such a place has to be the
place of the filing of the suit and not the principal place of
business. Ordinarily the suit has to be filed at the place where
there is principal place of business of the corporation.”
xxxx xxxx xxxx xxxx xxxx
“18. On a due and anxious consideration of the provisions
contained in Section 20 CPC, Section 62 of the Copyright Act
and Section 134 of the Trade Marks Act, and the object with
which the latter provisions have been enacted, it is clear that if
a cause of action has arisen wholly or in part, where the
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plaintiff is residing or having its principal office/carries on
business or personally works for gain, the suit can be filed at
such place(s). The plaintiff(s) can also institute a suit at a
place where he is residing, carrying on business or personally
works for gain dehors the fact that the cause of action has not
arisen at a place where he/they are residing or any one of them
is residing, carries on business or personally works for gain.
However, this right to institute suit at such a place has to be
read subject to certain restrictions, such as in case the plaintiff
is residing or carrying on business at a particular place/having
its head office and at such place cause of action has also
arisen wholly or in part, the plaintiff cannot ignore such a
place under the guise that he is carrying on business at other
far-flung places also. The very intendment of the insertion of
provision in the Copyright Act and the Trade Marks Act is the
convenience of the plaintiff. The rule of convenience of the
parties has been given a statutory expression in Section 20
CPC as well. The interpretation of provisions has to be such
which prevents the mischief of causing inconvenience to the
parties.
19. The intendment of the aforesaid provisions inserted in the
Copyright Act and the Trade Marks Act is to provide a forum
to the plaintiff where he is residing, carrying on business or
personally works for gain. The object is to ensure that the
plaintiff is not deterred from instituting infringement
proceedings “because the court in which proceedings are to be
instituted is at a considerable distance from the place of their
ordinary residence”. The impediment created to the plaintiff by
Section 20 CPC of going to a place where it was not having
ordinary residence or principal place of business was sought
to be removed by virtue of the aforesaid provisions of the
Copyright Act and the Trade Marks Act. Where the
corporation is having ordinary residence/principal place of
business and cause of action has also arisen at that place, it
has to institute a suit at the said place and not at other places.
The provisions of Section 62 of the Copyright Act and Section
134 of the Trade Marks Act never intended to operate in the
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field where the plaintiff is having its principal place of
business at a particular place and the cause of action has also
arisen at that place so as to enable it to file a suit at a distant
place where its subordinate office is situated though at such
place no cause of action has arisen. Such interpretation would
cause great harm and would be juxtaposed to the very
legislative intendment of the provisions so enacted.
20. In our opinion, in a case where the cause of action has
arisen at a place where the plaintiff is residing or where there
are more than one such persons, any of them actually or
voluntarily resides or carries on business or personally works
for gain would oust the jurisdiction of other place where the
cause of action has not arisen though at such a place, by virtue
of having subordinate office, the plaintiff instituting a suit or
other proceedings might be carrying on business or personally
works for gain.
21. At the same time, the provisions of Section 62 of the
Copyright Act and Section 134 of the Trade Marks Act have
removed the embargo of suing at place of accrual of cause of
action wholly or in part, with regard to a place where the
plaintiff or any of them ordinarily resides, carries on business
or personally works for gain. We agree to the aforesaid extent
that the impediment imposed under Section 20 CPC to a
plaintiff to institute a suit in a court where the defendant
resides or carries on business or where the cause of action
wholly or in part arises, has been removed. But the right is
subject to the rider in case the plaintiff resides or has its
principal place of business/carries on business or personally
works for gain at a place where cause of action has also
arisen, suit should be filed at that place not at other places
where the plaintiff is having branch offices, etc.
22. There is no doubt about it that the words used in Section 62
of the Copyright Act and Section 134 of the Trade Marks Act,
“notwithstanding anything contained in CPC or any other law
for the time being in force”, emphasise that the requirement of
Section 20 CPC would not have to be complied with by the
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plaintiff if he resides or carries on business in the local limits
of the court where he has filed the suit but, in our view, at the
same time, as the provision providing for an additional forum,
cannot be interpreted in the manner that it has authorised the
plaintiff to institute a suit at a different place other than the
place where he is ordinarily residing or having principal office
and incidentally where the cause of action wholly or in part
has also arisen. The impugned judgments, in our considered
view, do not take away the additional forum and fundamental
basis of conferring the right and advantage to the authors of
the Copyright Act and the Trade Marks Act provided under the
aforesaid provisions.”

28. Thus, in view of the law laid down by the Hon‟ble Supreme Court in
Sanjay Dalia followed by this Court in Ultra Home (supra ) Section 134 of
the Trade Marks Act provides an additional forum for filing the suit where
the plaintiff resides or carries out works for gain and in the case of a
corporation it is the principal office of the corporation or its registered
office which can be held to be the place where the corporation works. In
case the plaintiff chooses to institute the suit at a place where it does not
have the principal office but subsidiary office, then as held in illustration (c)
in Ultra Home , cause of action or part of cause of action should arise at the
said place. Undoubtedly, the plaintiff, which is a company incorporated
under the Company‟s Act, has its principal place of office i.e. the registered
office at Mumbai and not at Delhi though stated in the plaint but sought to
be amended and clarified by IA No. 8834/2019. Conscious of the fact that
the plaintiff‟s principal place of office/ work is not at Delhi but at Mumbai,
the claim of the plaintiff is that in view of Section 134 of the TM Act and
the law laid down in Sanjay Dalia and Ultra Home, because cause of action
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arises in Delhi and the plaintiff has its subsidiary offices in Delhi, this Court
has jurisdiction to entertain the suit. At this stage it will be relevant to note
the paragraph dealing with the cause of action in the plaint for the reason in
an application under Order VII Rule 10/11 CPC averments in the plaint
have to be seen by way of a demurer. Para 64 to 67 of the plaint read as
under:
“ 64. That the cause of action first arose on 10.10.2018, when
the Defendant Company filed the evidence in support of
opposition under Rule 45 and for the first time claimed its right
over the. mark E!NEWS NOW. The cause of action further
arose when Cease and Desist notice dated 30.05.2018; was sent
by the Defendant, wherein the Plaintiff Company learnt that it's
marks E NOW are being opposed by the Defendant on the
pretext of its mark E!.

65. That the cause of action further arose on 12.07.2018,
when the Reply was sent by the Plaintiff Company denying its
deceptive similarity between the two marks and asserting that
the mark of the Plaintiff is dissimilar as it has suffix NOW
attached to it which is a series mark related to the Times
Network.

66. That the cause of action again arose on 10.01.2019,
when the Defendant Company filed the evidence in reply under
Rule 47 of the Trademarks Rules, 2017 and for the first time
claimed its right over the mark E! NOW and E! NEWS NOW
respectively. The cause of action again arose on 04.02.2019
when the Defendant Company filed the evidence in support of
opposition under Rule 45 in Trade mark Application No.
3749183 and for the first time claimed its right over the mark E!
NOW and E! NEWS NOW. The cause of action again arose on
24.04.2019 when the Defendant Company for the first time
asserted its right and stated that it is using the marks and logos
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"E! NOW" and "E! NEWS NOW", which is deceptively similar
to the marks "E NOW" and "NOW" owned by the Plaintiffs

67. That the cause of action further arose when Plaintiff,
thereafter issued a Rejoinder to the Notice dated 24.04.2019
calling upon the Defendant Company to refrain from using our
client's word/ mark 'NOW' as a prefix or a suffix to any word,
alphabet, symbol or in any Other manner and further, refrain
from using our client's mark 'NOW as part of any logo
including the word/logo 'E-NEWS NOW or 'ENOW alleged in
your notice under response as your client's word/logo.”

29. On the issue whether the place of service of a cease and desist letter
can confer jurisdiction on the court, in the decision reported as 2004 (28)
PTC 251 (SC) Exphar SA & Anr. v. Eupharma Laboratories & Anr ., it was
held by Hon‟ble Supreme Court that:
“ 8. Besides when an objection to jurisdiction is raised by way of
demurrer and not at the trial, the objection must proceed on the basis
that the facts as pleaded by the initiator of the impugned proceedings
are true. The submission in order to succeed must show that granted
those facts the Court does not have jurisdiction as a matter of law. In
rejecting a plaint on the ground of jurisdiction, the Division Bench
should have taken the allegations contained in the plaint to be
correct. However, the Division Bench examined the written statement
filed by the respondents in which it was claimed that the goods were
not at all sold within the territorial jurisdiction of the Delhi High
Court and also that the respondent No. 2 did not carry on business
within the jurisdiction of the Delhi High Court. Having recorded the
appellants' objections to these factual statements by the respondents,
surprisingly the Division Bench said:
“Admittedly the goods are being traded outside India and not
being traded in India and as such there is no question of
infringement of trademark within the territorial limits of any
Court in India what to of Delhi”.
X X X
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14. Furthermore, the appellants' plaint said that the `cease and
desist' notice was sent to the appellant No. 2 at its office in New
Delhi and in that notice it was alleged that the appellant No. 2 had
infringed the copyright of the respondent No. 2 to the trademark
`Maloxine'. Now a cease and desist notice means that the recipient is
alleged to have infringed the rights of the sender of the notice to the
copyright and as a result of such alleged infringement the recipient is
liable to institution of civil and/or criminal proceedings. It is a threat.
The plaint says that this threat was received within the jurisdiction of
the High Court a fact which was sufficient to invoke the jurisdiction
of that Court.
15. The respondents' reliance on the decision of this Court in Oil
and Natural Gas Commission v. Utpal Kumar Basu and Ors., 1994
(1) Supp SCR 252 and Union of India and Others v. Advani Exports
Ltd. and Another, 2002 (1) SCC 567 is inapposite. Those decisions
held that the service of a mere notice may not be sufficient to found
jurisdiction unless such notice formed an integral part of the cause of
action. But a `cease and desist' notice in a copyright action cannot,
particularly in view of Section 60 of the Act, be termed to be a `mere'
notice. Such a threat may give rise to the right to institute a suit to
counter such threat and to ask for relief on the ground that the
alleged infringement to which the threat related was not in fact an
infringement of any legal right of the person making such threat. ”

30. For a cease and desist notice there should be a threat of an action
which gives rise to the cause of action. In the present case, the cease and
th
desist notice dated 30 May, 2018 has been issued by the defendant‟s
counsel to the plaintiff at the plaintiff‟s office at 7, Bahadur Shah Zafar
Marg, New Delhi with regard to its „E‟ family of mark. The defendant in its
th
cease and desist notice dated 30 May, 2018 though did not raise any claim
whatsoever in respect of „NOW‟ mark, it stated that the defendant adopted
the mark „E!‟ and other „E!‟ formative marks several years ago and is a 24
hours network, its programming dedicated to the world of entertainment.
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The defendant also stated that it is the registered proprietor of „E‟ and „E‟
th nd
formative marks in Classes 9, 38 and 41 since 30 December, 1993, 2
th st
December, 2003, 25 March, 2010 and 31 May, 2012. The defendant
th
specifically required the plaintiff in the notice dated 30 May, 2018 to cease
and desist from using the mark
. The defendant claimed that since it is
proprietor of „E!‟ and its formative mark, it asked the plaintiff to withdraw
application No. 3679903 and 3679905 and cease and desist from using the
mark, being a derivative of „E‟ family of mark. In response to the cease and
th
desist notice dated 30 May, 2018 the plaintiff replied vide its letter dated
th
12 July, 2018 where the plaintiff claimed that it was the proprietor of the
well-known trade mark „NOW‟ and was using the same as a prominent part
of its various renowned and reputed News Entertainment channels, namely,
„TIMES NOW‟, „ET NOW‟, „MOVIES NOW‟, „MIRROR NOW‟ and
„ROMEDY NOW‟. The plaintiff further claims cause of action based on
th
the rejoinder-cum-notice dated 24 April, 2019 to the plaintiff‟s reply dated
th
12 July, 2018 being addressed at Delhi wherein for the first time the
defendant asked the plaintiff company to refrain from using the mark
„NOW‟ as a prefix or a suffix, or as part of any logo including the
word/logo „E NEWS NOW‟ or „E NOW‟.
31. Claim of the defendant is that the cause of action is based on the
rejoinder which cannot give rise to the jurisdiction of the Court for the
reason the rejoinder of the defendant was addressed to the counsel for the
plaintiff and not to the plaintiff at its Delhi office. A rejoinder to the
counsel at the address of the counsel‟s cannot vest territorial jurisdiction in
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the Court. According to the defendant merely because the cease and desist
notice was received by the plaintiff at its Delhi office, will not give rise to
cause of action for the reason in the said cease and desist notice the
defendant nowhere asked the plaintiff to desist from using the mark/ logo
„NOW‟ and only asked the plaintiff to refrain from using „E‟ or „E!‟ and its
formative marks.
th
32. The claim of the defendant is that in the notice dated 30 May, 2018
no notice of cease and desist was given qua mark „NOW‟ and it was only in
the rejoinder that a cease and desist notice qua the mark „NOW‟ was given
which was between the counsel to a counsel and hence no jurisdiction in the
Court at Delhi gets vested. This contention of learned counsel is contrary to
Para 64 of the plaint reproduced herein wherein cause of action is pleaded
th
on the basis of cease and desist notice dated 30 May, 2018 and the relevant
paragraph of the said notice where the defendant has asked the plaintiff to
cease and desist from using the mark E NOW is reproduced hereinafter.
“In the above circumstances, our client has now also instructed
us to write to you, which we hereby do and put you on notice of
their rights, to call upon you and to prevail upon you to
forthwith;

i. Disclose the nature and extent of use, if any of the marks
or any other mark confusingly and/or deceptively
similar to our client's E! Family of Marks in respect of goods
and/or services of any nature whatsoever and to immediately
cease and desist from using the said mark(s) either as a trade
mark or in any other manner whatsoever or any other mark
which is likely to deceive or cause confusion or dilute the
distinctiveness of our client's mark;
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ii. Disclose any use of other marks confusingly and/or
deceptively similar to our client's E! Family of Marks, if any,
and to immediately cease and desist from using the said mark
either as a trade mark or in any other manner whatsoever or
any other mark which is likely to deceive or cause confusion or
dilute the distinctiveness of our client's E! Family of Marks;

iii. Immediately withdraw your application nos. 3679903
and 3679905 under intimation to us;

iv. Disclose the existence of all application(s) in India and
anywhere in the world for
and/or any other trade
mark(s) that is identical to and/or deceptively/confusingly
similar to our client's E! family of marks and if any such
application(s) exist, to withdraw the same under intimation to
our client; and

v. Give an undertaking in a form to be approved by us that
you shall not in the future, use and/or any other mark which is
likely to deceive or cause confusion or dilute the distinctiveness
of our client's E! Family of Marks.

We will look forward to hearing from you within two weeks of
receipt of this letter by you that you are complying with the
requisitions aforementioned. If you fail to respond, our client
will be perfectly justified in presuming that despite the fact that
you do not dispute our claim in and to our client's E! Family of
Marks; you do not intend to give up your wrongful claim to
proprietorship of the impugned marks
.

Under such circumstances our client shall be free to initiate
appropriate legal proceedings against you for the protection of
their rights, including but not limited to taking the oppositions
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against your application no. 3679903 and 3679905 to their
logical conclusion.

We look forward to your response. In the meanwhile, our client
reserves all rights.”

th
33. As noted from the averments in the cease and desist notice dated 30
May, 2018 the defendant besides seeking disclosure from the plaintiff about
the nature and extent of the use of E NOW marks or any other mark
confusingly or deceptively similar to the defendant‟s
and E!
family of marks in respect of the goods and services, has also sought
immediate cease and desist from using the said mark/ marks either as a
trade mark or in any other manner with the notice served to the plaintiff at
its subsidiary office at Delhi. Thus in terms of the decision of the Hon‟ble
Supreme Court in Exphar SA & Anr. (supra ) and of this Court in Ultra
Home (supra) this Court will have jurisdiction to try the offence based on
the averments in the plaint. Claim of the defendant that in the notice dated
th
30 May, 2018 it did not preclude the plaintiff from using „NOW‟ mark
deserves to be rejected in view of the defendant asking the plaintiff from
desisting to use „E NOW‟ and the threat of action evident from the words
that the defendant was free to initiate the proceedings.
34. The defendant also pleads that there was no cause of action on the
basis of quia timet as the threat has to be genuine, reasonable and valid and
should pose an imminent danger. It was stated that the two documents filed
by the plaintiff were the extracts of websites http://www.enowbrasil.com
and https://www.enowlatino.com., which two websites appear to be updated
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th
on 12 April, 2019 and the link was travelling to E-online. The two
websites being in Spanish and Latin and not even in English, there was no
threatened action.
35. Plaintiff also claims cause of action on the basis of proposed user of
the mark „NOW‟ by the defendant as is also evident from ex-parte interim
th
order of this Court dated 14 May, 2019. The concept of quia timet action
was elaborated by the Hon‟ble Supreme Court in its decision reported as
AIR 2000 SC 1410 Kuldip Singh v. Subhash Chander Jain & Ors . wherein
it was held:

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Radico Khaitan Ltd. v. Nakshatra Distilleries & Breweries Ltd & Ors.
elaborated on the maintainability of a quia timet action and observed:
22. … It is also the settled principle in law that the Court even
while considering the application under Order VII Rule11 of the CPC
is to scrutinise the plaint and the documents filed therewith to see
whether the pleas are substantial and material or not or merely a
play of words so as to initiate the legal process. The words “dynamic
effect” and credible and imminent threat” sound impressive but are
without any particulars and hollow. Such words cannot be permitted
to create territorial jurisdiction of the Court. If such words were to be
permitted to create territorial jurisdiction, the same would result in
the Courts allowing their process to be used as a tool of harassment
by permitting a plaintiff to drag a defendant to any Court where the
plaintiff may feel that it will have an advantage over the defendant.
Moreover, whether a Court has a territorial jurisdiction or not is a
question of law and a party to the lis cannot be permitted to “create”
territorial jurisdiction. When a threatened act cannot be done without
following a procedure and that procedure has not even been initiated,
the threat cannot be said to be real and imminent so as to vest the
Court with the jurisdiction even in a quia timet action.
th
37. As noted above, from the notice dated 30 May, 2018 the defendant
filing evidence in support of opposition under Rule 45 and the rejoinder
filed it is evident that there was an imminent threat of action and hence a
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quia timet action which is preventive in nature was maintainable based on
the pleadings in the suit.
38. Consequently, it is held that this Court has the territorial jurisdiction
to entertain the suit and finds no merit in the application under Order VII
Rule 10 & 11 and the same is liable to be dismissed.


I.A. 7077/2019 (under Order XXXIX Rule 1 and 2 CPC – by Plaintiff)
I.A. 8833/2019 (under Order XXXIX Rule 4 CPC – by defendant)

39. As noted above, the claim of the plaintiff is that it is the registered
proprietor of the mark „NOW‟ simplicitor and with prefix or suffix and that
mark „NOW‟ has attained a distinction with the plaintiff‟s product
specifically in Class-38 and 41 of the Trademark Registrations which
pertain to television broadcasting services and television based
entertainment service respectively, for which two limited classes, the suit
has been filed. It is thus claimed that the defendant‟s marks “E!Now” and
“E! News Now” are similar to the plaintiff‟s mark „E Now‟ which is used in
the relation to the television programs thus, constituting infringement and
passing off.
40. It may be noted that the plaintiff is not the proprietor of the stand-
alone trademark “NOW” nor prior user of the said mark in Class-38.
th
Further the stand-alone registration of the plaintiff in Class-41 is of 18
September, 2014 on the proposed to be used basis and has not been used till
date. Thus, the registration of “NOW” simplicitor in Class-41 cannot be
used to seek an injunction against the defendant‟s mark “E! Now” and “E!
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th
New Now” and the defendant‟s first use of “E News Now” is since 30
September, 2007.
41. The test of infringement of a trademark was laid by the Hon‟ble
Supreme Court in the case cited as AIR 1965 SC 980 Kaviraj Pandit Durga
Dutt Sharma v. Navaratna Pharmaceutical , wherein it was held:
28. The other ground of objection that the findings are
inconsistent really proceeds on an error in appreciating the basic
differences between the causes of action and right to relief in suits for
passing off and for infringement of a registered trade mark and in
equating the essentials of a passing off action with those in respect of
an action complaining of an infringement of a registered trade mark.
We have already pointed out that the suit by the respondent
complained both of an invasion of a statutory right under Section 21
in respect of a registered trade mark and also of a passing off by the
use of the same mark. The finding in favour of the appellant to which
the learned counsel drew our attention was based upon dissimilarity
of the packing in which the goods of the two parties were vended, the
difference in the physical appearance of the two packets by reason of
the variation in the colour and other features and their general get-
up together with the circumstance that the name and address of the
manufactory of the appellant was prominently displayed on his
packets and these features were all set out for negativing the
respondent's claim that the appellant had passed off his goods as
those of the respondent. These matters which are of the essence of the
cause of action for relief on the ground of passing off play but a
limited role in an action for infringement of a registered trade mark
by the registered proprietor who has a statutory right to that mark
and who has a statutory remedy for the event of the use by another of
that mark or a colourable imitation thereof. While an action for
passing off is a Common Law remedy being in substance an action
for deceit, that is, a passing off by a person of his own goods as those
of another, that is not the gist of an action for infringement. The
action for infringement is a statutory remedy conferred on the
registered proprietor of a registered trade mark for the vindication of
the exclusive right to the use of the trade mark in relation to those
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goods” (Vide Section 21 of the Act). The use by the defendant of the
trade mark of the plaintiff is not essential in an action for passing off,
but is the sine qua non in the case of an action for infringement. No
doubt, where the evidence in respect of passing off consists merely of
the colourable use of a registered trade mark, the essential features
of both the actions might coincide in the sense that what would be a
colourable imitation of a trade mark in a passing off action would
also be such in an action for infringement of the same trade mark.
But there the correspondence between the two ceases. In an action
for infringement, the plaintiff must, no doubt, make out that the use of
the defendant's mark is likely to deceive, but where the similarity
between the plaintiff's and the defendant's mark is so close either
visually, phonetically or otherwise and the court reaches the
conclusion that there is an imitation, no further evidence is required
to establish that the plaintiff's rights are violated. Expressed in
another way, if the essential features of the trade mark of the plaintiff
have been adopted by the defendant, the fact that the get-up, packing
and other writing or marks on the goods or on the packets in which
he offers his goods for sale show marked differences, or indicate
clearly a trade origin different from that of the registered proprietor
of the mark would be immaterial; whereas in the case of passing off,
the defendant may escape liability if he can show that the added
matter is sufficient to distinguish his goods from those of the plaintiff.
30. The mark of the respondent which he claims has been
infringed by the appellant is the mark „Navaratna Pharmaceutical
Laboratories‟, and the mark of the appellant which the respondent
claimed was a colourable imitation of that mark is „Navaratna
Pharmacy‟. Mr Agarwala here again stressed the fact that the
„Navaratna‟ which constituted an essential part or feature of the
Registered Trade Mark was a descriptive word in common use and
that if the use of this word in the appellant's mark were disregarded
there would not be enough material left for holding that the appellant
had used a trade mark which was deceptively similar to that of the
respondent. But this proceeds, in our opinion, on ignoring that the
appellant is not, as we have explained earlier, entitled to insist on a
disclaimer in regard to that word by the respondent. In these
circumstances, the trade mark to be compared with that used by the
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42. In the decision reported as (2010) 2 SCC 142 Skyline Education
Institute (Pvt.) Ltd. v. SL Vaswani & Ors ., it was held:
18. In our opinion, the findings recorded by the learned Single
Judge and Division Bench on the crucial factors like prima facie
case, balance of convenience and equity are based on a correct and
balanced consideration of various facets of the case and it is not
possible to find any fault with the conclusions recorded by them that
it is not a fit case for restraining the respondents from using the word
'Skyline' in the name of the institute established by them. It has not
been disputed on behalf of the appellant that the word 'Skyline' is
being used as trade name by various companies/
organizations/business concerns and also for describing different
types of institute/institutions. The voluminous record produced by the
respondents before this Court shows that in India as many as 117
companies including computer and software companies and
institutions are operating by using word 'Skyline' as part of their
name/nomenclature. In United States of America, at least 10
educational/training institutions are operating with different names
using 'Skyline' as the first word. In United Kingdom also two such
institutions are operating. In view of this, it is not possible to agree
with the learned Counsel for the appellant that the Skyline is not a
generic word but is a specific word and his client has right to use that
word to the exclusion of others.

43. Similarly, in AIR 1963 SC 449 Amritdhara Pharmacy v. Satya Deo
Gupta it was held:
8. We agree that the use of the word “dhara” which literally
means “current or stream” is not by itself decisive of the matter.
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10. A large number of decisions relating to the use of
composite words, such as Night Cap and Red Cap, Limit and Summit,
Rito and Lito, Motrate and Filtrate etc. were cited in the High Court.
Some more have been cited before us. Such decisions, examples of
deceptive resemblance arising out of contrasted words, have been
summarised at p. 429-34 in Kerly on Trade Marks, 8 No useful
purpose will be served by referring to them all. As we have said
earlier, each case must be decided on its own facts. What degree of
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resemblance is necessary to deceive or cause confusion must in the
nature of things be incapable of definition a priori.

44. Further, in the decision reported as AIR 1960 SC 142 Corn Products
Refining Co. v. Shangrila Food Products Ltd. , it was observed:
15. Now it is a well recognised principle, that has to be taken
into account in considering the possibility of confusion arising
between any two trademarks, that, whether those two marks contain a
common element which is also contained in a number of other marks
in use in the same market such a common occurrence in the market
tends to cause purchasers to pay more attention to the other features
of the respective marks and to distinguish between them by those
features. This principle clearly requires that the marks comprising
the common element shall be in fairly extensive use and, as I have
mentioned, in use in the market in which the marks under
consideration are being or will be used.
45. Again, in the decision cited as MANU/DE/0832/2020 Peps Industries
Pvt. Ltd. v. Kurlon Ltd. , it was held:
21. From the facts as noted above, it is thus evident that the
plaintiff has a registered trade mark “NO TURN” in its favour, the
mark “NO TURN” is being used by the plaintiff as a trade mark. The
plaintiff has been in continuous use of this trade mark “NO TURN”
since 15th January, 2008.Defendant is the prior user of the mark
since the year 2007 however since the use of the mark by the
defendant is intermittent and not voluminous so as to establish the
defence under Section 34 of the Trade Marks Act. However, the
plaintiff would still not be entitled to the relief of injunction for the
reason the mark “NO TURN” is a descriptive mark. The plaintiff has
placed no material on record to show that on the date of application
or even on the date of registration plaintiff‟s trademark “NO TURN”
had acquired the distinctiveness to achieve the status of a well-known
mark. Hence, no interim injunction is granted in favour of the
plaintiff. Consequently, IA 4871/2019 is dismissed and IA 6715/2019
is disposed of.

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46. Whether a mark is a common to trade or not is a question of fact.
Similarly, a mark may be a trademark in some jurisdiction and publici juris
in others, but a mark which may be common to trade at one time may
become distinctive over a period of time, or vice versa. In the decision
reported as MANU/DE/0311/1997 SBL Ltd. v. Himalaya Drug Co. it was
held:
21. Whether a matter is or is not common to the trade is a
question of fact. A feature which is common to one trade may not be
so to a different trade. Similarly a mark may continue to be trade
mark in some countries and public Jurisdiction in others. A mark
which was common to the trade at one time may in course of time
become distinctive and vice versa. A word or words used by a number
of firms as part of their designation may be considered as words in
common use (See : Law of Trade Mark and Passing Off, P.
Narayanan, 4th Edn., para 14.2).
X X X
26. Reverting back to the facts of the case, from the
documentary evidence filed we are satisfied that here are about 100
drugs in the market using the abbreviation 'Liv' made out of the word
Liver-and organ of the human body, as a constituent of names of
medicinal/pharmaceutical preparations with some prefix or suffix-
mostly suffixes meant for treatment of ailments or diseases associated
with liver. Liv has thus become a generic term and public juris. It is
descriptive in nature and common in usage. Nobody can claim' an
exclusive right to the use of 'Liv' as a constituent of any trade mark.
The class of customers dealing with medicines would distinguish the
name of the medicines by ignoring 'Liv' and by assigning weight to
the prefix or suffix so as to associate the name with the manufacturer.
The possibility of deception or confusion is reduced practically to nil
in view of the fact that the medicine will be sold on medical
prescription and by licensed dealers well versed in the field and
having knowledge of medicines. The two rival marks Liv. 52 and L
JV-T contain a, common feature Liv which is not only descriptive but
also public juris; a customer will tend to ignore the common feature
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and will pay more attention to uncommon features i.e., 52 and T. The
two do not have such phonetic similarity as to make it objectionable.

47. Similarly, in the decision reported as (2010) 2 SCC 142 Skyline
Education Institute (Pvt.) Ltd. v. SL Vaswani & Ors. held:
18. In our opinion, the findings recorded by the learned Single
Judge and Division Bench on the crucial factors like prima facie
case, balance of convenience and equity are based on a correct and
balanced consideration of various facets of the case and it is not
possible to find any fault with the conclusions recorded by them that
it is not a fit case for restraining the respondents from using the word
'Skyline' in the name of the institute established by them. It has not
been disputed on behalf of the appellant that the word 'Skyline' is
being used as trade name by various companies/
organizations/business concerns and also for describing different
types of institute/institutions. The voluminous record produced by the
respondents before this Court shows that in India as many as 117
companies including computer and software companies and
institutions are operating by using word 'Skyline' as part of their
name/nomenclature. In United States of America, at least 10
educational/training institutions are operating with different names
using 'Skyline' as the first word. In United Kingdom also two such
institutions are operating. In view of this, it is not possible to agree
with the learned Counsel for the appellant that the Skyline is not a
generic word but is a specific word and his client has right to use that
word to the exclusion of others.
48. Likewise, in the decision reported as MANU/DE/0869/2007
Astrazenca UK Ltd. v. Orchid Chemicals and Pharmaceuticals Ltd. this
Court observed:
20. We are informed that there are a number of such other
similar names with the prefix 'Mero' which are in the market. They
were also taken notice of by the learned Single Judge while dealing
with the injunction application. In the decisions of the Supreme Court
and this Court also, it has been clearly held that nobody can claim
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exclusive right to use any word, abbreviation, or acronym which has
become publici juris. In the trade of drugs, it is common practice to
name a drug by the name of the organ or ailment which it treats or
the main ingredient of the drug. Such an organ ailment or ingredient
being publici Jurisdiction or generic cannot be owned by anyone
exclusively for use as a trade mark. In the Division Bench decision of
this Court in SBL Limited (supra) it was also held that possibility of
deception or confusion is reduced practically to nil in view of the fact
that the medicine will be sold on medical prescription and by licensed
dealers well versed in the field and having knowledge of medicines. It
was further held that the two rival marks, 'Liv.52' and 'LIV-T',
contain a common feature, 'Liv' which is not only descriptive, but
also publici Jurisdiction and that a customer will tend to ignore the
common feature and will pay more attention to uncommon features
i.e. '52' and 'T' and that the two do not have such phonetic similarity
so as to make it objectionable.
21. In our considered opinion the facts of the said case are
almost similar and squarely applicable to the facts of the present
case. 'Meropenem' is the molecule which is used for treatment of
bacterial infections. In that view of the matter, the abbreviation
'Mero' became a generic term, is publici Jurisdiction and it is
distinctive in nature. Consequently, the appellants/plaintiffs cannot
claim exclusive right to the use of 'Mero' as constituent of any
trademark. The possibility of deception or confusion is also reduced
practically to nil in view of the fact that the medicine is sold only on
prescription by dealers. The common feature in both the competing
marks i.e. 'Mero' is only descriptive and publici Jurisdiction and,
Therefore, the customers would tend to ignore the common feature
and would pay more attention to the uncommon feature. Even if they
are expressed as a whole, the two did not have any phonetic
similarity to make it objectionable. There are at least four other
registered users of the prefix 'Mero' in India whereas the names of 35
companies using 'Mero' trademarks, which have been registered or
applied for registration, have been furnished in the pleadings. The
respondent/defendant advertised its trademark 'Meromer' after
submitting its application for registration and at that stage, there was
no opposition even from the appellants/plaintiffs. The trademark of
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the respondent/defendant was registered there being no opposition
from any quarter, including the appellants/plaintiffs.
22. Consequently, the two names, namely, 'Meromer' and
'Meronem' are found to be prima facie dissimilar to each other. They
are Schedule-H drugs available only on doctor's prescription. The
factum that the same are available only on doctor's prescription and
not as an over the counter medicine is also relevant and has been
rightly taken note of by the learned Single Judge. In our considered
opinion, where the marks are distinct and the features are found to be
dis-similar, they are not likely to create any confusion. It is also
admitted by the parties that there is a difference in the price of the
two products. The very fact that the two pharmaceutical products,
one of the appellants/plaintiffs and the other of the respondent/
defendant, are being sold at different prices itself ensures that there
is no possibility of any deception/confusion, particularly in view of
the fact that customer who comes with the intention of purchasing the
product of the appellants/plaintiffs would never settle for the product
of the respondent/defendant which is priced much lower. It is
apparent that the trademarks on the two products, one of the
appellants/plaintiffs and the other of the respondent/defendant, are
totally dissimilar and different.

49. From the facts as noted it is evident that though the plaintiff has
number of registrations with suffix and prefix “NOW”, it is a common word
and is used by number of other entities. Further the plaintiff‟s own stand is
that the mark „NOW‟ is common to trade as stated by the plaintiff in
response to the examination report for ROMEDY NOW under No.2589055
in Class-9, and the counter statement in relation to opposition filed against
the mark „NOW‟ under No.1716885 in Class-9. The plaintiff has also given
a disclaimer on „NOW‟ in registration for LOVCOM in Class-9, LOVCOM
NOW in Class-16 and ROMEDY NOW in Class-38. Thus, the plaintiff
cannot be permitted to claim that the word „NOW‟ used by it as a prefix or
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suffix has acquired a distinction. Therefore the defendant who is a prior
user of mark „E‟ or E!‟ with „NOW‟ and „E NEWS NOW‟ cannot be
injuncted.
50. There is yet another ground to deny the equitable relief of injunction
to the defendant for suppression of material facts. Plaintiff in his plaint has
claimed that it has principal office in Delhi which fact to the knowledge of
the plaintiff is incorrect and is sought to be amended by way of an
application under Order VI Rule 17 CPC. Further the plaintiff on the one
hand claims that the defendant has no transborder reputation affecting the
plaintiff‟s reputation, thus, denying the existence of the defendant as a prior
user, however, on the other hand claims defendant‟s transborder reputation
to claim injunction from the Court.
th
51. Further, the order dated 14 May, 2019 granting ad-interim
injunction also notes that the same was granted on the representation that
the trademark „NOW‟ has been registered in various categories in favour of
the plaintiffs since 2006. As noted above in Class 38 and 41 which are the
relevant classes for the present suit, the plaintiff has registration only in
Class 41 which is also on the proposed to be use basis and till now the
plaintiff has not used the trademark „NOW‟ simplicitor in Class 41.
th
52. Consequently, the ad-interim injunction dated 14 May, 2019 is
vacated. I.A. 7077/2019 (under Order XXXIX Rule 1 & 2 CPC – by
Plaintiff) is dismissed. I.A. 8832/2019 (under Order VII Rule 10 & 11 CPC
– by defendant) is dismissed. I.A. 8833/2019 (under Order XXXIX Rule 4
CPC – by defendant) is disposed of.

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(MUKTA GUPTA)
JUDGE
MAY 31, 2023
‘vg/ga’
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