LIVING MEDIA INDIA LTD. AND ANR. vs. ALPHA DEALCOM PVT. LTD. AND ORS.

* IN THE HIGH COURT OF DELHI AT NEW DELHI

Reserved on: 12.10.2015
Pronounced on: 29.01.2016

+ FAO (OS) 110/2014, C.M. APPL.3742/2014
LIVING MEDIA INDIA LTD. & ANR. .………Appellants
Through: Sh. C.M. Lall with Sh. Sajad Sultan and Ms.
Nancy Roy, Advocates.

Versus

ALPHA DEALCOM PVT. LTD. AND ORS. ……Respondents
Through: Ms. Kanika Sinha with Sh. Ankit Bhatnagar,
Advocates.
CORAM:
HON'BLE MR. JUSTICE S. RAVINDRA BHAT
HON'BLE MS. JUSTICE DEEPA SHARMA

MR. JUSTICE S. RAVINDRA BHAT
%
1. In this appeal, the dissatisfied appellants (hereafter “plaintiffs”)
complain against the denial of temporary injunction in their suit, which
claims trademark infringement and passing off, by the respondents
(hereafter "defendants") and seek injunctive relief.
2. The plaintiffs in their suit allege that they and their affiliates are major
media corporations in India with significant commercial presence in the
print and electronic media. They are engaged in varied business activities,
such as printing and publishing magazines, journals, periodicals,
newspapers, operating news broadcasting channels, infotainment programs,
FM radio channels, organizing conferences, seminars, music shows,
production of music albums etc. The first plaintiff is owner and publisher of
the weekly news magazine "INDIA TODAY" which has a significant
FAO (OS) 110/2014 Page 1



holding in its sphere of activity, since 1975. It is published in various
regional languages in India while its international editions are published in
USA, Canada, UK, Doha etc. The first plaintiff also owns and publishes a
business magazine under the trade mark "Business Today" , a travel
magazine "India Today Travel Plus" , an architecture and design magazine
"Design Today" , and other magazines under the trade mark "Spice Today"
and "Money Today" etc. Each of these is a trademark. The said plaintiff also
publishes a daily newspaper "MAIL TODAY" through its associate in
collaboration with the prestigious Daily Mail of the United Kingdom. It used
to publish and circulate a daily afternoon newspaper under the trade mark
"TODAY". The first plaintiff manufactures and markets music cassettes,
CDs, VCDs and DVDs under the trade mark "MUSIC TODAY" and
conducts music shows, concerts, live shows etc. under the said trade mark.
The suit contends that the first plaintiff conducts an "incredibly famous
yearly conference/ colloquiums/seminar under the mark "INDIA TODAY
CONCLAVE", wherein world leaders and eminent personalities converge
and debate important and pressing issues on varied subjects."
3. The suit avers that the first Plaintiff, under a license through the
second Plaintiff broadcasts popular news channels namely, "AAJ TAK"
(Till Today) in Hindi and "HEADLINES TODAY" in English besides few
other media channels like "AAJ TAK TEZ" and "DILLI AAJ TAK". It is
alleged that the first plaintiff is the registered proprietor of the trade mark
"TODAY" and its variations not only in India but also in various foreign
countries. The plaint lists out growing sales figures arising from sale of
goods and services under the trade mark "TODAY" and its variations: 2005-
06 ( 268.647crores); 2006-07 ( 301.527 crores); 2007-08 ( 346.205
` ` `
FAO (OS) 110/2014 Page 2



crores); 2008-09 ( ` 375.234 crores); 2009-10 ( ` 348.341 crores); 2010-11 ( `
375.791 crores) and 2011-12 ( ` 369.383 crores). Likewise, the sales figures
of the second plaintiff for services under the trademarks "Aaj Tak" and
"Headlines Today " are shown to be: 2004-05- ` 138.94 crores; 2005-06, `
157.81 crores; 2006-07- ` 184.51 crores; 2007-08, ` 226.52 crores; 2008-
09- ` 238.79 crores; and 2009-10- ` 260.16 crores.
4. It is claimed that the plaintiffs are using said mark "TODAY" and its
variants continuously since 1975 and have spent sufficient resources i.e
money, time and creativity to promote and publicize these brands. The
Plaintiffs' brand has earned the status of a "Well Known Trademark" and
commands the highest level of protection irrespective of the class that they
have been applied for or used in. It is also urged that the goodwill accrued to
the said mark extends beyond the actual use of the mark; it is so widely used
that the brand has become a household name. It is claimed that the
trademark "TODAY" has assumed and acquired a secondary meaning owing
to the Plaintiff and their affiliate’s long, continuous and honest use; it is
associated with the Plaintiffs and its affiliates only.
5. The suit claims that in late October 2012, during a routine search of
the official website of the Registrar of Trademarks conducted on behalf of
the Plaintiff(s), it was found that the first Defendant had applied for
registration of the trademark 'Nation Today' in Class 38 allegedly claiming
to be user of the trademark in respect of broadcasting and
telecommunication services since June 23, 2010. The said defendant had
filed 3 applications for registration of the said trademark i.e 2243158,
2286420 and 2322140 in Class 38. The second defendant, was a senior
FAO (OS) 110/2014 Page 3



employee of the second Plaintiff till 21.12.2011 and thereafter he apparently
joined the first defendant as CEO. The applications for trademark
registration of 'Nation Today' were filed after his appointment as CEO. The
plaintiffs allege that he "apparently influenced Defendants in applying and
adopting the impugned trademark 'Nation Today' as the Defendant No.2 is
aware of the tremendous brand value, reputation, popularity and goodwill
associated with 'TODAY' and its variants for Plaintiffs." Thus, adoption by
the defendants of the impugned trademark has been done dishonestly, with
clear knowledge and mala fide intention so as to reap benefits of the
plaintiffs' established reputation and goodwill. The adoption of the
trademark TODAY by the defendants is questioned by the plaintiff as it not
only infringes their rights in and to the said trade mark and its variations but
also amounts to passing off its services as and for services of the Plaintiffs
and/or their affiliates/subsidiaries.
6. The plaintiffs argued in the suit that the trade mark used by the
Defendant is deceptively/confusingly/phonetically/structurally similar to
trademark of the Plaintiffs and is also used for absolutely similar
goods/services and clearly would convey to those in trade and the general
public that there is some connection between the business of the Plaintiffs
and the Defendants, when in reality no such connection exists.
7. The defendant filed a reply to the temporary injunction application,
refuting the plaint allegations. It was also urged that the two marks were
dissimilar and that the plaintiff could not claim exclusivity over the word
TODAY. It was submitted that the plaintiff does not have a news channel
using the mark INDIA TODAY. Other pleas such as the composite nature of
FAO (OS) 110/2014 Page 4



the plaintiff's mark and how the viewers would not be confused or deceived
by mere use of the word TODAY were taken.
8. The learned Single Judge considered the suit averments as well as the
submissions on behalf of the defendant. The learned Single Judge noticed
that the defendants through their written statement had disputed that the
plaintiff possessed rights over the expression TODAY. It was pointed out in
the written statement that the defendants intended to launch a TV news
channel NATION TODAY. Since the Court had, in another proceeding,
restrained the launching of that channel, contentions as to whether the
plaintiffs could obtain an interim injunction against the defendants for the
use of the expression TODAY as part of the name of the proposed Channel
was gone into. The learned Single Judge firstly noticed that the plaintiff had
used TODAY in conjunction with several other words in respect of various
services and marks used by it.
9. In the impugned order the learned Single Judge held that the plaintiff's
trademark INDIA TODAY is a registered one. However, he was of the
opinion that intended use of the mark NATION TODAY for a News TV
Channel by the defendants would not amount to infringement of the
plaintiffs’ mark under Section 29 of the Trade Marks Act, 1999. The learned
Single Judge took note of the fact that when registration of the mark
TODAY in Class 38, which is Telecommunications and Broadcasting was
sought by the plaintiffs, there was already an application pending for
registration of a trademark “Punjab TODAY” for a TV news Channel. The
applicant claiming use of that trademark was from the early 1990s. It was in
these circumstances that the Trademark Registry objected that since the
mark PUNJAB TODAY was used for a news Channel, and an application
FAO (OS) 110/2014 Page 5



for its registration was pending, the plaintiff's mark was descriptive and not
distinctive. The plaintiffs contended that even though they had not entered
the news channel business, with the mark TODAY, nevertheless the existing
business under which the mark TODAY was being used, was in a related or
allied field i.e. news media and publication. Therefore, there was every
likelihood of confusion.
10. The learned Single Judge noted that the plaintiff's INDIA TODAY
depicted India in a very small font as compared to the word TODAY, which
was prominent, whereas the TODAY in the defendant's mark TODAY had a
much smaller font than the expression NATION. Therefore, the learned
Single Judge was prima facie of the opinion that there was no likelihood of
any TV news Channel viewer being misled into believing that the news
channel NATION TODAY was part of the plaintiffs' INDIA TODAY
group. He then went on to hold that the plaintiff's claim that the stand-alone
word mark TODAY had acquired secondary meaning and distinctiveness
was a matter that had to be established during the trial by adducing
necessary evidence and that a mere claim in this regard could not be
accepted. In so holding the learned Single Judge relied upon and discussed
several judgments of the Supreme Court.
11. In sum, the learned Single Judge was of the opinion that the
defendants impugned mark NATION TODAY could not be said to be
identical or deceptively similar to the plaintiff's mark INDIA TODAY and
that even the mark NATION TODAY would not be deceptively similar to
HEADLINES TODAY owned by the plaintiffs and would not lead to any
confusion. It was also held that the expression TODAY which was a mark
registered in Classes 16 and 35, were stand alone and that the plaintiff had
FAO (OS) 110/2014 Page 6



never used them for Telecommunications and Broadcasting. After taking all
this into consideration, the learned Single Judge, while refusing injunction
was of the opinion that the balance of convenience heavily weighed in favor
of the defendant and accordingly dismissed the application under Order
XXXIX CPC.
12. The appellant argues that the learned Single Judge was considerably
influenced by the fact that the registration application for PUNJAB TODAY
was pending adjudication. It was contended that in fact that issue stood
concluded by another suit - CS(OS) 924/2002 where the plaintiff's registered
proprietorship of the trademark TODAY was held to have been established
and the defendant i.e. STV Enterprises Ltd. was permanently injuncted from
using the trademark PUNJAB TODAY and from broadcasting its Channel
or services by using the mark PUNJAB TODAY or any other similar name.
It was contended by the plaintiff that the learned Single Judge did not take
note of the fact that the viewership of the plaintiffs was likely to be lured
into believing that the mark NATION TODAY, had an association with the
plaintiff.
13. Mr. Lall, learned counsel urged that the dominant presence of the
mark INDIA TODAY and its variants in different services in the media and
news industry, led to the undeniable fact that any use of the expression
TODAY was likely to impinge upon the plaintiff's rights. It was emphasized
that there is no denial of the fact that the mark TODAY is in use. It has been
registered in class 35 which is advertising and class 16 which is print. In
these circumstances since there was no challenge to this aspect, the
likelihood of confusion was greatest.
FAO (OS) 110/2014 Page 7



14. Mr. Lall, learned counsel for the plaintiff, argued that the learned
Single Judge fell into error in holding that there was no deceptive similarity.
Here it was emphasized that the word TODAY is not just similar but
identical and occurs in both the marks i.e. the plaintiff's mark as well as the
defendant's mark NATION TODAY. As between the two the plaintiff was
in the market and was well known for the last four decades. Opposed to this
the defendant had not even started its services and had merely applied for a
license. In these circumstances, urged counsel, the learned Single Judge
should have granted temporary injunction. Counsel relied on the judgments
of the Supreme Court reported as Ramdev Food Products Pvt. Ltd v
1
Arvindbhai Rambhai Patel & Ors and Laxmikant V. Patel v. Chetanbhai
2
Shah & Anr . He also relied on the judgment of this Court in Anchor Beauty
and Health care (P) Ltd v Proctor & Gamble Manufacturing (Tiajin) Co.
Ltd & Ors. (a judgment of a learned learned Single Judge dated 09.07.2014,
which was upheld by the Division Bench in Procter & Gamble
Manufacuring (Tianjin) Co. Ltd. & Ors v. Anchor Health & Beauty Care
3
Pvt. Ltd ).
15. Counsel for the defendant argued that the impugned judgment
requires no interference. She contended that the word TODAY is close to
the trade, i.e news channel broadcasting, and descriptive. Concededly the
plaintiff did not use the expression TODAY or INDIA TODAY for any
news channel. That it used the word Aaj Tak ("Till Today") did not imply
that the expression TODAY was of such a distinctive character as to acquire

FAO (OS) 110/2014 Page 8



secondary meaning. Counsel argued that according to the list of permitted
channels allowed to operate in India - both uplinking and downlinking
services, a number of entities were using the word TODAY (i.e RUSSIA
TODAY, LIVE TODAY, MANAGEMENT TODAY, etc.). She also
submitted that in Class 9 there were marks such as ECOTTON TODAY,
Buy today Sell tomorrow, SPM Touching Tomorrow Today, and in Class 25
there were at least a dozen marks registered as TODAY. Furthermore, in
Class 35 itself, 8 out of 40 marks had been registered, with TODAY. The
others were awaiting processing, or some other formalities and not many
were objected.
16. It was submitted that the word TODAY in the context of current
events coverage in the media is generic, and without a strong proof of
secondary use, no plaintiff should be given injunction, not the least the
present one. Highlighting that in other classes such as Class 36 and 42,
several registrants of the word TODAY exist, it was submitted that given the
relevance to the nature of services offered and also that the plaintiff's use of
the TODAY mark is not in respect of existing TV services, there is no cause
to grant injunction. Counsel argued that if the injunction to use the
expression TODAY, which describes its services, were to be granted, other
words too can be prevented from use, despite their denoting the nature of the
services. In such eventuality, the plaintiff has to show that in the particular
trade or service, how strongly is the word mark TODAY perceived by the
general public and cannot fall back on the distinctiveness acquired in the
magazine publishing field or in the Hindi news channel Aaj Tak.
Analysis and Conclusions
FAO (OS) 110/2014 Page 9



17. The discussion of the facts discloses that the plaintiffs are owners of
several registered trademarks. Prominent amongst these is INDIA TODAY
which has been used for a weekly magazine since 1975; others are MUSIC
TODAY, BUSINESS TODAY, a travel magazine "INDIA TODAY
TRAVEL PLUS", an architecture and design magazine "DESIGN
TODAY", and other magazines under the trade-marks SPICE TODAY and
MONEY TODAY etc. The plaintiff also publishes daily newspaper MAIL
TODAY. It has apparently acquired two trademarks TODAY in classes 16
and 35. The argument for temporary injunction is that the plaintiffs have
acquired distinctiveness to the extent that TODAY has gained a secondary
meaning in the news, publishing and media segment; it is also a well known
trademark. In support, they contend that the advertising and growing sales
figures testify to the mark’s gaining strength. The bedrock of their reputation
is the word mark TODAY, with which the users and members of the public
invariably associate the plaintiffs. Quite naturally, the defendant resists the
argument and points out that TODAY is a descriptive term: descriptive of
the services rendered by the plaintiff; it also has a strong descriptive or
service associative meaning to the defendant's business, i.e news channel.
Additionally, the defendant points out that TODAY has been used by
several other channels and products and that per se absence of use of that
word by the plaintiff in the English news channel segment cannot entitle it to
ad interim injunctive relief.
18. There is no dispute about the fact that the plaintiff has been in the
news magazine publication business for over four decades; if it asserts that it
has acquired a strong reputation for the title INDIA TODAY, which is its
registered trademark, the Court would be correct in assuming it to be so.
FAO (OS) 110/2014 Page 10



However, does that per se - along with sales figures and other financial
details testifying to various brands and trademarks owned by the plaintiff,
crystallize into a right to prevent others from using a common word,
"TODAY" in respect of television news channel services. It is here that the
matter requires a slightly closer scrutiny. The word TODAY is a common
term and a dictionary one. Used in a non-contemporary sense, i.e without
reference to time and as a mark, it could well be urged that it constitutes an
arbitrary mark. However, its link with news is unmistakable. In this context,
what acquires distinctiveness is the combination India Today.
19. The law demands closer scrutiny, when it comes to the use of
common words (such as TODAY), that are descriptive (or semi-descriptive)
of the services or goods offered by the service provider or trader. This
4
reluctance was best described in Re J Crosfield & Sons Ltd "Wealthy
traders are habitually eager to enclose part of the great common of the
English language and to exclude the general public of the present day and of
the future from access to the inclosure.” Again, in Mars GB Ltd v Cadbury
5
Ltd it was held that:
"Where the trade mark allegedly used by the defendant
comprises ordinary English words (such as “Page Three”,
considered by Slade J in News Group Newspapers Ltd v Rocket
Record Co Ltd [1981] FSR 89 at 102) then, as this decision
illustrates, that circumstance may be taken into account by the
court in the process of reasoning."

The burden of establishing that what are descriptive of the commercial
activity and can be protected - particularly when the plaintiff is not directly

FAO (OS) 110/2014 Page 11



using it in the same field, but using it in combination with another or other
6
words- is heavy, as expressed in My Kinda Town Ltd v Soll (the Chicago
Pizza case):
'It has to be borne in mind always that the burden of proving the
case that he has elected to make is on the plaintiff and it is
therefore important to consider the quality of the evidence which
he calls, what it actually establishes, and whether it discharges
that burden. In the ordinary case, this does not call for any very
profound analysis for the question normally is simply whether
damaging confusion has arisen or is likely to arise from
similarity of get-up or description. But where it is inherent in the
factual situation in which the parties are operating that there is
some risk of confusion in any event from the mere fact that the
parties are conducting the same trade and using in
it descriptive titles of which neither can claim any legitimate
monopoly -- as, for instance, in the Office Cleaning case -- a
closer analysis is essential, for the simple fact of confusion does
not, by itself, prove the plaintiff's case for him : it becomes an
extraordinarily difficult question to answer where there is
already a substantial potentiality for confusion of the two
businesses simply by reason of their being engaged in the same
trade. That does not mean, of course, that a defendant is
legitimately entitled to build on and increase that potentiality in
such a way that confusion becomes worse confounded, but it does
mean that where evidence of actual confusion is tendered it has
to be approached -- as indeed it was here by the learned judge --
with the caveat that there may well be reasons why it occurs
which involve no question of legal liability at all.'

FAO (OS) 110/2014 Page 12



Holding that the words LEISURE NEWS were incapable of protection given
the fact that the activity was newly launched, it was held in Marcus
7
Publishing plc v Hutton-Wild Communications Ltd that:

20. In India too, it has been recognized that trademark use of generic or
descriptive words have to be closely scrutinized before claims of injury are
8
allowed. The Supreme Court ruling in Skyline Education Institute (India)
Ltd v S.L. Vaswani declined to grant injunction to the plaintiff, who carried
on business under the trademark "Skyline". The Court noted that a large

FAO (OS) 110/2014 Page 13



number of other businesses had used the term "Skyline" for the same
business activity, i.e educational services:
"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."
21. A sound principle articulated in Wander Limited v. Antox India (Pvt.)
9
Limited , was that the exercise of discretion by a Court of first instance,
which takes into account all relevant materials and pleadings, should not
lightly and ordinarily be disturbed in appeal:

9
(1990) Suppl. SCC 727.
FAO (OS) 110/2014 Page 14

22. On an overview of the circumstances, this Court is of opinion that the
learned Single Judge was not in error in holding that the word TODAY had
not acquired such distinctiveness for the plaintiff (which was not using it as
a stand alone mark), to make out a prima facie strong case for grant of ad-
interim injunction. The observations made in the course of this order shall
not be construed as an expression of the merits of the rival claims; the
relative strengths would be gone into during the trial. For these reasons, the
appeal has to fail. It is accordingly dismissed, without order on costs.


S. RAVINDRA BHAT
(JUDGE)



DEEPA SHARMA
(JUDGE)
JANUARY 29, 2016

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