Regional Newspaper 'Saurashtra Aaj Tak' Restrained From Using 'Aaj Tak' Brand; High Court Rules Use Of Disclaimer Insufficient To Protect Well-Known Trademark

The Appellant, part of the India Today Group, has used the trademark ‘Aaj Tak’ for news dissemination since 1995 (news program) and 2000 (24-hour channel).

In 2002, the Respondent launched a Gujarati newspaper titled ‘Saurashtra Aaj Tak’ from Rajkot.

The Appellant filed a suit for permanent and mandatory injunction for passing off.

The Trial Court found that ‘Aaj Tak’ had acquired a secondary meaning and that the Respondent’s mark caused a likelihood of confusion.

However, the Trial Court declined a blanket injunction, instead ordering the Respondent to use the mark only with a disclaimer stating no association with the Appellant.

The Appellant challenged this limited relief.

The court applied Section 27(2) of the Trade Marks Act, 1999, which preserves common law rights of action for passing off regardless of registration.

It relied on S. Syed Mohideen v. P. Sulochana Bai, which establishes that passing off rights derive from prior use and remain unaffected by statutory registration.

Regarding the nature of the mark, it applied the principle from Living Media India Ltd. v. Jitender V. Jain, holding that a combination of descriptive words (like 'Aaj Tak') can acquire distinctiveness through long use.

Citing Laxmikant V. Patel v. Chetanbhai Shah, the court noted that intent to deceive is not a necessary element in passing off, and an absolute injunction is the appropriate remedy where distinctiveness is established.

The court found the Respondent's challenge to locus standi unsustainable because passing off protects prior users; the Appellant had used the mark since 2000, two years before the Respondent.

The court noted that the Respondent led no evidence to prove bona fide use or its own goodwill, rendering the Trial Court’s findings on the Respondent's "acquired reputation" speculative.

Visually, the Respondent's "Advertisement Rate Card" emphasized 'Aaj Tak' in a larger font than 'Saurashtra', proving an intent to trade on the Appellant’s goodwill.

The Court reasoned that since news dissemination (TV) and print media are allied activities, a regional prefix like ‘Saurashtra’ suggests a regional wing of the Appellant rather than a distinct entity, thereby increasing the likelihood of association.

Consequently, a disclaimer was insufficient to remedy the established misrepresentation.

It held that once the "classical trinity" of passing off (goodwill, misrepresentation, and likelihood of damage) is established, an absolute injunction must follow.

The Court issued a decree of permanent injunction restraining the Respondent from using the name ‘Saurashtra Aaj Tak’ and a mandatory injunction directing the Respondent to change its newspaper's name to a title not deceptively similar to ‘Aaj Tak’.