Delhi High Court: A suit was filed by Bennet Coleman & Company Limited (plaintiff) seeking to restrain E Entertainment Television (defendants) its directors, agents, officers, employees, cable operators, multisystem operators, direct-to-home operators, E-NEWS 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. Mukta Gupta, J., held that the plaintiff cannot be permitted to claim that the word ‘NOW’ used by it as a prefix or 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.
The plaintiff company is popularly known as the ‘Times Group’ which primarily runs print media since 1838 and is the flagship company of the Times Group Company. 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, for television channels for more than a decade like ‘Times Now’ channel, ‘Times Now World’ ‘ET Now’ channel, ‘Mirror Now’, ‘ROMEDY Now’. The suffix “NOW” is thus attached to all the channels of the plaintiff except few like ‘Zoom’, ‘MN+’, ‘MNX’ and ‘MNX HD’ operated by the plaintiff.
It is the case of the plaintiff that on and from 13-10-2008, 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 along with the application for trademark registration of the old logo and the word mark “E Now” was also applied. 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 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.
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 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. It was the case of the defendant that the earliest registration of the mark “NOW” by the plaintiff is of 31-07-2008 which is after the date of use of “E! News Now” by the defendant, and hence, the “NOW” label and marks have been wrongly registered.
The Court noted that the plaintiff is not the proprietor of the standalone trademark “NOW” nor prior user of the said mark in Class-38. Further, the stand-alone registration of the plaintiff in Class-41 is of 18-09-2014 on the proposed to-be-used basis and has not been used till date. Thus, the registration of “NOW” simpliciter in Class-41 cannot be used to seek an injunction against the defendant’s mark “E! Now” and “E! New Now” and the defendant’s first use of “E-News Now” is since 30-09-2007.
The Court further noted that though the plaintiff has several registrations with the suffix and prefix “NOW”, it is a common word and is used by several other entities. Further, the plaintiff’s own stand is that the mark “NOW” is common to trade in response to the examination report for ROMEDY NOW under Class-9, and the counter statement in relation to the opposition filed against the mark “NOW‟ under Class-9. The plaintiff also gave a disclaimer on “NOW” in registration for LOVCOM in Class-9, LOVCOM NOW in Class-16 and ROMEDY NOW in Class-38.
Thus, the Court held that the plaintiff cannot be permitted to claim that the word “NOW” used by it as a prefix or 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.
[Bennet Coleman and Company Limited v E Entertainment Television LLC, 2023 SCC OnLine Del 3339, decided on 31-05-2023]
Advocates who appeared in this case :
Mr. Hemant Singh, Ms. Pragya Jain, Ms. Soumya Khandelwal, Advocates for the Plaintiff;
Ms. Shwetashree Majumdar, Mr. Prithvi Singh and Ms.Devyani Nath, Advocates for the Defendants.