Delhi High Court: An application was filed by TV 18 Broadcast Limited (plaintiff) seeking a grant of interim relief against Benett, Coleman and Company Limited (defendants) to stop using the impugned mark “Bhaiya Ji Superhit” owing to the similarity in the trademarks as well as the nature of the show of the plaintiff by the name “Bhaiyaji Kahin”. Amit Bansal, J., refuses interim injunction in favour of TV 18 Broadcasting Limited as the word “Bhaiyaji” is generic in nature and is commonly used in certain states of India, including Uttar Pradesh and Bihar, and which literally translates into the word “brother” and is therefore, of a non-distinctive character.
The plaintiff is a part of the Network18 group, which is India's largest media and entertainment conglomerate. The business operations of the plaintiff involve running various television channels in India such as CNBC-TV18, CNN News18 and News18. The plaintiff is also in the business of running entertainment and infotainment media channels such as Colors, Nickelodeon, MTV and History TV18. The plaintiff is engaged in the business of creating television shows that are broadcast under their well-known trademarks such as “NEWS18”, “BOTTOMLINE”, and “BHAIYAJI KAHIN” [collectively known as “Bhaiyaji Kahin” marks]. Since the show has been running in a successful and uninterrupted manner, the “Bhaiyaji Kahin” marks have attained immense goodwill and reputation amongst the show's viewers/audience.
The defendant is the media conglomerate “Times Group” that is engaged in the business of print, digital and television media, which includes various news channels such as Times Now, ET Now and Times Now Navbharat. The trademark “TIMES NOW” and logo of the defendant have acquired goodwill and reputation in the market due to the defendant's extensive promotion efforts and media coverage. The Hindi news channel of the defendant “TIMES NOW NAVBHARAT” has various shows under its belt such as “News Ki Paathshala”, “Opinion India Ka” and “Bhaiya Ji Superhit”.
The main grievance of the plaintiff is that the defendant was launching a show titled “Bhaiya Ji Superhit” using the trademark, wherein newsworthy issues were to be brought to light through humour and satire, available to watch online on YouTube on the Times Now Navbharat YouTube channel. The show “Bhaiya Ji Superhit” of the defendant is an interactive thirty-minute infotainment programme that has become immensely popular since its first episode aired on 08-01-2022. Thus, the plaintiff filed the present suit seeking to restrain the defendant from infringing the trademarks of the plaintiff, passing off and other ancillary reliefs.
The Court noted that the plaintiff's mark “Bhaiyaji Kahin” is registered under both classes 38 and 41. The registration under class 41 has a disclaimer regarding the term “Bhaiyaji”, whereas the registration under class 38 does not have any such disclaimer in respect of television programs, particularly news programs. A perusal of the classification makes it clear that television programs, including news-related programs, fall under class 41 and not class 38. In fact, in class 38, there is a clear exclusion in respect of television programs. Further, class 38 includes telecommunication services, which include television broadcasting. Therefore, what would be included in class 38 would be names of television channels, such as Times Now, CNN News18, News18 and the like. The names of programmes that are telecast on these channels would be subject matter of class 41. Therefore, for the purposes of determining infringement, the relevant class would be class 41, where the plaintiff has been granted registration with a clear disclaimer regarding the use of the term “Bhaiyaji”. Thus, the reliance placed by the plaintiff on registration under class 38 is not relevant in the present context, more particularly when the plaintiff has obtained registration under class 41.
The Court further noted that the only similarity between the marks of the plaintiff and the defendant is the use of the term “Bhaiyaji”. There is no similarity between the term “Kahin”, used by the plaintiff and the term “Superhit” used by the defendant. In view of the disclaimer regarding the term “Bhaiyaji” under class 41, the plaintiff cannot restrict the defendant from using the said term. As per Section 28(2) of Trade Marks Act, the exclusive right to use of a trademark shall be subject to any condition and limitation that is part of the registration granted.
The Court observed that the term “Bhaiyaji” is a word of common use in certain states of India, including Uttar Pradesh and Bihar, and which literally translates into the word “brother” and is therefore, of a non-distinctive character. The term “Bhaiyaji” is a part of various television and radio programmes in India and therefore, common to trade. The term “Bhaiyaji” is a generic term of widespread use, and nobody can claim an exclusive right to use such generic words. Thus, the plaintiff is not entitled to exclusive rights over the mark “Bhaiyaji” in terms of Section 17 of the Trade Marks Act, 1999.
The Court concluded that the show of the plaintiff is an interactive show that is not scripted, whereas the show of the defendant is scripted and non-interactive. The defendant's show is hosted and anchored by a standup comedian, whereas the show of the plaintiff is hosted and anchored by a news anchor/journalist. Further, the two shows are shown on different television channels. Therefore, in my prima facie view, there is no likelihood of confusion between the two television shows.
The Court held that the plaintiff has failed to make out a prima facie case for grant of interim injunction.
[TV 18 Broadcast Limited v Bennett Coleman and Company Limited, 2023 SCC OnLine Del 3837, decided on 04-07-2023]
Advocates who appeared in this case :
Mr. Chander M. Lall, Senior Advocate with Mr. Mayank Mikhail Mukherjee and Mr. Ujjwal Singh, Advocates for plaintiff
Mr. Hemant Singh, Ms. Soumya Khandelwal and Ms. Pragya Jain, Advocates for defendants
Buy Trade Marks Act, 1999 HERE
