Delhi HC grants permanent injunction to Living Media India Ltd. for its mark “Aaj Tak”; restrains YouTube channels, social media pages/accounts/handles from using similar mark
Delhi High Court: In a case wherein Plaintiff 1’s “Aaj Tak”/ mark was being infringed by various YouTube channels, websites, Facebook and Instagram pages, C. Hari Shankar, J.*, granted permanent injunction, restraining Defendants 1 to 14 and Defendants 20 to 30 from using any mark which was confusingly or deceptively similar to the mark “AAJ TAK”/ of the plaintiffs, either as a word mark or as a logo, or any other mark which was confusingly similar to the plaintiff’s marks. The Court further directed Defendants 15 to 19 to take down the websites/social media pages in which the infringing mark appeared.
Background
Plaintiff 1 was the proprietor of the trade mark , registered in its favour in Classes 38 and 41. Plaintiff 1 had licensed the mark to Plaintiff 2 vide license agreement dated 1-10-2003. Plaintiff 2 runs a well-known online news channel under the said mark and uses it for its YouTube channel and its social media webpages on Facebook, Instagram, and Twitter. The plaintiffs submitted that they had devised several marks with the “TAK” suffix, such as ‘Yoga Tak’, ‘Tech Tak’, ‘Sports Tak’, ‘Mobile Tak’, ‘News Tak’, ‘Astro Tak’, ‘Duniya Tak’, ‘Punjab Tak’, ‘U.P. Tak’, ‘M.P. Tak’, ‘Crime Tak’, ‘Gujarat Tak’, etc.
Defendants 15 to 19 evoked the principle of anti-dissection, relatable to Section 17(2) of the Trade Marks Act, 1999, by urging that, as no separate registration had been obtained by the plaintiffs in respect of the “TAK” suffix of the mark , the plaintiffs could not claim exclusivity only in respect of the said suffix or plead that marks which were common with the plaintiffs only in so far as they used the said suffix were infringing in nature. It was also submitted that the “TAK” suffix could not be treated as the dominant part of the plaintiffs’ mark and once it was determined that the plaintiffs could not plead exclusivity of the “TAK” suffix of the mark, the similarity between the plaintiffs’ mark and the defendants’ marks, vanishes.
Analysis, Law, and Decision
The Court opined that as the defendants use the suffix “TAK” and were also used in respect of services which were analogous, or identical, to the services provided by the plaintiffs, the marks of Defendants 1 to 14 and 20 to 30 were ex facie infringing of the plaintiffs’ registered mark. Thus, the Court held that there shall be a decree of permanent injunction, restraining Defendants 1 to 14 and Defendants 20 to 30 from using any mark which was confusingly or deceptively similar to the mark “AAJ TAK”/ of the plaintiffs, either as a word mark or as a logo, or any other mark which was confusingly similar to the plaintiff’s marks, for running any online channel or for any other goods or services which might be regarded as allied or cognate thereto.
The Court noted that the plaintiffs had a family of marks all of which used the “TAK” suffix, therefore, the “TAK” suffix had become a source identifier of the marks of the plaintiffs and was, thus, the dominant part of the marks. The Court relied on South India Beverages Pvt. Ltd. v. General Mills Marketing Inc., 2014 SCC OnLine Del 1953 and held that the impugned mark of Defendants 15 to 19 was also liable to be regarded as prima facie infringing of the plaintiffs’ registered mark as the colour scheme, and the font used in the two marks were also nearly identical.
The Court opined that as Defendants 15 to 19 had filed a written statement, it was not possible for this Court to straight away decree the suit against them under Order VIII Rule 10 of the Code of Civil Procedure, 1908. Thus, in such circumstances, the ad interim injunction granted by this Court vide order dated 30-03-2022 shall stand extended to the mark of Defendants 15 to 19 as well. Thus, the Court directed Defendants 15 to 19 to take down the websites/social media pages in which the infringing mark appeared and if Defendants 15 to 19 fail to take down the web pages and social media handles, Defendants 31 to 34 were directed to do so.
The matter would next be listed on 09-10-2023.
[Living Media India Ltd. v. Aabtak Channel.com, 2023 SCC OnLine Del 5680, decided on 06-09-2023]
*Judgment authored by: Justice C. Hari Shankar
Advocates who appeared in this case :
For the Plaintiffs: Hrishikesh Baruah, Anurag Mishra, Kumar Kshitij, Radhika Gupta, Advocates
For the Defendants: Mamta Rani Jha, Rohan, Shruttima Ehersa, Deepak Gogia, Aadhar Nautiyal, Advocates
