Tv 18 Broadcast Ltd Vs Bennett, Coleman And Company Ltd.

The present case is based on the application for interim relief sought by the Network 18 group, India’s largest media and entertainment conglomerate. The present application is concerned with the Hindi television show titled “BHAIYAJI KAHIN”, the device mark for which was adopted w.e.f. 29 December 2016 under classes 38 and 41. It was claimed that the Defendant, who is the media conglomerate “Times Group” launched a deceptively similar show titled “Bhaiya Ji Superhit.” This similarity was claimed against the nature of the shows and the trademarks which were rejected by the Defendant owing to the conditional registration of the Plaintiff’s mark under class 41, generic nature of BHAIYAJI, and different natures of the shows. The Court examined the mark in class 41 and found that there was a disclaimer with respect to the word “BHAIYAJI”

Plaintiff’s Contentions

With reference to the disclaimer, Plaintiff submitted that they are entitled to complete protection of the mark in class 38 due to the absence of any disclaimer on “Bhaiyaji” which was the most dominant/essential part of the registered mark. It was further claimed that the mark had acquired a distinctive character since the show had been running for over a decade (long user) and thus, Defendant’s adoption was dishonest.

Defendant’s Contentions

Contrary to what is claimed by the Plaintiff, Defendant argued that the format of their shows was totally different. The Plaintiff’s show took place in an outdoor setting where the anchor spoke to the public on matters of public importance. Whereas, the Defendant’s show was hosted by a stand-up comedian, indoors, making social commentary using humour and satire. The Defendant further claimed the relevant class to be 41 where the registration was conditional which restrained Plaintiff from claiming exclusivity on the term “Bhaiyaji.” The term was non-distinctive in nature and was common to trade. It was lastly brought into the Court’s notice how upon the Registry’s objection to registration of Plaintiff’s mark w.r.t an earlier mark “Bhaiyaji Aisa Kyun”, the Plaintiff claimed them dissimilar, stopping them from taking a different stand in this case.

Court’s Observations

Upon perusing the NICE Classifications, the Court concluded that television programmes, including news shows, would fall in class 41 and not 38 which clearly excludes television programmes. Class 38 would rather include television channel names like Times Now, CNN, News18, etc. Thus, for determining infringement the relevant class was 41, where registration has been granted to the Plaintiff with a clear disclaimer. The Court further noted how the only similarity between the two marks is the term “Bhaiyaji” which in the view of disclaimer cannot be used to claim exclusivity. For this, the Court cited section 28(2) of the Trade Marks Act, 1999 which provides for exclusive right to use a trademark being subject to any condition and limitation which is part of the registration granted. Additionally, they agreed that prima facie, “Bhaiyaji” was a generic term of widespread use, non-distinctive character, and as proved by the Defendant, common to trade. Further, the Court relied upon the case of Raman Kwatra vs. KEI Industries Limited[1] and observed that the Plaintiff cannot make contrary averments from what it submitted in its Reply to Examination Report wherein the Plaintiff clearly asserted that the marks cannot be dissected and are rather to be compared as whole.

For the contention of passing off, the Court found the formats of both shows to be different since the Plaintiff’s show was interactive and not scripted while the Defendant’s show was scripted and non-interactive. Moreover, the shows were hosted by a news anchor/journalist and a stand-up comedian, respectively, broadcasted on two different channels. Thus, prima facie there existed no likelihood of confusion. The application was thus dismissed by the Hon’ble Court.

Remarks

This judgement reiterated the principle that a person is not allowed to approbate and reprobate. Further, Justice Amit Bansal took the view that Plaintiff’s mark acquiring distinctiveness on account of being a long user could not be the basis for grant of an interim injunction and this contention could only be examined in a trial. The decision was mostly in line with the Defendant’s contentions and highlighted the importance of disclaimers in trademark registration when trying to determine infringement.

[1] 2023 SCC OnLine Del 38.