Arnab Goswami in Trademark Battle with The Times Group over ‘NEWS HOUR’ and ‘NATION WANTS TO KNOW’
In a recent judgment given by the Delhi High Court in Bennett Coleman & Co. Ltd. vs. ARG Outlier Media Pvt. Ltd. & Ors., Hon’ble Mr. Justice Jayant Nath by partly allowing the application, passes an interim injunction in favor of the plaintiff and against the defendants restraining them from using the trade mark ‘NEWS HOUR’ or any other mark which is deceptively similar to the trade mark ‘NEWS HOUR’ of the plaintiff. However, the court did not pass any interim order regarding tagline ‘NATION WANTS TO KNOW’ and thus the defendant was allowed to use tagline as part of his speech/presentation of any news channel, etc.
Facts of the Case
The aforesaid suit is filed by the Bennett Coleman & Co. Ltd. widely recognizes as The Times Group against the ARG Outlier Media Private Limited and its managing director Arnab Ranjan Goswami, seeking a decree of permanent injunction from using the trademark/title/tagline NEWSHOUR or any other such mark/title/tagline comprising NEWSHOUR as a part thereof amounting to infringement of the plaintiff’s registered mark. A decree of permanent injunction is also sought to restrain the defendants from adopting or using the trademarks/titles/taglines or any other trademark/title/tagline either by itself or comprising NATION WANTS TO KNOW or any derivatives or combinations thereof.
Submission made by the Plaintiff
1. The plaintiff submitted that they were using the trademark THE NEWS HOUR as the title of its shows since 2006 and got the registration of trade mark THE NEWSHOUR under Class 35, Class 38 and Class 41 in 2014 in relation to programme title/news broadcast.
2. The plaintiff pleaded that they came across the trade mark applications for the mark “ARNAB GOSWAMI’S NEWSHOUR”, “ARNAB GOSWAMI’S NEWSHOUR 9”, etc. in 2017 under Class 38 on a “proposed to be used” basis. It is stated by the plaintiff that the trade mark used by the defendant contains the whole of the plaintiff’s registered trade mark NEWSHOUR and that it is an established test of infringement that elements/matter added to a registered trade mark will not prevent its infringement. It is reiterated that the trade mark “NEWSHOUR” being a registered trade mark, in view of Sections 28 and 29 of the Trade Marks Act, it would follow that the defendants cannot use the said trade mark.
3. It is further pleaded that the plaintiff’s trademark/tagline NATION WANTS TO KNOW (NWTK) is based on distinctiveness, goodwill and reputation of the plaintiff on account of its use since 2006 for goods/services in relation to television broadcast.
Submission made by the Defendants
1. The defendant submitted that THE NEWSHOUR mark comprises generic words and is widely used by news channels and websites in India and abroad. It has been urged that NEWSHOUR is descriptive in the news industry being a common term and its likening to news is unmistakable. There is nothing inherent in it. It is alleged that everybody uses the said mark NEWSHOUR.
2. They further stated that the defendants’ mark- Arnab Goswami’s Newshour, Arnab Goswami’s Newshour 9, Arnab Goswami’s Newshour 10, Arnab Goswami’s Newshour Sunday, etc. with addition of prefixes or suffixes with NEWSHOUR is not deceptively similar to the alleged registered mark of the plaintiff.
3. It is pleaded by the defendant that the viewers of the plaintiff’s and the defendants’ news channels are well informed and literate persons and can never confuse between the shows aired on the respective channels of the plaintiff and defendants.
4. It is further pleaded by the defendant that the expression NWTK and the tagline is not registered in favour of the plaintiff. The relief against alleged infringement is hence not sustainable. It is further stated that the tagline NWTK has become synonyms and exclusive to Arnab Goswami due to its standalone and past usage. The tagline is an integral part of Arnab Goswami’s image and inseparable from his individuality. The said tagline was never associated with the plaintiff. It was associated with Arnab Goswami and its personality.
1. Do the defendants by use of the marks, namely, ARNAB GOSWAMI’s NEWSHOUR, ARNAB GOSWAMI’s NEWSHOUR 9, etc. violate the rights of the plaintiff?
2. Do the defendants by use of the mark/tagline NWTK seek to misrepresent to prospective customers of news channels which misrepresentation would cause damage to the business and goodwill of the plaintiff?
The court relied on the judgment given in the Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories and Ruston & Hornsby Ltd. Vs. Zamindara Engineering Co. states that merely adding some prefixes or suffixes to the trade mark
NEWS HOUR, does not help the defendants to claim that the mark which is being used by the defendants is not deceptively similar to that of the plaintiff. The marks which are being used by the defendants, namely, ARNAB GOSWAMI’s NEWSHOUR, ARNAB GOSWAMI’s NEWSHOUR 9, etc. prima facie would be deceptively similar to the mark of the plaintiff THE NEWS HOUR and thus the plaintiff is entitled to relief on this account.
With regard to the second issue, the court said that prima facie it is not possible, at this stage without leading of evidence, to come to a conclusion that the defendants seek to mislead the consumers of the news channel or that the action of the defendants in using the said tagline would cause damage to the plaintiff as claimed.
Thus, the court allowed the injunction application regarding the use of trade mark “NEWS HOUR” and no interim order was passed regarding the tagline NATION WANTS TO KNOW. It means Arnab Goswami is free to use the same as part of his speech/presentation of any news channel, etc. However, if he chooses to use the same as a trade mark with respect to any of their goods/services, he will maintain accounts for such usage. Such accounts shall be filed in court regularly on an affidavit once in every six months.
This case becomes more significant as it underlines the concept of Limitation of Employee’s Right in Intellectual Property held by Companies. For instance, in the given case plaintiff has been using the mark/title The NEWSHOUR continuously since the launch of Times Now i.e. since 2006 and the tagline THE NATION WANTS TO KNOW has been closely associated and used with THE NEWSHOUR for over several years. When the question was raised by the defendant, the plaintiff pleaded that Arnab Goswami was only an anchor while the entire show was a team work involving a team of editors, researchers, production control team, creative team and script writers. The plaintiff adding more value to his argument relied upon the employment contract signed between the Plaintiff and Arnab Goswami whereby it was clearly mentioned that all intellectual property created, developed and used by Arnab Goswami in or on the channel including in relation to such programme exclusively belongs to the plaintiff. Accordingly, all intellectual property rights, goodwill and reputation in the trade mark/title/tagline in the NEWSHOUR and the NWTK belong to the plaintiff and the defendants cannot claim any right over it.