Delhi High Court: no monopoly over 'today'

In Living Media India Ltd v Alpha Dealcom Pvt (CS(OS) 3350/2012, February 19 2014), the Delhi High Court has refused to grant an ad interim injunction restraining the defendants from using the mark NATION TODAY. 

The plaintiffs are a media house with a large commercial presence in both print and electronic media through publications such as India Today, Business Today, Design Today, Money Today and Spice Today. They are also responsible for broadcasting popular news channels such as Aaj Tak, Headlines Today, Aaj Tak Tez and Dilli Aaj Tak.

The defendants filed three applications in Class 38 of the Nice Classification for the registration of the service mark NATION TODAY, prior to launching a news channel under that mark. When becoming aware of this, the plaintiffs filed suit against the defendants for passing off and infringement of their registered trademark TODAY, as well as other 'today'-formative marks, which the plaintiffs claimed to have used continuously since 1975, with significant amounts of money and resources spent on promotional and advertising activities.

The plaintiffs' case was as follows:

1. Since the TODAY mark had acquired a secondary meaning owing to its longstanding and continuous use since 1975, the mark had acquired well-known status, and even its variants had become synonymous with the plaintiffs' goods and services.
2. Use of the TODAY mark as part of the name of the proposed news channel, Nation Today, by the defendants might create a connection or association with the plaintiffs' group of companies and may cause confusion/deception in the minds of consumers.
3. The mark NATION TODAY was similar phonetically and structurally to the plaintiffs' TODAY marks, and was intended to be used for the same goods and services as those of the plaintiffs.
4. The defendants had adopted the mark NATION TODAY in bad faith, as the second defendant, a senior employee of the second plaintiff until December 21 2011, had subsequently joined the first defendant as CEO. Therefore, the second defendant was well aware of the fact that the plaintiffs' TODAY mark had acquired tremendous brand value, goodwill, reputation and popularity.

The defendants' case was as follows:

1. The plaintiffs’ registered trademark INDIA TODAY for telecommunications in Class 38 had never been used by the plaintiffs.
2. The plaintiffs’ trademark INDIA TODAY, registered in Class 16, is a device mark and not a word mark.
3. The plaintiffs had failed to disclose that, during the prosecution of their application in Class 38, they themselves had stated that the mark PUNJAB TODAY cited by the examiner was visually, structurally and phonetically dissimilar to the mark INDIA TODAY. Therefore, the plaintiffs were now estopped from claiming that the mere use of the word 'today' would cause confusion among the public, especially as several third parties were already using the word 'today' as part of their marks.
4. The word 'today' is a common English word which cannot be monopolised. Should such monopolisation be allowed, it would be detrimental to a large number of other trademarks.
5. The plaintiffs did not have any exclusive rights in the mark TODAY and only have registrations for 'today'-formative marks.  

The court decided in favour of the defendants prima facie, noting that although INDIA TODAY is a registered trademark, the use of the mark NATION TODAY for a TV news channel would not amount to infringement. The court observed that the plaintiffs’ earlier admission that the mark PUNJAB TODAY was dissimilar to INDIA TODAY did not work in their favour in this instance.

Further, the court distinguished the marks INDIA TODAY and NATION TODAY on the basis that, in INDIA TODAY, the visual emphasis was on the word 'today', while in NATION TODAY, the font of the word 'nation' was larger and more prominent. Therefore, there was no prima facie likelihood of confusion.

The court also held that the fact that there were several third-party trademarks with the word 'today', which the plaintiffs had chosen not to take action against, could imply that the plaintiffs had abandoned their rights in the mark.

Finally, the court observed that, for their mark to be declared well known, the plaintiffs would have had to adduce sufficient evidence, at the trial stage, in support of their contention that TODAY was distinctive and had acquired a secondary meaning.

A recent trend in the High Court of Delhi has been to recognise marks as well known only if the onus of proving that it is a well known mark has been properly discharged by the applicant. The factors/principles taken into consideration by the court when assessing whether a mark is well known are:

1. the knowledge or recognition of the mark in the relevant section of the public;
2. the number of persons involved in the channels of distribution;
3. the business circles dealing with the goods or services at issue;
4. the duration, extent and geographical scope of any use and promotion of the mark;
5. the duration and geographical scope of any registration of or any publication for registration of that mark to the extent that they reflect the use or recognition of that mark;
6. the record of successful enforcement of the rights in that mark; and
7. the number of actual or potential customers of the goods or services at issue.

Therefore, in order to establish that their TODAY mark is well known, the plaintiffs would have to provide relevant evidence based on the above principles, among others, thereby building a strong case against the defendants.

D Neha Reddy, Anand and Anand, Noida