TMI Blog2007 (7) TMI 684X X X X Extracts X X X X X X X X Extracts X X X X ..... y runs a Hindi news channel INDIA TV which was launched in March 2004. It is stated that the channel is one of the leading Hindi news channels in India having popular programs such as 'Breaking News' and other programs such as India Beats, Jago India, Aap ki Adalat etc. 3. The plaintiff claims to have adopted the mark INDIA TV since 01.12.2002 and is stated to have been using the said mark continuously and extensively. It is stated that the plaintiff applied for the registration of the mark India TV in classes 38 and 41 on 22.01.2004 of which the mark applied for in class 38 was published in March 2006 and the mark in class 41 was published in February 2005. The claim of the plaintiff is on the use of the words 'India' and 'TV' as a combination and disclaimer on the separate use of the words has been published with the marks of the plaintiff published in the trademarks journal. It is claimed that no opposition to any of the advertisements has been received within the statutory period stipulated. 4. It is further stated that the plaintiff had also applied for the registration of the mark INDIA TV's MOST WANTED , which is a popular program of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... web mark just like a trade or service mark and the plaintiff avers that by using of the plaintiffs mark within a sketch of a television on the homepage of defendant nos. 1 and 2, the said defendants are attempting to represent themselves as the plaintiff/representative of the plaintiff. It is alleged that the registration of the impugned domain name by the defendants 1 and 2 constitutes infringement, passing off and dilution of the plaintiff's mark besides unfair competition. 10. The plaintiff thus filed the present suit against the defendants for permanently restraining the defendants from the use of the mark INDIA TV either as a domain name or in any other manner whatsoever on its website links, electronic material etc, from offering services through the said domain name and restraining the defendants from transferring or alienating or in any manner dealing with the said domain name. The plaintiff has also prayed for a mandatory injunction directing the transfer of the said domain name to the plaintiff besides claiming damages and rendition of accounts. 11. The suit has been contested by Defendant No. 1 by filing a written statement. The stand taken in the written st ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... cription and otherwise; restraining the said defendants from transferring, alienating or in any other manner dealing with the domain name and for transfer the said domain name to the plaintiff. 14. On 19.01.2007, an ex parte ad interim injunction was granted restraining defendant Nos. 1 and 2, their directors, officers, agents, licensees, franchises and representatives from using any domain name containing the combination of words INDIA TV as also from transferring or alienating the said domain name to any person. 15. Defendant No. 1 thereafter filed is 1366/2007 under Order 39 Rule 4 of the said code for setting aside the ex parte ad interim injunction granted on 19.01.2007. The stand taken in the said application is that defendant No. 1 is a company formed and existing in the United States having no Indian presence. It is pleaded that the two promoters of defendant No. 1 company are a well known Indian journalist based overseas and the founder and promoter of Internet portals such as www.SmasHits.com and defendant No. 1 is in the process of filing trademarks and patents based on its unique proprietary combination. It is alleged that the plaintiff filed the present suit ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... in Arizona though the said authority has no role to play insofar as the merits of the matter are concerned. The plaintiff has thus prayed for an injunction against proceeding with the action in the Arizona courts as the suit in this court was instituted prior to the Arizona suit and the arguments on the injunction applications in this court were being heard on a day to day basis. It has also been averred that different views by both courts would cause irreparable injury to both the plaintiff and defendant No. 1 and would be against the interest of justice. 18. The said application has been resisted by defendant No. 1 who has taken the stand that this court is not a court of competent jurisdiction not being the appropriate forum/ forum convenience. It is averred that all the defendants in the present case are American entities not amenable to the personal jurisdiction of the court. It is stated that the defendants do not reside or work for gain in India and that the promoters of defendant No. 1 are both permanent residents of the US. Defendant No. 1 is a Delaware Corporation. That the registrar of domain names godaddy.com which is the authority which has to ultimately enforce ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... dification or variation. 22. Learned Counsels for the parties advanced their submissions in respect of all the aforementioned applications at length on various dates. Anti Suit Injunction 23. The plaintiff has prayed for an anti-suit injunction restraining defendant No. 1 from proceeding with the suit filed by it against the plaintiff in the district courts at Arizona. The plaintiff claims that the subject matter in the two suits is the same and avers that different views of the two courts in the suits would cause irreparable injury to the plaintiff as well as defendant No. 1. Defendant No. 1, on the other hand has claimed that this court has no personal jurisdiction over the defendants and is not the forum convenience for hearing the present matter. 24. Insofar as the principles governing granting of anti-suit injunction are concerned, it would be useful to refer to the judgment of the Apex Court in Modi Entertainment Network and Anr. v. W.S.G. Cricket Pte. Ltd. [2003]1SCR480 . The relevant observations in this behalf are as under: 10. The courts in India like the courts in England are courts of both law and equity. The principles governing grant of injunction - an ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... le of forum non convenience. It was also observed that as a general rule, before an anti-suit injunction could be granted by an English Court to restrain a person from pursuing proceedings in a foreign jurisdiction, comity required that the English Forum should have sufficient interest or a connection with the matter in question to justify the indirect interference with the foreign court which such injunction entailed. 26. Thus, in considering whether an anti suit injunction is to be granted or not, as held in Modi Entertainment Network and Anr. (supra), the court is to inquire whether the defendant is amenable to the personal jurisdiction of the court, whether the ends of justice would be defeated by refusal to grant the injunction and where there are more than one forums available, and which is the forum convenience for bringing the action in question having regard to the convenience of the parties and other factors. The court has also to bear in mind the principle of comity. Personal Jurisdiction over defendants 27. Defendant No. 1 has taken the stand that neither of the defendants reside or work for gain in India; the promoters of defendant No. 1 are both permanent res ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s entity or individual located outside the state if for example such entity or individual regularly does business in the state or transacted business with the plaintiff in the state. Personal jurisdiction over non-residents is however limited by the constitutional requirements of due process. A defendant not served with process within the state in which the court sits must have sufficient level of business or personal contacts within the state so that the defendant can reasonably be expected to be sued there. As regards Internet activity, it has been noted that courts are still working out how this applies to law suits regarding Internet activity and business though some courts appear to be in agreement that the passive posting of a website is not enough to establish widespread jurisdiction wherever someone wants to sue the web author over its contents. The 'purposeful availment test' has been used whether a company can be sued in a specific jurisdiction in the case of Internet companies. Courts specifically look at three factors- (1) availment of a company to another jurisdiction (2) whether the act was done in another jurisdiction and (3) whether the jurisdiction is reaso ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nduct by the defendants in the District within the meaning of the Sub-section of the District Long Arm statute pertaining to causing tortuous injury in the District. It was observed that the plaintiff must show sufficient minimum contacts between the defendant and the forum establishing that the maintenance of the suit does not offend the notions of fair play and justice. 32. In Cybersell Inc case (supra) the question was whether the alleged infringing use of a service mark on a homepage on the WWW suffices for personal jurisdiction in the state where the holder of the mark has its principal place of business. In this case Cybersell Florida was alleged to have infringed the mark of Cybersell Arizona which advertised for commercial services over the Internet. It was observed inter alia, that no court has ever held that an Internet advertisement alone is sufficient to subject the advertiser to jurisdiction in the plaintiff's home state. It was found that Cybersell, Florida conducted no commercial activity over the Internet in Arizona and did nothing to encourage people in Arizona to access its site and there is no evidence that any part of its business was sought to be achieve ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... r motion to dismiss that Illinois does not have personal jurisdiction over them but the plaintiff claimed that the defendants are subject to personal jurisdiction based on the Illinois 'long arm' statute. It was observed that the plaintiff has the burden of demonstrating that personal jurisdiction exists. 36. Insofar as the aspect of this court having personal jurisdiction over defendants 1and 2 is concerned, learned Counsel for the plaintiff referred to the judgment in Compuserve Inc. v. Patterson 89 F. 3d 1257 6th Cir. 1996. It was observed in this case that personal jurisdiction may be either general or specific depending on the nature of contacts in a given case. It was observed that in this case the plaintiff sought to establish specific personal jurisdiction over the defendant. The court observed that the crucial federal constitutional inquiry in such a case is whether given the facts of the case, the non resident defendant has sufficient contacts with the forum state that the district courts exercise of jurisdiction would comport with 'traditional notions of fair play and substantial justice'. The three tests observed to be repeatedly employed by courts to ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... han sufficient minimum contacts in India for personal jurisdiction to be exercised by this court. It was contended that the plaintiff has enormous goodwill and reputation in India and the goodwill of the plaintiff is being damaged in India. Also, the mark has been diluted in India. Learned Counsel further submitted that the website of defendant No. 1 is an active one which permits subscribers from India to subscribe to its services. In this behalf, learned Counsel referred to the subscribe section of the impugned website which provides a form for subscription to services provided by defendant No. 1's website. The options under the head 'Country' include 'India'. The website can not only be accessed from but also subscribed to from Delhi and it is thus contended that defendant No. 1 is carrying on business for profit or gain from India. 39. Learned Counsel contended that defendant No. 2 is the controlling authority of defendant No. 1 and has its office in India as per the information given on its own website. 40. Reference was also made to the Live Channels section of the website of defendant No. 1 to show that the TV channels offered on subscription by ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t to the limitations aforesaid, every suit shall be instituted in Court within the local limits of whose jurisdiction- (a) the defendant, or each of the defendants where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain; or (b) any of the defendants, where there are more than one, at the time of the commencement of the suit actually and voluntarily resides, or carries on business, or personally works for gain, provided that in such case either the leave of the Court is given, or the defendants who do not reside, or carry on business, or personally work for gain, as aforesaid, acquiesce in such institution; or (c) the cause of action, wholly or in part, arises. ... [Explanation].-A corporation shall be deemed to carry on business at its sole or principal office in [India] or, in respect of any cause of action arising at any place where it has also a subordinate office, at such place. ... 45. In order for the grant of an anti-suit injunction, one of the conditions is the amenability of the defendant to the personal jurisdiction of the court. The position in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... . I am in agreement with the proposition that the mere fact that a website is accessible in a particular place may not itself be sufficient for the courts of that place to exercise personal jurisdiction over the owners of the website. However, where the website is not merely 'passive' but is interactive permitting the browsers to not only access the contents thereof but also subscribe to the services provided by the owners/operators, the position would be different. However, as noticed in the judgment in CyberSell Inc. case (supra), even where a website is interactive, the level of interactivity would be relevant and limited interactivity may also not be sufficient for a court to exercise jurisdiction. In Panavision International LP case (supra), it was found that the registration of the plaintiff's mark as a domain name by the defendant had the effect of injuring the plaintiff in California and Therefore the court had jurisdiction. In Compuserve case (supra) again it was found that the defendant had contacted Ohio to sell his computer software's on the plaintiffs Ohio based systems and sent his goods to Ohio further for their ultimate sale and thus those courts had ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... urisdiction of the court and the claim of the plaintiff has arisen as a consequence of the activities of defendant No. 1 within the jurisdiction of this court. This court can thus exercise personal jurisdiction over the defendants. Forum convenience 52. The second aspect to be considered in determining whether an anti-suit injunction can be granted is which of the available forums is the forum convenience for the dispute at hand. It is the stand of defendant No. 1 that this Court is not the forum convenience for dealing with the present case. It is the case of defendant No. 1 that the said defendant is entirely based in the United States and thus it is the District Court at Arizona, which is the convenience forum to be approached for claiming reliefs. 53. Learned senior counsel for defendant No. 1 placed reliance on the judgment of the House of Lords in Spiliada Maritime Corporation v. Cansulex Ltd. [1986] 3 All E.R. 844 in which the Court on consideration of various authorities summarized the principles applicable insofar as granting of stay on the ground of forum non convenience is concerned. Broadly, the principles are as under: i. The basic principle is that a stay ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ich go beyond those taken into account while considering factors connected with other jurisdictions. For instance, where it is established objectively by cogent evidence that the plaintiff will not obtain justice in the forum jurisdiction. 54. Learned senior counsel referred to the judgment of the Supreme Court in Kusum Ingots Alloys Limited v. Union of India and Anr. 2004(186)ELT3(SC) to advance the proposition that even if a small part of the cause of action arises within the territorial jurisdiction of the High Court, the same by itself may not be considered to be a determinative factor compelling the High Court to decide the matter on merits. In appropriate cases, the Court may refuse to exercise its discretionary jurisdiction by invoking the doctrine of forum convenience. 55. In ONGC v. Utpal Kumar Basu and Ors. (1994)4SCC711 , it was held that the mere fact that the petitioner company which had its registered office at Calcutta and read in a Calcutta newspaper ONGC's advertisement inviting tenders at Delhi for works to be executed in Gujarat and in response thereto the petitioner sent its tenders to the Delhi address from Calcutta and made representations from Cal ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... on any of them, actually and voluntarily resides or carries on business or personally works for gain. Explanation.- For the purpose of Sub-section (2), person includes the registered proprietor and the registered user. 58. Learned Counsel for the plaintiff referred to the judgment of learned single judge of this court in Surbhi Kumar v. Nitin Kumar and Ors. CS(OS) 2047/2006 decided on 12.03.2007 wherein in the interim application filed, the relief prayed for was restraining the defendant from proceeding with the divorce petition filed before the Superior Court of the State of California, County of San Diego, USA pending disposal of the suit. The plaintiff had initially participated in the proceedings in California and thereafter filed a suit in India. It was found that the plaintiff had only a dependent visa and had could not effectively represent herself in the US as she had no residence in the US. The defendant on the other hand was an Indian citizen having a permanent residence in India and thus it would be simpler for him to contest the proceedings in India. It was found that the balance of convenience was in favor of the plaintiff and the defendant was restrained from ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... suit has been filed by defendant No. 1. The plaintiff company is based entirely in India with its offices at New Delhi. Thus, neither the plaintiff nor defendants 1 2 have any connection with Arizona. It is only defendant No. 3, the Registrar of Domain Names, which is a proforma party, which has its offices at Arizona. Moreover, the claim of the plaintiff has arisen as a result of the fact that the impugned website is accessible in India and any injury alleged to have been caused to the goodwill and reputation of the plaintiff would be in India. 62. It may be noticed that the fact of filing of the suit in Arizona District Court was not disclosed by defendant No. 1 in this Court either in its written statement or in the reply to the application under Order 39 Rules 1 2 CPC (IA No. 651/2007) although the said suit was filed prior to filing of the written statement and reply. This fact was also not disclosed during submissions made before the court until the filing of the application under Order 39 rules 1 and 2 of the said code by the plaintiff praying for the grant of an anti-suit injunction. 63. The suit of the plaintiff was filed in this court on 18.01.2007 and this cour ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Media, where, in the section entitled About Us , it has been stated inter alias that Archer Media is a vertically integrated global entertainment and media company and its interests are exclusively focused in China, India and the United States. The website of Archer Media in the section entitled Contact US provides addresses in China, India and the United States and the Address provided for India is Shama Broadcast Contents and Services Pvt. Ltd , D-47 Gulmohar Park Delhi. Learned Counsel pointed out that the address herein is the same as the address of Sh. K. N. Gupta, who has signed the written statement filed by defendant No. 1. The plaintiff has thus contended that defendant No. 1 is a division of defendant No. 2. 68. It may be noticed that in the article entitled Archer Entertainment Joins India Minister of Overseas Affairs in Launching indiatvlive.com as also other articles including Archer Launches IPTV Platform for Indian Content overseas (http://us.indiantelevision.com/headlines/y2k6/july/july45.htm) filed by defendant No. 1 with the application under order 39 Rule 4 of the said code mention that indiatvlive.com's content and marketing partners include Shama ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t all available public documents show the relationship between defendants 1 2. It is alleged that the fact that these documents find mention in the letter dated 30.10.2006 indicates an attempt to create evidence to escape liability. The fact that defendant No. 1 shares a strategic relationship with defendant No. 2 was mentioned on the website of defendant No. 1 itself and not only of defendant No. 2. 72. It may also be noticed that the articles filed by defendant No. 1 along with is 1366/2007 also support the contention of the plaintiff that there is some connection between defendants 1 and 2. In the article entitled Archer Entertainment Joins India Minister of Overseas affairs in launching indiatvlive.com (http://in.sys-con.com/read/243792.htm), defendant No. 1 has been described as an Archer supported company. The article also quotes Munish Gupta, the COO of Archer Entertainment (also a promoter of defendant No. 1) as stating that teaming up with Abhesh Verma (the other promoter of defendant No. 1), Archer was able to put together a state of the art digital platform to broadcast Indian Channels from India. The relevant paragraph is as under: Teaming up with Abhesh, Arch ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 2. The copies of emails filed with the affidavit of Sh. K.N. Gupta merely show that defendant No. 1 demanded that defendant 2 cease and desist from making any statement that it is the owner of defendant No. 1 or as to the operations of defendant No. 1. These emails do not clearly show that there has been any severance of ties between defendants 1 and 2 and when such severance if any took place. There is no other material on record which shows severance of ties between defendants 1 and 2. There is no material on record which shows the nature of the relationship between defendants 1 and 2 besides the affidavit of Sh. K.N. Gupta in which the stand taken is that defendant No. 2 is a venture capital company, which has loaned funds to defendant No. 1. This aspect can thus really be decided only after trial where evidence is led in this behalf. REMEDY UNDER UDRP: 76. Defendant No. 1, in its written statement has averred that the remedy provided by ICANN would be an equally efficacious and appropriate remedy and the plaintiff has approached this court mala fide instead of approaching ICANN. 77. Learned Counsel for the plaintiff submitted that domain name disputes are governed by ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant. 80. Learned Counsel for the plaintiff placed reliance on the judgment of the learned single Judge of this Court in Citi Corporation and Anr. v. Todi Investors and Anr. 2006 (33) PTC 631 in support of the proposition that online resolution does not offer a complete alternative to passing off actions. In this case, the Court considered that the '.IN' Domain Name Dispute Resolution Policy (INDRP) for inquiring whether the remedies provided therein are adequate and sufficient. It was observed that the remedies available under the INDRP are limited to requiring the cancellation of the registrants domain name. The scope of the suit where the relief claimed is for infringement of trademark and passing off is far greater than the disputes that could be adjudicated by the Tribunal. The Court further noticed that the INDRP was not a statutory remedy and the arbitrator provided for under that policy is not a Judge/Judicial Officer. Section 134 of the said ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ty. With the increase of commercial activity on the internet, a domain name is also used as a business identifier. Therefore, the domain name not only serves as an address for internet communication but also identifies the specific internet site. In the commercial field, each domain-name owner provides information/services which are associated with such domain name. Thus a domain name may pertain to provision of services within the meaning of Section 2(1)(z). A domain name is easy to remember and use, and is chosen as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the internet to find websites they are looking for, but also at the same time, serves to identify and distinguish the business itself, or its goods or services, and to specify its corresponding online internet location. Consequently a domain name as an address must, of necessity, be peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical. As more and more commercial enterprises trade or advertise their presence on the web, domain names have become more and more valuable ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... (1933 Edn.), in Chapter of Trade Marks etc. Article 53 (pp. 356-7) it is stated: Geographical terms and words in common use to designate a locality, a country, or a section of country cannot be monopolised as trade marks; but a geographical name not used in geographical sense to denote place of origin, but used in an arbitrary or fanciful way to indicate origin or ownership regardless of location, may be sustained as a valid trade mark. According to Section 9 Sub-section (1) Clause (d) of our Act, a trade mark for registration in 'A' part of the Register must contain one or more words having no direct reference to the character or quality of the goods and not being according to its ordinary signification, a geographical name. ... 34. As we have seen, the mark 'Simla' is a geographical name and the snow-clad hills in outline in the mark indicates its use in ordinary or geographical signification, so that the mark is neither a fancy or invented word nor one with a secondary meaning. As has been observed in Karly's Treatise (10th Edition): 8.51. A word is not debarred from registration under Section 9(1)(e) as a distinctive word merely because it is ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ods. It was observed that 'Eboline' is the name of an Italian town and the mere addition of the common English Termination 'ne' is not sufficient to make this word an invented word. What the Act requires is that the word should be an invented word in fact and not merely in the belief of the person claiming to register it as a trademark. It was further held that the prohibition extends to a noun substantive, the adjective as well as to the name of a place to which an ordinary English suffix has been added so as to impart to it an adjectival form. The object of the legislature was observed to be of preventing a trader from acquiring a monopoly in the name of a place, and thereby suggesting that the goods had a local origin or local connection, which in fact it may not have. 89. It was thus contended that the plaintiff cannot claim exclusive use over the word 'INDIA'. 90. Learned Counsel for the plaintiff submitted that though the mark 'INDIA TV' consists of the word 'India' which has a geographical connotation in the context of news channels, 'INDIA TV' as a combination is distinctive and is, thus, entitled to protection. Distinct ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... significant places or where there is no geographical significance of the mark. (Imperial Tobacco Company of India case (supra). Even if the name may be distinctive of the goods in respect of which it is sought to be registered, registration of a geographical name may be refused, as was the case in Liverpool Electric Cable Co Ltd. case (supra). The addition of an ordinary English suffix to a geographical name may not be sufficient to to permit registration of the word as a trademark (Sir Titus Salt, Bart Sons and Co's Application case [supra]). 94. It must however be borne in mind that, the present action as was the case in Hi Tech pipes case (supra), is really in the nature of an action for passing off and what is being sought is not the registration of the impugned mark. It is not the case that a geographical mark cannot be granted protection in an action for passing off (Bharat Tiles and Marbles Private Ltd's case [supra]). Where a mark having a geographical connotation has acquired secondary significance and distinction, such a mark may be granted protection in a passing off action (Hi Tech Pipes case [supra]). 95. Thus, what has to be seen is whether the plaintiff ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the mark acquired distinctiveness prior to the date of the application. In the case of Hi-Tech Pipes case (supra) referred to by the plaintiff, registration was applied for nine years after the first use of the mark and thus it was pleaded that the mark has achieved distinctiveness. 98. As noted earlier the plaintiff in the present action is not seeking registration of the mark. Thus, the court is not to determine whether or not the mark is capable of registration and has to only look into the aspect whether the mark has acquired a secondary significance which entitles it to protection in an action for passing off. Any objections as regards registration would have to be raised by the said defendants in the relevant proceedings. 99. The TAM ratings for the years 2006- 2007 on which reliance has been placed by learned Counsel for the plaintiff prima facie does indicate that the channel of the plaintiff is rated among the top Hindi news channels in various time bands. The other articles etc placed on record by the plaintiff are with regard to the proposed launch of the plaintiffs channel INDIA TV and show that the same is being promoted by Sh. Rajat Sharma, a well known journa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ;Westinn' as part of its corporate name with the rider that the letterheads, advertisements etc of the petitioner company would contain the words- NO CONNECTION WHATSOEVER WITH WESTINN HOTELS AND RESORTS . It is thus contented that use of the mark as part of a corporate name can be permitted if it is used with a disclaimer clearly showing that there is no connection with the mark of the complainant. 103. Learned Counsel for the plaintiff on the other hand, in this regard referred to the judgment of the Supreme Court in Registrar of Trademarks v. Chandra Rakhit Ltd. [1955]2SCR252 in which it was observed that if the proprietor has acquired any right by long user of those parts or matters in connection with goods manufactured or sold by him or otherwise in relation to his trade, he may, on proof of the necessary facts, prevent an infringement of his rights by a passing off action or a prosecution under the Indian Penal Code. Disclaimer does not in any way affect those rights. 104. Learned Counsel for the plaintiff contended that initial confusion between the marks of the parties may cause the potential purchaser to preclude the services/goods of the complainant/opposed in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... oses to subscribe to the services, he cannot really be prevented from doing so. 106. As far as the creation of initial confusion is concerned any such confusion that may initially arise would be dissipated as soon as the browser visits the website as a disclaimer would be clearly displayed therein. It is not that there would be any time gap between accessing the website and discovering that the same is not that of the plaintiff. The impugned website does not carry the logo of the plaintiff or any other misleading information. Thus, defendant No. 1 may be permitted to continue operating the website with a disclaimer. Descriptive names 107. Insofar as the plea of defendant No. 1 that the mark of the plaintiff 'INDIATV' is descriptive, learned Counsel for the plaintiff submitted that even descriptive words that have acquired distinctiveness and significance to be associated with the business of the company whose mark it is would be entitled to protection. In support of her plea, learned Counsel referred to the judgment of the Supreme Court in Godfrey Phillips India Ltd. v. Girnar Food and Beverages (P) Ltd 2005 (30) PTC 1 in which the trademark involved was SUPER CUP ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t even if words are descriptive in nature, if they are identified with the business of the plaintiff, protection may be given to combination though individually the words may not be permitted to be monopolized. In Living Media India Ltd. v. Jitender v. Jain and Anr. 2002 (25) PTC 61 (Del), the plaintiff was the producer of a news program under the name and style of AAJ TAK while the defendants had adopted the name Khabarein AAJ TAK in respect of newspapers. The mark used by the defendant was found to be the exact reproduction of the mark of the plaintiff. In this case, learned single judge of this court observed that that while the words 'aaj' and 'tak' may be individually descriptive and dictionary words and may not be monopolized by any person but their combination does provide protection as a trademark if it has been in long, prior and continuous user in relation to particular goods manufactured or sold by a particular person and by virtue of such user, the mark gets identified with such person. It is so irrespective of the fact whether such combination is descriptive in nature and even has a dictionary meaning. In such a case, any person can use any of the t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... secondary meaning which is a precondition for grant of protection to a descriptive name. It was thus held that no prima facie case was made out for the grant of interim injunction prayed for by the plaintiff. 113. In this behalf reference was also made to the judgment of a learned single judge of this court in Manish Vij and Ors v. Indra Chugh and Ors. AIR 2002 Del 243 which was again a case concerning similar domain names. The plaintiff was the proprietor of a website dealing with second hand goods on the Internet under the domain name www.kabadibazaar.com . The defendants owned a similar domain name www.kabaribazaar.com , the only distinction being the use of the letter 'r' instead of letter 'd' in the word 'KABARI/KABADI'. It was observed that a trademark is descriptive if it imparts information directly which may concern some characteristic or ingredient of the product. The term kabari bazaar is descriptive and requires no imagination to connect the same with second hand goods. It was further observed that it is true that descriptive words can be used at times as trademarks where they acquire distinctiveness and signify that particular goods are ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 'SHAKTI' which formed part of both plaintiff's and defendant's trademark that prima facie it appears that the term 'SHAKTI' is commonly used in business parlance as would appear from the few pages of the telephone directory produced in the present case and the word 'MAHASHAKTI' is descriptive in nature. The words 'SHAKTI BHOG' are also descriptive. The Court referred to the case of F. Hoffmann La. Roche Co. Ltd. v. Geoffery Manners Co. AIR 1997 SC 2062 where it was held that where two words have a common suffix, the uncommon prefix of the words is a natural mark of distinction. 116. Learned Counsel for the plaintiff drew the attention of this Court to the print outs taken from the website of the US Patent Trademark Office, which show that defendant No. 1 has filed applications for the registration of the marks 'INDIABROADCASTLIVE' and 'INDIATVLIVE' in the United States. The applications have been filed only on 11.5.2007. Learned Counsel thus contended that while on the one hand defendant No. 1 is averring that the mark of the plaintiff is incapable of being registered on the ground of it having a geographical name as ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... at it is intended to say that the plaintiff company has obtained such a monopoly in the word Berkeley as to prevent its use in any combination of words for a hotel in Berkeley Square or Berkeley Street however, the word Berkeley with this particular suffix (International) is likely to cause confusion. 119. In Computer Vision case (supra) it was observed that even if the words 'Computer Vision' can be regarded as ordinary descriptive words, the question still arises as to whether the defendants trade name has been sufficiently distinguished and differentiated from the plaintiff's mark. Also as regards the contention of the defendants that the plaintiff was 'Computer Vision Corporation' while the defendants were 'Computer Vision Limited', it was observed that the word 'limited' is more often than mark dropped in referring to a company 'colloquially' and the very existence of that difference is likely to lead people to think that the defendant is an English subsidiary of the plaintiff or is in some other way connected with them. 120. Learned Counsel thus contended that the judgments in Online India Capital Co. Pvt. Ltd case (supra) M ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... or counsel for defendant No. 1 has contended that by the addition of a suffix 'LIVE' the mark of the said defendant has been rendered different from the mark of the plaintiff as was the case in Digital City Inc. case (supra). Learned Counsel for the plaintiff, however, contended that in the judgments in Computer Vision case (supra) and Berkeley Hotel Co. Ltd. case (supra) protection is granted even where the infringing marks contained different suffixes. However it may be noticed that in Berkeley Hotel Co. case (supra) it was the particular suffix involved in that case that was held to be likely to cause confusion. It was specifically observed that it is not the intention to say that the word BERKELEY could not be used for a hotel in any combination. Similarly in Computer Vision case (supra) it was found that the suffix 'Limited' is most likely to be dropped in referring to the company colloquially and the existence of that particular difference was likely to cause confusion. 125. The judgment of learned single Judge in Automatic Electric Limited case (supra) is to the effect that where the defendants themselves have got the mark registered and claimed proprietar ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nt No. 1 was launched on 17th August 2006. Thus, the agreement entered into with JUMP TV was prior to the launch of the website of defendant No. 1. However the website was inaugurated in Anaheim, California on 29.06.2006 as per the articles placed on record by defendant No. 1. 132. No evidence has really been placed on record at this stage which indicates that the plaintiff was aware of the launch of the impugned website of defendant No. 1. prior to January 2007. The material placed on record at this stage is insufficient to establish whether the present suit is a consequence of the Agreement entered into with JUMP TV. This aspect would thus be decided after trial. Delay 133. Learned senior counsel for defendant No. 1 submitted that the plaintiff is guilty of undue and unexplained delay in approaching this court for relief. The website of defendant No. 1 was launched in June 2006 while the present suit was instituted only in January 2007 and there is no Explanation for not approaching the court sooner. 134. Reference was made to the judgment of a division bench of this court in B.L. and Co. and Ors. v. Pfizer Products Incl. 2001 PTC 797 (Del) wherein it was observed tha ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... that there is only one article on record from the print media being a news clipping from the Financial Express dated 21.08.2006 which mentions that the website of defendant No. 1 will be launched. The other articles regarding the launch of defendant No. 1's website are from various sources on the Internet. It is thus contended that the plaintiff could not have been expected to know of the launch of defendant No. 1's website around August 2006 when it was launched. 137. Learned Counsel referred to the judgment of the Apex Court in Midas Hygiene Industries P. Ltd. and Anr. v. Sudhir Bhatia and Ors. 2004(28)PTC121(SC) in support of the proposition that in cases of infringement either of trademark or of copyright normally and injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was dishonest. Learned Counsel also placed reliance on the judgment in Hindustan Pencil Private Limited v. India Stationery Product Co. 1989 (9) PTC 61 (Del) wherein it was observed that delay by itself is not a sufficient defense to an ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ant No. 1 prior to January 2007 when it is claimed that the plaintiff came to know of the website of defendant No. 1 and when the present suit has been filed. Thus, it cannot prima facie be said that there was excessive delay on the part of the plaintiff in bringing the present action for passing off. Conclusion 142. The result is that is 2611/2007 stands allowed and defendant No. 1 is restrained from proceeding with the suit filed in the District Courts at Arizona. 143. Insofar as is Nos. 651/2007 and 1366/2007 are concerned, the order dated 19.01.2007 is modified and defendants are permitted to use the domain name INDIATVLIVE.COM with the disclaimer This website has no connection, affiliation or association whatsoever with India TV, the Indian Hindi news and Current Affairs television channel which should appear prominently next to its logo Indiatvlive . 144. Defendant No. 1 is also directed to file six monthly statement of revenue earned from the impugned website in India. 145. is Nos. 651/2007 and 1366/2006 thus stand disposed of. 146. Needless to say, the observations herein are prima facie in nature and will not affect the final disposal of the suit. ..... X X X X Extracts X X X X X X X X Extracts X X X X
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