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Date of Decision: 20th November, 2024 C.O. (COMM.IPD-TM) 396/2022
M/S M.H. ONE TV NETWORK PVT. LTD. .....Petitioner
Through: Mr. Rishah Srivastava, Ms. Yasheswini Sharma and Mr. Sahil Gupta,, Advocates
Mob: 9958349040
Through: None.
JUDGMENT
1. Respondent no. 1 has been served by way of publication in the newspaper „Times of India‟ dated 14th September, 2024.
2. None appears for respondent no. 1, despite service of notice.
3. Accordingly, respondent no. 1, is proceeded ex-parte.
4. The matter is taken up for hearing.
5. The facts, as canvassed in the petition, are as follows: 5.[1] The petitioner has been engaged in the business of providing various goods and services, including, Broadcasting (Cable Television), Broadcasting (Radio), Broadcasting (Television), included in Classes–09, 16, 38 and 41 of the Trade Marks Act, 1999. 5.[2] Since the year 2003-2006, the petitioner through his predecessors, has been using the trademarks and word per se, as well as in label form, for marketing and providing their services. 5.[3] The petitioner is the lawful owner and proprietor of the trademarks and as well as, the label form. 5.[4] MH ONE TV Network Limited, presently, MH ONE TV Network Private Limited, was founded in the year 2003. However, the petitioner has been using the trademark in question in respect of various goods and services, since the year 2002. Further, the first channel of the petitioner was launched in May 2003 under the brand name MH ONE, which is a 24 hours Punjabi Music Channel, after taking due permission from the competent authority of the Government of India. Today, the channel of the petitioner has become the leading Punjabi Language Music and Entertainment Channel, with an average weekly market share of 65%, which has increased from 17.87% since the time of its launch. 5.[5] The year 2007 was a landmark year for MH ONE channel, with the launch of two additional channels, i.e., MH ONE SHRADDHA, the devotional channel and MH ONE NEWS, a 24 hours news channel with a focus on the Hindi speaking belt. With the vast experience of running a bouquet of three channels from different genres, the petitioner is well positioned to capture considerable growth opportunities in India‟s Punjabi Music, Hindi devotional and News broadcasting industry. 5.[6] Apart from the electronic media, the petitioner has their presence in digital media, as well as on YouTube and earning handsome revenue from the said platforms. 5.[7] The petitioner started live airing of morning and evening Aarti of Maa Vaishno Devi from Katra, Jammu & Kashmir, on account of which the name MH ONE has become household name. 5.[8] The petitioner is the registered proprietor of the following various trademarks/service marks, which are still valid and subsisting; 5.[9] The petitioner‟s MH ONE/MH[1] channels, reach in the states of Delhi, Punjab, Himachal Pradesh, Haryana, Jammu & Kashmir, UP and Uttaranchal and new areas are being added to this on a regular basis. The channel of the petitioner also has high viewership across the border in various countries including Bangladesh, Nepal, UAE, Middle East and other neighboring countries. The channels of the petitioner are also available on the Direct to Home (“DTH”) platform of Tata Sky, Dish Network, Videocon, Airtel and Big TV and other operators of this field.
5.10 The petitioner has been continuously and uninterruptedly using the invented mark MH1/MH-ONE since the year 2002. Thus, by virtue of long and continuous user, a valuable goodwill and reputation has accrued to the said mark “MH1”.
5.11 The respondents are engaged in the same/similar/allied/cognate business as that of the petitioner‟s goods and business, i.e., “Media Buying Services”.
5.12 A civil suit being CS DJ 356/2021, has been filed by the petitioner against the respondent no. 1 herein, on account of using similar trademark, as that of the petitioner, which is pending adjudication before the District Court, Rohini.
5.13 The respondents have adopted a deceptively similar mark, i.e., MH[7], for its services. The said trademark in relation to the similar services, would deceive and cause confusion vis-à-vis the respondents‟ trademarks in normal course of business activities, as the services in question, are same/allied/cognate, and also due to the deceptive similarity with the mark of the petitioner.
5.14 Thus, the present petition has been filed, seeking cancellation of the registered trademark of the respondents.
6. The respondent no. 1 has been proceeded ex-parte, as none has appeared for the respondent no. 1, despite service.
7. Learned counsel appearing for the petitioner has drawn the attention of this Court to the various documents to show the user of the petitioner, since long.
8. Attention of this Court has been drawn to the document showing the turnover of the petitioner, to demonstrate that the petitioner‟s services under the mark in question, is widely known.
9. Attention of this Court has also been drawn to the various advertisement and endorsement by various celebrities, to show that the mark of the petitioner is well established and the public in general identifies the said mark as that of the petitioner.
10. Having heard learned counsel appearing for the petitioner, this Court at the outset notes the registration of the mark „MH1‟ in favour of the petitioner dated 14th November, 2008, which is reproduced as under:
11. This Court further notes the certificate of registration of trademark in favour of the petitioner dated 5th October, 2006, for the mark „MH ONE‟, which is reproduced as under:
12. Per contra, with respect to the mark of the respondent, the application was filed only on 4th April, 2017. The certificate of the respondent is reproduced as under:
13. Considering the aforesaid, it is manifest that the registration/user of the petitioner‟s mark, is much prior to that of the respondent.
14. A side by side comparison of the mark of the petitioner and the respondent, is given as under: Petitioner Marks Respondent Marks
15. Perusal of the aforesaid marks makes it evident, that the mark adopted by the respondents, is deceptively similar to the mark of the petitioner. Further, this Court notes that the services provided by both parties are of similar nature, i.e., transmission of various entertainment programs. Further, the target consumer is also similar, i.e., watching the Entertainment and News Channel. Thus, the Triple Identity Test, i.e., similar mark, similar services for which the mark has been registered and similar consumers, is satisfied.
16. This Court notes that the trademark of the respondent being similar to the petitioner‟s trademark, there is high possibility of users with ordinary average intelligence, being led to consider that the services of the respondent are those of the petitioner. The petitioner has been using its mark since long. The respondents have adopted similar mark many years later, clearly in order to encash the goodwill of the petitioner. The impugned trademark in relation to similar services would deceive and cause confusion.
17. This Court in the case of Greaves Cotton Limited Versus Mohammad Rafi and Ors., 2011 SCC OnLine Del 2596, has held as follows: “xxx xxx xxx
16. It is not necessary that in order to constitute infringement, the impugned trademark should be an absolute replica of the registered trademark of the plaintiff. When the mark of the defendant is not identical to the mark of the plaintiff, it would be necessary for the plaintiff to establish that the mark being used by the defendant resembles his mark to such an extent that it is likely to deceive or cause confusion and that the user of the impugned trademark is in relation to the goods in respect of which the plaintiff has obtained registration in his favour. It will be sufficient if the plaintiff is able to show that the trademark adopted by the defendant resembles its trademark in a substantial degree, on account of extensive use of the main features found in his trademark. In fact, any intelligent person, seeking to encash upon the goodwill and reputation of a well-established trademark, would make some minor changes here and there so as to claim in the event of a suit or other proceeding, being initiated against him that the trademark being used by him, does not constitute infringement of the trademark, ownership of which vests in some other person. But, such rather minor variations or distinguishing features would not deprive the plaintiff of injunction in case resemblance in the two trademarks is found to be substantial, to the extent that the impugned trademark is found to be similar to the registered trademark of the plaintiff. But, such malpractices are not acceptable and such a use cannot be permitted since this is actuated by a dishonest intention to take pecuniary advantage of the goodwill and brand image which the registered mark enjoys, it is also likely to create at least initial confusion in the mind of a consumer with average intelligence and imperfect recollection. It may also result in giving an unfair advantage to the infringer by creating an initial interest in the customer, who on account of such deceptive use of the registered trademark may end up buying the product of the infringer, though after knowing, either on account of difference in packaging etc. or on account of use of prefixes or suffixes that the product which he is buying is not the product of the plaintiff, but is the product of the defendant. xxx xxx xxx” (Emphasis Supplied)
18. Thus, it is manifest that the competing marks, when compared together, are deceptively similar.
19. Considering the position of the law, it is clear that the adoption and use of the trademark „MH7‟ by the respondent in respect of the similar services, i.e., Entertainment and News Channel, is deceptively similar to the petitioner‟s registered trademark, i.e., MH[1]. The impugned registration is wrong and illegal, as there is no originality in the same. The impugned mark of the respondents has substantially been copied from the registered trademark of the petitioner. In that view of the matter, it is evident that the registration of the impugned mark is wrongly appearing on the register of trademarks and is liable to be removed.
20. In view of the aforesaid detailed discussion, the trademark of the defendant, i.e., „MH7‟ bearing trademark registration no. 3521319 in Class 35, is hereby cancelled.
21. The Registrar of Trade Marks is directed to take necessary steps to rectify its register and issue appropriate notification, in that regard.
22. The Registry is directed to supply a copy of the present order to the Trade Marks Registry, at E-mail: llc-ipo@gov.in, for compliance.
23. The present petition accordingly stands disposed of, with the aforesaid directions. MINI PUSHKARNA, J NOVEMBER 20, 2024