Living Media India Limited v. Zee Media Corporation Limited

4.17 Further, in Umang Diaries Ltd. v. Registrar of Trade Marks, CA(COMM.IPD-TM) No. 145/2021 and Rajni Gupta Trading as Guru Kripa Chemico Industries v. The Registrar of Trade Marks, C.A.(COMM.IPD-TM) No. 33/2021, this Court has held that the Trade Mark which is suggestive in nature and does not relate to or describes the goods for which the subject mark is applied is not descriptive. As the Plaintiff’s programme does not show ‘World Philosophies’, ‘Worldly Experiences’, ‘Material Values’ or ‘Ordinary Life’, but only the ‘World News’ which is not translated to ‘DUNIYADARI’.

4.18 It is settled position of law that even generic words are worthy of protection as held in following cases: a) Info Edge (India) Pvt. Ltd. v. Shailesh Gupta, 2002 (24) PTC 355 (Del.); b) Heinz Italia & Anr. v. Dabur India Ltd., (2007) 6 SCC 1; c) Anchor Health & Beauty Care Pvt. Ltd. v. Procter & Gamble Manufacturing (Tianjin) Co. Ltd. & Ors., 2014 SCC OnLine Del 2968;

4.19 The Subject Mark has acquired distinctiveness which is evident by the large viewership. The Defendant has not been able to provide any details about the viewership of the Defendant. To acquire distinctiveness, it is not necessary to be in the market for a long time as held in: a) Century Traders v. Roshan Lal Duggar, PTC Suppl, (1) (720) (Del) (DB). b) Ishi Khosla v. Anil Aggarwal, ILR (2007) I Delhi 615. c) ITC Ltd. v. Britannia Industries Ltd., 2016 SCC OnLine Del

5004.

4.20 The adoption and use of Impugned Mark by the Defendant for a similar genre having the same target audience based in North Indian states speaking both Hindi and Punjabi languages such as Himachal Pradesh, Punjab, Haryana and Delhi show that the Defendant has adopted the Impugned Mark with mala fide intent to unlawfully exploit the goodwill, reputation and distinctiveness acquired by the Subject Mark.

4.21 In Midas Hygiene Industries (P) Ltd. & Anr. v. Sudhir Bhatia & Ors., (2004) 3 SCC 90 the Supreme Court held that mere delay in filing the suit for injunction is not a sufficient ground to defeat the grant of injunction, if prima facie it appears that the adoption of mark is itself dishonest.

4.22 In Vishesh Films Pvt. Ltd. v. Super Cassettes Industries Ltd., 2024 SCC OnLine Del 6117, this Court held that Hindi word ‘Aashiqui’ (meaning romance / love) for a film was not generic but a suggestive mark that could be protected as it did not exhaustively describe the film’s full narrative. Accordingly, the title ‘Tu Hi Aashiqui’/ ‘Tu Hi Aashiqui Hai’ was found deceptively similar to ‘Aashiqui’ because of phonetic and conceptual similarities and the likelihood of confusion / misleading the public.

4.23 In view of the above, the Plaintiff is entitled to injunctions as prayed for in this Application.

SUBMISSIONS ON BEHALF OF THE DEFENDANT:

5. The learned Counsel for the Defendant submitted that: 5.[1] The Defendant is one of India’s largest and most influential news networks with a commanding presence across television and digital platforms. Over the years, the Defendant has emerged as a trailblazer in journalism delivering credible, fearless and responsible journalism to more than 600 million viewers across India and abroad. 5.[2] The Defendant is a prominent media leader with a diverse range of global, national, and regional news channels that reach hundreds of millions of viewers across India every day, representing all communities, languages, and regions. 5.[3] The Subject Mark, over which the Plaintiff seeks to assert exclusive rights, is a generic and commonly used term referring to ‘Worldliness’, ‘Worldly Affairs’, or ‘The Ways of the World’. The expression ‘DUNIYADARI’ is integral to everyday vocabulary and is widely recognized in the Hindi, Marathi, and Punjabi language. Accordingly, it cannot be exclusively appropriated by any individual or entity for use in films, shows, or news broadcasting. 5.[4] It is settled position that generic, descriptive and commonly used expressions, being publici juris, are incapable of attaining distinctiveness and / or serving as exclusive source identifiers so as to confer monopoly rights upon any party. The Defendant is protected under Sections 30 (1) and 30 (2) (a) of the Trade Marks Act, which is clearly an exception to Section 29 of the Trade Marks Act as held in a) Biswaroop Roy Choudhary v. Karan Johar, 2006 SCC OnLine Del 828; b) TV 18 Broadcast Limited v. Bennett Coleman and Company Limited, 2023 SCC OnLine Del 3837; c) Chaurang v. Shemaroo Entertainment Limited & Ors., 2020 SCC OnLine Bom 5524; d) Eventus India LLP v. Manish Gajjar, COM IPR SUIT (L) NO. 30687/2024, Bombay High Court; e) Yatra Online Limited v. Mach Conferences & Events Limited, 2025 SCC OnLine Del 5610; f) Wow Momo Foods Private Limited v. Wow Burger & Anr., 2025 SCC OnLine Del 5965; g) Living Media India Ltd. v. Alpha Dealcom Pvt. Ltd. & Ors., 2016 SCC OnLine Del 815; h) Marico Limited v. Agro Tech Foods Limited, MANU/DE/3131/2010; i) Pernod Ricard India Private Limited and Another v. Karanveer Singh Chhabra, 2025 SCC OnLine SC 1701; j) IHHR Hospitality v. BESTECH India Limited, MANU/DE/2157/2012. 5.[5] The Plaintiff is not the originator, inventor or first adopter of the Subject Mark. The Mark ‘DUNIYARDARI’ was already in prior and extensive use by the Defendant, its group companies and several independent creators across the media and news industry. Accordingly, the Plaintiff is merely an imitator or pirate of a pre-existing, commonly used expression and is not entitled to protection as held in Elder Projects Ltd & Anr v. Elder Pharmacia LLP & Ors., 2019 SCC OnLine Del 7914. 5.[6] The word ‘DUNIYADARI’ is used for various films, serials, new shows, series etc. In fact, Defendant is the prior adopter and user of the Trade Mark ‘DUNIYADARI’ through its erstwhile group company, ZEE Entertainment Enterprises Ltd. A Marathi film by the name ‘DUNIYADARI’ written in Devanagari script was released in 2013. The said film is available on the platform Jio Hotstar: www.hotstar.com/in/movies/ duniyadari/ 1271323010 5.[7] Thus, the Defendant is the prior user of the word ‘DUNIYADARI’ by virtue of the above film through its erstwhile group company and the said Mark ‘DUNIYADARI’ is extended to news broadcasting. Hence, Defendant is protected under Section 34 of the Trade Marks Act. 5.[8] In 2015, another show called ‘DIL DOSTI DUNIYADARI’ in Marathi was conceptualized and aired by the Defendant’s group company and sister concern, ZEE Entertainment Enterprises Ltd. and more than 256 episodes of the said serial were aired on ZEE Marathi TV Channel and is also available on digital media including YouTube. 5.[9] In 2019, the erstwhile group company and sister concern of the Defendant, ZEE Entertainment Enterprises Ltd., conceptualized yet another show called ‘DUNIYADARI’ in Marathi, which was first aired on ZEE Marathi. The said series has 38 episodes and is available on digital media platforms.

5.10 The Plaintiff holds a registration only in respect of the device of the Subject Mark, which comprises of various artistic, graphical and stylistic elements taken together as a whole. Accordingly, under Section 17 of the Trade Marks Act, the Registration of the composite mark confers exclusivity only in respect of the trade mark as a whole. No exclusive rights can be claimed over individual elements of such Mark, particularly where such elements are non-distinctive, descriptive or common to trade. The Plaintiff does not have registration over the word mark ‘DUNIYADARI’. Accordingly, the Plaintiff cannot carve out and monopolize the generic expression ‘DUNIYADARI’ from its registered device / label as the law expressly disentitles exclusivity over any part of a composite mark that is neither separately applied for nor inherently distinctive as has been held in: a) Bhole Baba Milk Food Industries Ltd v. Parul Food Specialities Pvt. Ltd., MANU/DE/4050/2011; b) Vardhman Buildtech Pvt. Ltd. & Ors. v. Vardhman Properties Ltd., MANU/DE/4050/2011; c) Vasundra Jewellers Pvt. Ltd. v. Kirat Vinodbhai Jadvani & Anr., 2022 SCC OnLine Del 3370; d) Three-N-Products Private Limited v. Emami Limited, MANU/WB/0011/2010.

5.11 There is no infringement of the Subject Mark as the Plaintiff does not hold exclusivity over the word ‘DUNIYADARI’, which is generic, descriptive and a part of common parlance for news broadcasting.

5.12 In any event, the comparison of the Subject Mark with the Impugned Mark shows that the trade dress, font, layout, background and the thematic concept adopted by the Defendant are entirely different from those of the Plaintiff. Therefore, there cannot be any likelihood of confusion or deception in the minds of an average consumer of ordinary intelligence.

5.13 Further, the word ‘DUNIYADARI’ is common to trade and commonly used by various news, television and movies as under:  Pudhari News, a Marathi News Channel has a segment titled ‘DUNIYADARI’ written in Devanagari script: https://www.youtube.com/watch?v=WgxD8Oz3Ysw  ‘DUNIYADARI’ is a Gujarati language film released in 2017:  Indian Express Newspaper and online news portal operate a similar news segment under the name ‘DUNIYADARI’: https://indianexpress.com/about/duniyadari/  Independent website namely duniyadari.co.in which cover Hindi News and operates under generic title ‘DUNIYADARI’ written in Devnagari script as under:

5.14 The Defendant has adopted the Impugned Mark with bona fide intent for a regional news programme catering specifically to Punjabi speaking audience. A mere use of a common and descriptive expression in a different distinctive form, context and market segment does not, by itself, give rise to any cause of action. Target audience is clearly distinct and distinguishable. Therefore, there is no realistic likelihood of confusion, deception or misrepresentation between the programmes using the Subject Mark and the Impugned Mark.

5.15 The script, concept, and overall presentation of the Defendant’s programme are entirely different from that of the Plaintiff. There are significant differences in creative expression coupled with the distinct branding of the Defendant’s channel, negate any possibility of confusion or deception amongst viewers.

5.16 During the examination of the application for registration of the Label Mark ‘DUNIYADARI’ under No. 5811033 in Class 41, an objection under Section 11 of the Trade Marks Act was raised citing a similar trade mark as a conflicting trade mark, in response to which the Plaintiff asserted that the two marks in question were not similar and completely different. The Plaintiff cannot change its position at convenience and is legally stopped from doing so under the doctrine of approbation and reprobation as held in: a) S.K. Sachdeva & Ors v. Shri Educare Ltd. & Ors., MANU/DE/0182/2016. b) Raman Kwatra v. KEI Industries Limited, 2023 SCC Online Del 38.

5.17 The Plaintiff has suppressed and concealed the material fact that the Plaintiff has also filed an application for registration of the Subject Mark under application No. 5811029 in Class 9 and application No. 5811032 in Class 32 which are presently under objections. The registration of the Subject Mark under application Nos. 5811030, 5811031 and 5811033 were secured on false pretext and wrongly registered and are liable to be cancelled as they are wrongly remaining on the Register of Trade Marks.

5.18 The judgments cited by the Plaintiff are not applicable for the reasons cited against each of the respective judgment as under: Sl. No. Judgments Reasons for non-applicability 1 Info Edge (India) Pvt. Ltd. (supra) A domain name is already a qualified mark since it has.com (TLD) affixed to it. It cannot apply to the facts of the present case as there is no TLD affixed to the word DUNIYADARI.

2 Heinz Italia & Anr. (supra) This judgment has already been dealt with and answered in Marico Judgment (supra) in para 8 stating that an undisturbed period of 60 years is a long period to acquire distinctiveness.

3 Anchor Health & Beauty Care Pvt. Ltd. (supra) In Paragraph 18, it was noted that defendant had also applied for same trade mark and hence cannot claim the plaintiffs trade mark to be descriptive. In present case defendant has not filed any such application.

4 United Biotech Pvt. Ltd. (supra) Already dealt in Vardhman judgment (supra) in Paragraph 5 Ticona Polymers, Inc. (supra) It was observed that COOLPOLY is not a common word and has no etymological meaning. It was also observed in Paragraph 15 that COOLPOLY has no meaning. Hence, this case is not applicable to the facts of the present case. 6 M/s South India Beverages Pvt. Ltd. (supra) Already dealt in Vasundhara judgment (supra) in Paragraph 32.

7 Midas Hygiene Industries (P) Ltd. & Anr. (supra) Plaintiff has no right over the word mark ‘DUNIYADARI’, hence this judgment is not applicable as there is no infringement in any event.

5.19 In view of the above, the present Application deserves to be dismissed.

6. During the course of submissions, without prejudice to the above submissions made on behalf of the Defendant, the learned Counsel for the Defendant proposed a revised Label / Device as under for consideration of this Court:

REJOINDER SUBMISSIONS ON BEHALF OF THE PLAINTIFF:

7. The learned Counsel for the Plaintiff submitted that: 7.[1] The general meaning of ‘DUNIYADARI’ is ‘Worldliness’, ‘Worldly Affairs’ and ‘The Ways of the World’. However, when ‘DUNIYADARI’ is used for ‘World Affairs’, it is not having generic meaning and it is capable of and, in fact, has acquired distinctiveness and is associated with the Plaintiff. All the prior uses of ‘DUNIYADARI’ were in respect of ‘Worldliness’, ‘World Affairs’ and ‘The Ways of the World’ and not ‘World Affairs’. The show using the subject Mark is for global current affairs and not for practical or world experience. Therefore, the Subject Mark is not generic or common to the trade and is entitled to be protected under the Trade Marks Act. 7.[2] The contention of the Defendant that the Defendant is the prior user of the Mark ‘DUNIYADARI’ is incorrect as admittedly, the Defendant has stated that the prior use of the Mark ‘DUNIYADARI’ was by the erstwhile group entity of the Defendant and not by the Defendant itself. Further, the Defendant has not produced any evidence to show that the Defendant has any use of the Mark ‘DUNIYADARI’ prior to the use by the Plaintiff or there is any assignment of the rights by the erstwhile group entity of the Defendant in favour of the Defendant. Hence, the Defendant cannot claim to be a prior user of Mark ‘DUNIYADARI’. 7.[3] The judgment of Biswaroop Roy Choudhary (supra) is not applicable as in that case, the plaintiff was termed as a squatter and had failed to prove secondary meaning due to lack of substantial commercial use and publicity. However, in the instant case, the Plaintiff has demonstrated active, continuous and substantial use of the Mark ‘DUNIYADARI’ since 2020 including actual broadcasting, publication and revenue generation. 7.[4] The case of Bhole Baba Milk Food (supra) the mark in question was ‘KRISHNA’ for milk products and the Court denied an absolute monopoly on the word per se as the word ‘KRISHNA’ referred to a Hindu deity and is a matter of public worship. Further, Lord Krishna is traditionally and culturally associated with milk, butter and dairy products. Whereas, in the present case, the consumer must make an intellectual leap from ‘Worldliness’ (practical experience) to ‘World News’ (journalistic content). It is also held in Himalaya Drug Company (supra), a suggestive mark is entitled to protection. 7.[5] In IHHR Hospitality (supra) relied upon by the Defendant, the dispute was over different classes of goods / services and the mark ‘ANANDA’ was a well-known mark. However, the mark ‘ANANDA’ was held to be a Sanskrit word meaning ‘bliss’ or ‘joy’ and the same being a common, laudatory word often used in titles, especially those related to spiritual, wellness or residential project, the Court limited the exclusivity for such common word. However, ‘DUNIYADARI’ is at best suggestive and not a common, generic name for a news programme and has acquired distinctiveness within the news industry due to its unique editorial style and the Impugned Mark is identical and in the same line of business. 7.[6] The decision of Vardhman Buildtech (supra) relied upon by the Defendant is also not applicable to the facts of this case as ‘Vardhman’ is a common, quasi-personal / trade name used by numerous entities across various industries especially those founded by Jain community. Therefore, the said mark was found to be having low inherent distinctiveness requiring higher proof of well-known status for a monopoly. In the present case, ‘DUNIYADARI’ is a suggestive Hindi word, which is applied arbitrarily to a distinct service. 7.[7] In Marico Limited (supra), the marks ‘LOSORB’ and ‘LO-SORB’ were held to be descriptive of the good’s characteristic i.e., the oil’s ability to absorb less oil during frying. Therefore, the Court held that no party can claim exclusive ownership over descriptive terms that merely indicate the character or quality of the product as it goes against the public interest. The reliance by the Defendant on this case is misconceived as the Mark ‘DUNIYADARI’ for a news programme is not descriptive but, at best, a suggestive Mark. As both the Subject Mark as well as the Impugned Mark are identical and being used for the same domain of news / media, the likelihood of source confusion is extremely high irrespective of the main channel. 7.[8] In Yatra Online (supra), this Court held that if a word describes the goods or services, the same is not a valid trade mark. ‘YATRA’ was found to be synonym for travel and, therefore, the monopoly over it was refused. However, the Mark ‘DUNIYADARI’ is abstract, suggestive and arbitrary because it requires the consumer to use imagination to connect with a specific product. Therefore, the decision of Yatra Online (supra) is not applicable in the facts of the present case. 7.[9] In Living Media (supra), the word ‘TODAY’ was held to be descriptive term for a news service as it signifies the current day’s events. The Mark ‘DUNIYADARI’ is not descriptive of news. Therefore, Living Media (supra) will not help the case of the Defendant.

7.10 Similarly, in Pernod Ricard (supra), the Supreme Court dealt with the marks ‘BLENDER’S PRIDE’ in relation to whiskey and found to be descriptive or generic for the product. However, the Mark ‘DUNIYADARI’ is not a necessary trade term for news channels unlike the descriptive or generic term in Pernod Ricard (supra). The Mark ‘DUNIYADARI’ has acquired a secondary meaning as a title of a show and, thus, it is inherently more distinctive than the product.

7.11 The Elder Projects (supra) case concerned the use of the word ‘ELDER’ in the pharmaceutical and healthcare business. ‘ELDER’ is a common English dictionary word and is highly descriptive and suggestive of age, seniority or healthcare for the aged. Accordingly, the same was considered as generic and common to trade as it directly described the target consumer group or the company’s objective. The said decision was based on the long-held legal principle that no single entity can monopolize a word that is common to trade or describes a class of goods / services. In contrast, the Mark ‘DUNIYADARI’ is not a necessarily descriptive term for a news programme and does not directly describe the product and only suggests a concept or theme. Therefore, the restrictive principles applied in the case of Elder Projects (supra) are not applicable to the unique facts of this case.

7.12 In S.K. Sachdeva (supra), the mark ‘SHRI RAM’ was considered in the highly competitive and populated field of education. The common and generic nature of the word ‘SHRI RAM’, which represents a Hindu deity and has been extensively used by various educational institutions dating back to 1923, was found to be coexisting as a formative part of many educational institutions and could not be monopolized. In stark contrast, the Mark ‘DUNIYADARI’ is not a religious or widely generic name that is common to the news broadcasting trade. Hence, this case also does not help the Defendant.

7.13 In Raman Kwatra (supra), it was held that a prima facie infringement under section 29 (2)(3) may not lie when a similar mark used for different goods / services. If the proprietor of a mark, during the trademark registration process or examination, has made assertions before the Trade Marks Registry about dissimilarity / no likelihood of confusion with a cited mark in order to get registration, then they may be estopped from later taking a contradictory stand in infringement proceedings. This principle is based on consistency and fairness and not the doctrine of approbate and reprobate. The Plaintiff in the present case has not contradicted its earlier stand taken before the Trade Marks Registry as the Subject Mark and the Impugned Mark are identical for the same class of service.

7.14 The reliance placed by the Defendant on George (supra) is also distinguishable on the nature of the legal right asserted as the same was an action for passing off filed by a foreign entity with no significant physical presence in India. However, the present case is primarily an action for infringement of the Subject Mark, which is registered in India and having statutory rights under the Trade Marks Act.

7.15 Even the revised Logo / Label proposed by the Defendant is not acceptable to the Plaintiff as the same is still using the Mark ‘DUNIYADARI’ and has the globe as the background in the Logo / Label.

7.16 In view of the above, the submissions made in support of this Application are reiterated and the interim injunction sought by the Plaintiff may be granted.

ANALYSIS AND FINDINGS

8. The present case involves the Suit for infringement and passing off of the Subject Mark which is registered as a Device Mark in Classes 16, 35 and 41. The Plaintiff has contended that the Plaintiff is a prior user since 2020 of the Subject Mark for its news programme titled as ‘DUNIYADARI’, which caters to Hindi / Punjabi speaking North-Indian audience.

9. The Plaintiff is aggrieved by the use of Impugned Mark by the Defendant for the news programme on its regional news channel namely ‘Zee Punjab Haryana Himachal’. The Plaintiff has contended that the use of the Impugned Mark amounts to infringement of the Subject Mark as the Defendant follows similar programme format by using the Impugned Mark. Further, the Impugned Mark copies the overall concept and adopts near identical colour scheme. It is also contended by the Plaintiff that the Defendant has adopted the same concept of showing the World / Global news while covering the topics / issues of international interests. Even the primary platform for both the news programmes is YouTube and other social media platforms. The Trade Dress of the Subject Mark is copied while using the Impugned Mark as the sky, the globe, the clouds, the flags / the monuments of various countries with the Mark ‘DUNIYADARI’ written in yellow font are deceptively similar. Even the segment is the same as both the programmes target the North-Indian Hindi / Punjabi speaking viewers. There is a phonetic similarity between both the Subject Mark and the Impugned Mark as both are pronounced as ‘DUNIYADARI’. The dominant element of the Subject Mark as well as the Impugned Mark is the word ‘DUNIYADARI’. Admittedly, the usage of the Subject Mark is since 05.03.2020 whereas, the Impugned Mark is in use since October 2024.

10. In view of the above, the Plaintiff has sought injunction against the Defendant from use of the Impugned Mark for its news programme on the ground of infringement and passing off.

11. To determine whether the Plaintiff is entitled to ad-interim injunction during the pendency of this Suit, the following Issues are required to be considered: i. Whether the Subject Mark is generic and descriptive in nature? ii. Whether the Subject Mark has acquired distinctiveness? iii. Whether the Subject Mark is common to the trade or publici juris? iv. Whether the Plaintiff is a pirator and a subsequent user of the Subject Mark? Whether the Subject Mark is generic and descriptive in nature?

12. The Plaintiff has contended that the Subject Mark is not generic or descriptive as the general meaning of the word ‘DUNIYADARI’ is ‘Worldliness’, ‘Worldly Affairs’ and ‘The Ways of the World’. However, these meanings do not describe the news programme being aired by the Plaintiff.

13. A common or generic term according to Section 9 of the Trade Marks Act means ‘commonly used word in local language, which describes qualities of goods or services and words customary in trade practices’. As the Mark ‘DUNIYADARI’ does not describe the nature of services rendered by the Plaintiff i.e., world news it requires a viewer to make an intellectual leap from ‘Worldliness’ to ‘World News’ to make the Subject Mark generic or descriptive. The Cambridge dictionary describes the word ‘Worldliness’ as the quality of being practical and having a lot of experience of life. The Mark ‘DUNIYADARI’ is at best suggestive as it is a unique Mark that does not explicitly say or identify good or service but rather makes reference to certain aspects of it. In Himalaya Drug (supra), Umang Dairies (supra) and Rajni Gupta (supra) it is held that the suggestive marks are capable of being registered. The Plaintiff’s programme does not show ‘World Philosophies’, ‘Worldly Experiences’, ‘Material Values’ or ‘Ordinary Life’, but only ‘World News’, which is not translated to ‘DUNIYADARI’.

14. The Defendant, however, has contended that the term ‘DUNIYADARI’ is a common word used in Hindi, Marathi and Punjabi and forms part of everyday vocabulary and is incapable of acquiring any distinctiveness. Being descriptive and generic, it cannot be monopolized by any single entity or person. The Defendant is protected under Sections 30(1) and 30(2)(a) of the Trade Marks Act, which is clearly an exception to Section 29 of the Trade Marks Act. The generic and descriptive terms cannot function as trade marks without distinctiveness as held in Biswaroop Roy Choudahary (supra), TV 18 Broadcast (supra), Yatra Online (supra), Wow Momo (supra), Living Media (supra), Marico Limited (supra), Pernod Ricard (supra) and IHHR Hospitality (supra).

15. In view of the above submissions, it is clear that the Mark ‘DUNIYADARI’ is a common word used to describe the quality of being practical and having experience of the ‘Worldly Affairs’. However, the same is not descriptive of the service being used by the Plaintiff. It is not even the case of the Defendant that the Defendant is using the Impugned Mark in a descriptive manner. The Defendant contends that the meaning of the word ‘DUNIYADARI’ is ‘Worldliness’ ‘World Affairs’ or ‘The Ways of the World’, however, the same does not describe the service of news programme, which is being aired by both the Plaintiff and the Defendant.

16. Therefore, the question arises as to whether the programme of news can be described by the Mark ‘DUNIYADARI’. As the Mark ‘DUNIYADARI’ does not describe the quality of the goods or services being provided by the Plaintiff as well as the Defendant, the same cannot be termed as generic or descriptive in nature. The Plaintiff agrees that at best, the Mark ‘DUNIYADARI’ is suggestive in nature as it indicates some of the aspects of the service being ‘World News’. It indicates that the news segment using the Mark 'DUNIYADARI' would be relating to the ‘World News’ as it uses the word ‘DUNIYA’, which means the ‘World’. Therefore, the Mark ‘DUNIYADARI’ would get protection only if it does acquire distinctiveness.

17. The Plaintiff has registration of the Subject Mark in respect of the composite Device / Label Mark, ‘ ’, and not the Word Mark ‘DUNIYADARI’. The Plaintiff has not even applied for the Word Mark ‘DUNIYADARI’. Accordingly, the Subject Mark has to be seen as a whole and the Anti-dissection Rule will prohibit dissection of the composite Mark into individual components as per Section 17 of the Trade Marks Act.

18. The Plaintiff has contended that the Mark ‘DUNIYADARI’ is dominant part of the Subject Mark and, therefore, is protected even though the Subject Mark is registered as a Label Mark as held in United Biotech (supra), Tikona Polymers (supra) and South India Beverages (supra).

19. There is no doubt that the Mark ‘DUNIYADARI’ is prominent part of the Subject Mark, however, there are other aspects of the Subject Mark which includes the sky, the globe, the clouds, the flags / the monuments of various countries. Therefore, the Mark ‘DUNIYADARI’ is not the only element of the Subject Mark that requires protection. Accordingly, the Subject Mark has to be seen as a whole and the Mark ‘DUNIYADARI’ cannot be dissected and seen independently for granting protection. Whether the Subject Mark has acquired distinctiveness?

20. The Plaintiff has contended that the Mark ‘DUNIYADARI’ has acquired distinctiveness due to large viewership. It was also argued that to acquire distinctiveness, it is not necessary that the product has to be in market for a very long time as held in Century Traders (supra), Ishi Khosla (supra) and ITC Limited (supra).

21. However, the Mark ‘DUNIYADARI’ is only one of the elements of the Subject Mark and even considering the viewership relied upon by the Plaintiff and the number of years since the Mark has been in use, the same is not significant as compared to the total population of the States in North- India. The Plaintiff has submitted the details of viewership from the year 2020 to 2025, which ranges between approximately 3.[5] Lakhs to 32 Lakhs views. Hence, it cannot be said that the Mark ‘DUNIYADARI’ has acquired distinctiveness and is a source identifier for the news services of the Plaintiff.

22. Although the Plaintiff has submitted that the Mark ‘DUNIYADARI’ has acquired secondary meaning, prima facie there is no evidence on record to show that the said Mark has lost its original meaning and is exclusively associated with the Plaintiff. The threshold for secondary meaning is very high for Device Marks as held in Yatra Online (supra).

23. Hence, the Mark ‘DUNIYADARI’ has not acquired distinctiveness, and the Plaintiff cannot assert exclusive rights or monopoly over the Mark ‘DUNIYADARI’ by virtue of registration of the Subject Mark and the Mark ‘DUNIYADARI’ being an element of the composite mark.

24. As regards the prior use by the Defendant through its erstwhile group entity, there is no evidence on record to show that the said use can be attributed to the Defendant. Hence, the Defendant is not entitled to take advantage of the prior use by its erstwhile group entity. Whether the Subject Mark is common to the trade or publici juris?

25. Regarding the submission made by the Defendant about extensive third-party use of the term ‘DUNIYADARI’ in the media and news industry, it is a settled law that the Plaintiff is not liable to file a case of infringement against all the insignificant third-party use of the registered Mark. Further, the use of the Mark ‘DUNIYADARI’ is for TV shows, serial and a movie which are distinct from news programme as held in Pankaj Goel v. Dabour India Ltd., 2008 (38) PTC 49 (Del.) (DB). Hence, the Plaintiff is entitled to maintain the present Suit against the Defendant.

26. The Defendant has contended that the Plaintiff is not entitled to approbate and reprobate as held in S.K. Sachdeva (supra) and Raman Kwatra (supra). When a conflicting registered Trade Mark ‘ ’ under No. 2822720 in Class 41 was cited at the time of registration of the Subject Mark under Application No. 5811033 in Class 41 for an objection under Section 11 of the Trade Marks Act, the Plaintiff had asserted that the Subject Mark is not identical to the cited Mark and on the basis of which the registration of the Subject Mark was permitted.

27. The Defendant is correct in its submission that the Plaintiff is not entitled to now seek exclusivity of the Mark ‘DUNIYADARI’, when the Plaintiff itself has clearly distinguished the Subject Mark on the basis of the distinctiveness of the Label being different from the cited Mark. Therefore, the Plaintiff cannot change its position and seek monopoly over the Mark ‘DUNIYADARI’ having taken a position that it is not the same as the previously registered Mark. Whether the Plaintiff is a pirator and a subsequent user of the Subject Mark?

28. The argument of the Defendant that the Plaintiff is a pirator of the Subject Mark due to its extensive prior use cannot be accepted as the Plaintiff has prima facie shown that the Plaintiff was the prior adopter of the Subject Mark for the news segment and all the other previous use were for TV shows, serials and a movie.

CONCLUSION

29. Accordingly, the Subject Mark has to be compared as a whole with the Impugned Mark and by doing so there are various deceptive similarities, which can create confusion with regard to the association between the Subject Mark and the Impugned Mark, when there exists none. There are a number of similarities such as the colour of the font, the sky, the globe in the background, the clouds, the flags / the monuments of various countries around the world, which leads to prima facie conclusion that the Impugned Mark is deceptively similar to the Subject Mark and the Defendant has attempted to come as close as possible to the Subject Mark for the same segment of service.

30. The trade channels for both the Subject Mark and the Impugned Mark are same and also the Class of consumer is identical. Therefore, there is high likelihood of confusion, if the manner in which the Impugned Mark is used for the same service by the Defendant as that of the Plaintiff.

31. A side-by-side comparison between the Impugned Mark and the Subject Mark shows that there are many similarities between the two Marks. The Defendant has proposed a revised Logo / Label by changing the colour of the fonts for the Mark ‘DUNIYADARI’ and removing the flags of various countries. However, the globe behind the Mark ‘DUNIYADARI’ is very similar to the Subject Mark. In any event, the Plaintiff has not accepted the revised Logo / Label suggested by the Defendant.

32. Accordingly, the Defendant is not entitled to use the Impugned Mark, which is deceptively similar to the Subject Mark as the same amounts to clear infringement and passing-off. As the Mark, ‘DUNIYADARI’ is held to be not distinctive, the Plaintiff is not entitled to assert exclusivity / monopoly over the said Mark ‘DUNIYADARI’. However, the Defendant cannot use the Impugned Mark in the same manner, for the same service by using deceptively similar elements of the Subject Mark as the same is likely to create confusion amongst the consumers. Although the Defendant can use the Mark ‘DUNIYADARI’ for its news programme, the same has to be in a manner that is not deceptively similar to the Subject Mark.

33. Accordingly, it is directed that: a. The Plaintiff has no exclusivity over the Mark ‘DUNIYADARI’, which is not descriptive, but is suggestive in nature and has not acquired distinctiveness to be protected independently of the Device Mark ‘ ’. b. The Impugned Mark, ‘ / ’ is held to be deceptively similar and likely to create confusion in the minds of the viewers as it is used for the same service for the same class of consumers on the same trade channels. c. The Defendant, its employees, servants, agents, assignees and officials etc. are restrained from using the Impugned Mark ‘ / ’ for the news programme in any manner which is identical to the Subject Mark ‘ ’ as the same amounts to infringement and / or passing-off.

34. It is clarified that the Defendant is entitled to use the Mark ‘DUNIYADARI’ in the manner which is not identical or deceptively similar to the registered Subject Mark of the Plaintiff and shall not contain any common elements such as the sky, the globe, the clouds, the flags / the monuments of various countries that may cause confusion and deception with the Subject Mark.

35. This Application is disposed of with the aforesaid directions.

TEJAS KARIA, J JANUARY 9, 2026 gsr/ap