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HIGH COURT OF DELHI
CS(COMM) 193/2022 & I.A. 4841/2022
LIVING MEDIA INDIA LIMITED & ANR. ..... Plaintiffs
Through: Mr. Hrishikesh Baruah, Mr. Anurag Mishra, Mr.Kumar Kshitij and Ms. Radhika Gupta, Advs.
Through: Ms. Mamta Rani Jha Mr. Rohan and Ms. Shruttima Ehersa Advs. for D-31
Mr. Deepak Gogia and Mr. Aadhar Nautiyal, Advs, for D-33
JUDGMENT
06.09.2023
1. Plaintiff 1 is the proprietor of the registered trademark, registered in its favour in Class 38 vide Registration No. 1242922 and in Class 41 vide Registration No. 1242921. Plaintiff 1 licensed the aforesaid marks to Plaintiff 2 vide license agreement dated 1 October
2003. Plaintiff 2 runs a well known online news channel under the said mark, and also uses it for its YouTube channel and its social media webpages on Facebook, Instagram and Twitter.
2. Consequent on the aforesaid registrations, the plaintiffs submit that they have devised several marks with the “TAK” suffix, such as 'Yoga Tak', 'Tech Tak', 'Sports Tak', 'Mobile Tak', 'News Tak', 'Astro Tak', 'Duniya Tak', 'Punjab Tak', 'U.P. Tak', 'M.P. Tak', 'Crime Tak', 'Gujarat Tak' etc. Vide order dated 30 March 2022, the directions qua each of the defendants were issued in a tabular fashion, thus: Defendant No. Impugned names Impugned marks Plaintiffs’ Trade Mark(s) and Artistic Work(s) Directions Defendant No. 1 AABTAK NEWS CHANNE L (YouTube Channel)
AABTAK NEWS CHANNEL AAJ TAK Defendant No.1 is a YouTube channel using the name ‘AabTak’. This YouTube channel shall be taken down. Defendant No. 2 Rajasthan TAK (YouTube Channel) Rajasthan TAK AAJ TAK Defendant No.2 is a YouTube channel using the name ‘Rajasthan Tak’. This YouTube channel shall be taken down. Defendant No. 3 Aap TAK (Youtube Channel) Aap Tak AAJ TAK Insofar as Defendant Nos.3, 4, 5, 6, 7 and 8 are concerned, these YouTube channels, Facebook page, and Instagram pages are using the name ‘Aap Tak’. These YouTube channels, Facebook page, and Instagram pages shall be taken down. Defendant No. 4 AapTAK news Channel (Facebook Page) Aaptaknews Channel AAJ TAK Defendant No. 5 Aap Tak News Channel (Instagram Page) Aap TAK News Channel AAJ TAK Defendant No. 6 Aap TAK Network (YouTube Channel) Aap TAK Network AAJ TAK Defendant No. 7 Aap Tak (Facebook Page) Aap TAK AAJ TAK Defendant No. 8 Aap Tak Page) AapTAK AAJ TAK Defendant No. 9 Haryana Tak (Facebook page) Haryana TAK AAJ TAK HARYANA TAK Defendant Nos.[9] and 10 are Facebook page and YouTube channel respectively, using the mark ‘Haryana Tak’. The Facebook page and the YouTube channel Defendant No. 10 Haryana Tak (YouTube channel) Haryana TAK AAJ TAK HARYANA TAK Defendant No. 11 Samay Tak News (Facebook Page) Samay TAK News AAJ TAK Defendant Nos. 11,12,13 and 14 are Facebook page, YouTube channels, and website, using the mark ‘Samay Tak’ and logo which are identical to Plaintiffs’ mark and logo. The Facebook page, YouTube channels, and the website shall be taken down. Defendant No. 12 Samay Tak News (YouTube Channel) Samay TAK News AAJ TAK Defendant No. 13 Samaytakn ews.com (Website) Samay TAK News AAJ TAK Defendant No. 14 Samay Tak (YouTube Channel) Samay TAK AAJ TAK Defendant No. 15 sachtakne ws.com (Website) sachTAKnews.com AAJ TAK No order at this stage.
SAHITYA TAK Defendant No. 16 Sach Tak News (Youtube Channel) Sach TAK News AAJ TAK No order at this stage. Defendant No. 17 Sach Tak News (Facebook page) Sach TAK News AAJ TAK Defendant No. 18 Sach Tak News Page) Sach TAK News AAJ TAK Defendant No. 19 Sach Tak News (Twitter Page) Sach TAK AAJ TAK No order at this stage. News Defendant No. 20 Kal Tak (Facebook Page) Kal TAK AAJ TAK Defendant No.20 is a Facebook page which is using the name ‘Kal Tak’. This Facebook page shall be taken down. Defendant No. 21 Ab Tak TV News Channel (Facebook Page) Ab TAK TV AAJ TAK Defendant Nos.21, 22, 23, 24, 25, 26 and 27 are Facebook pages, Instagram page, website, Twitter page, YouTube channel and Google Play Store mobile application using the name ‘Ab Tak’. These Facebook pages, Instagram page, website, Twitter page, YouTube channel and Google Play Store mobile application * * Defendant No. 22 Ab Tak Breaking News (Facebook Page) Ab TAK Breaking News AAJ TAK Defendant No. 23 abtaktvlive.com (Website) Ab TAK TV India AAJ TAK Defendant No. 24 Ab Tak Tv News Channel Page) Ab TAK Tv AAJ TAK Defendant No. 25 Ab Tak TV News Channel (Twitter Page) Ab TAK Tv AAJ TAK Defendant No. 26 Ab Tak TV News Channel Pvt. Ltd. (YouTube Channel) Ab TAK TV Pvt Ltd AAJ TAK Defendant No. 27 Ab Tak TV Live (Google Play Store Mobile Applicatio n) AAJ TAK * Defendant no. 28 Twitter tak Website ‘AAJ TAK’ ‘ ’ Defendant Nos.28, 29 and 30 are website, twitter page, and Instagram page, using the mark ‘Twitter Tak’. This name would not just be violative of Plaintiff’s rights but also the Defendant No.33’s rights in the mark ‘TWITTER’. The adoption clearly appears to be dishonest. The said website, Twitter page, and Instagram page shall be taken down. Defendant no. 29 Twitter tak twitter page twitter tak ‘AAJ TAK’ ‘ ’ Defendant No. 30 Twitter tak Instagram page ‘AAJ TAK’ ‘ ’
3. Defendants 31 to 36 were directed to effect taking down of the aforenoted webpages of Defendants 1 to 14 and Defendants 20 to 30 and to provide the Basic Subscriber Information (BSI) details of the holders of the said accounts, which has been provided.
4. Defendants 1 to 14 and Defendants 20 to 30 have remained absent from these proceedings.
5. Consequent to providing of the BSI details in respect of Defendants 1 to 30 by Defendants 31 to 36, an amended memo of parties was filed by the plaintiffs representing Defendants 1 to 30 through the BSI details which were provided and process fees was also filed for effecting service on the said defendants. Consequent thereupon, however, Defendants 15 to 19 alone have chosen to prosecute this matter and filed a written statement. There is no response from Defendants 1 to 14 and Defendants 20 to 30.
6. Insofar as Defendants 15 to 19 are concerned, the written statement filed by them merely evokes the principle of anti-dissection, relatable to Section 17(2) of the Trade Marks Act, by urging that, as no separate registration had been obtained by the plaintiffs in respect of the “TAK” suffix of the mark, the plaintiffs could not claim exclusivity only in respect of the said suffix or plead that marks which were common with the plaintiffs only in so far as they used the said suffix were infringing in nature.
7. The judgment of the Division Bench of this Court in South India Beverages Pvt Ltd v. General Mills Marketing Inc.[1] now (2015) 61 PTC 231 constitutes stare decisis on this issue. The decision crafted an exception to the anti-dissection rule by providing that, if a part of a composite mark was dominant, the plaintiffs could plead infringement on the ground that the dominant part of the mark was copied or replicated.
8. The contention of Defendants 15 to 19 in the written statement is that the “TAK” suffix cannot be treated as the dominant part of the plaintiffs’ mark and that, therefore, the plaintiffs could not plead exclusivity of the “TAK” suffix. Once it was determined that the plaintiffs could not plead exclusivity of the “TAK” suffix of the mark, the similarity between the plaintiffs’ mark and the defendants’ marks, they is sought to be submitted in the written statement, vanishes.
9. Mr. Barua, learned Counsel for the plaintiffs submits, per contra, that the plaintiffs have a family of marks, all of which contain the suffix “TAK” and that, therefore, the suffix “TAK” was clearly the dominant, determinative and identifying mark part of the plaintiffs’ marks, which acted as a source identifier of the plaintiffs.
10. There has been no appearance on behalf of Defendants 1 to 14 and Defendants 20 to 30, since inception.
11. They are, therefore, proceeded ex parte.
12. It is clear that, as they use the suffix “TAK” and are also used in respect of services which are analogous, or identical, to the services provided by the plaintiffs, the marks of Defendants 1 to 14 and 20 to 30 are ex facie infringing of the plaintiffs’ registered mark.
13. As Defendants 1 to 14 and Defendants 20 to 30 have not entered appearance in these proceedings and have not chosen to file any written statement, and given the aforesaid facts, I am of the opinion that the suit can straight away be decreed qua the said defendants. No triable issue remains.
14. There shall, therefore, be a decree of permanent injunction, restraining Defendants 1 to 14 and Defendants 20 to 30 from using any of the marks noted alongside the said Defendants in the table in para 2 supra, or any other mark which is confusingly or deceptively similar to the mark “AAJ TAK”/ of the plaintiffs, either as a word mark or as a logo, or any other mark which is confusingly similar to the plaintiff’s marks, for running any online channel or for any other goods or services which may be regarded as allied or cognate thereto.
15. The suit stands decreed, qua Defendants 1 to 14 and 20 to 30 in the aforesaid terms.
16. Insofar as Defendants 15 to 19 are concerned, they have remained absent on the last date of hearing and have not appeared today either, despite the matter having been called out twice.
17. I have heard Mr. Barua, learned Counsel for the plaintiffs and have also perused the written statement filed by the said defendants.
18. Defendants 15 to 19, in their written statement, do not urge any ground which would entitle them to be treated differently from Defendants 1 to 14 and 20 to 30. The only ground taken by Defendants 15 to 19 in their written statement is that the plaintiffs could not dissect the registered mark and claim exclusivity over the “TAK” suffix inasmuch as the “TAK” suffix has not been separately registered as a mark. The judgment of a Division Bench of this Court in South India Beverages[1] is a complete answer to the said contention. In South India Beverages[1], the Division Bench of this Court has engrafted an exception to the anti-dissection rule contained in Section 17(2) of the Trade Marks Act, where the common part of the rival marks can be treated as a dominant part. In that event, the Division Bench has held that, on the basis of commonality of the dominant part of the marks, the Court can arrive at a finding that the marks are deceptively similar to each other. The Court has also observed that, by so holding, the Court is not transgressing the mandate of Section 17 of the Trade Marks Act, as the dominant part of the rival marks is being used as representative of the marks as a whole.
19. In the present case, as has already been noted, the plaintiffs have a family of marks all of which used the “TAK” suffix. Clearly, therefore, the “TAK” suffix has become a source identifier of the marks of the plaintiffs and is, therefore, the dominant part of the marks. Applying the principles enunciated in South India Beverages[1], therefore, the impugned mark of Defendants 15 to 19 is also liable to be regarded as prima facie infringing of the plaintiffs’ registered mark as are the remaining impugned marks in the present case. The colour scheme, and the font used in the two marks are also nearly identical. A lay viewer who views the channel, or social media webpage, of Defendants 15 to 19, is bound to regard it as another channel of the plaintiffs.
20. However, as Defendants 15 to 19 have filed a written statement, it is not possible for this Court to straight away decree the suit against them under Order VIII Rule 10 of the Code of Civil Procedure, 1908 (CPC).
21. In the circumstances, the ad interim injunction granted by this Court vide order dated 30 March 2022 shall stand extended to the mark of Defendants 15 to 19 as well.
22. Defendants 15 to 19 are directed, therefore, to take down the websites/social media pages in which the infringing mark figures, of which the following URLs have been provided in para 58 of the plaint.
┌──────────────────────────────────────────────────────────────────────────────────────────────────────┐ │ of the plaint. │ │ Sl. NAME WEB LINKS (URLs) INFORMATI │ │ No AND ON │ │ . LOGO │ ├──────────────────────────────────────────────────────────────────────────────────────────────────────┤ │ 15. https://sachTAKnews.com/ Website │ │ 16. https://www.YouTube.com/c/SACHTAK YouTube │ │ NEWS Channel │ │ 17. https://www.facebook.com/SachTANews Facebook │ │ / Page │ │ 18. https://www.instagram.com/sachTAKno1 Instagram │ │ / Page │ │ 19. https://twitter.com/SachTAKno1 Twitter Page │ │ 23. In the event that Defendants 15 to 19 fail to take down the │ │ aforenoted web pages and social media handles within a week from │ │ today, Defendants 31 to 34 are directed to do so pending disposal of │ │ the suit. │ │ 24. IA 4841/2022 which survives only qua Defendants 15 to 19 │ │ Signature Not Verified │ │ CS(COMM) 193/2022 Page 22 of 23 │ │ Digitally Signed │ │ By:HARIOM │ │ stands disposed of accordingly. │ └──────────────────────────────────────────────────────────────────────────────────────────────────────┘
25. The suit stands decreed qua Defendants 1 to 14 and Defendants 20 to 30 in terms of paras 14 and 15 supra.
26. Let a decree sheet be drawn up accordingly.
27. Mr. Barua submits that he would move an appropriate application under Order XIIIA of the CPC as amended by the Commercial Courts Act, for decreeing of the suit qua Defendants 15 to 19 as well.
28. Accordingly, re-notify on 9 October 2023.
29. Mr. Gogia points out, at this juncture, that Defendant 33, which so far has been represented as Twitten Inc. would have to be represented as X Corp., as Twitter Inc has merged with X Corp. The Memo of Parties filed with the suit shall be deemed to have been amended accordingly.
C.HARI SHANKAR, J SEPTEMBER 6, 2023