Full Text
HIGH COURT OF DELHI
C.O. (COMM.IPD-TM) 117/2021 BENNET, COLEMAN AND COMPANY LIMITED..... Plaintiff
Through: Ms. Mamta Rani Jha and Mr. Shakti Nair and Ms. Pragya Jain, Advs.
Through: None
JUDGMENT
14.02.2023
1. This rectification petition, under Section 571 of the Trade Marks Act 1999, was initially filed before the learned Intellectual Property Appellate Board (the learned IPAB) as IPAB Case No. ORA/92/2020/TM/DEL, seeking rectification of the register of Trade Marks by removal, from the services in respect of which the mark „VNOW/ ‟ stands registered in favour of Respondent 1, „Transmission, Reception & Sharing Of Downloadable Digital Data & Content, Electronic Communication Services, Providing Access To GPS/Lbs/Other Navigation Services, Access To Electronic
57. Power to cancel or vary registration and to rectify the register. – (1) On application made in the prescribed manner to the High Court or to the Registrar by any person aggrieved, the Registrar or the High Court, as the case may be, may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto. (2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the High Court or to the Registrar, and the Registrar or the High Court, as the case may be, may make such order for making, expunging or varying the entry as it may think fit. Communication Network, Web Casting/Online/ Offline Services For Transmission Or Reception Of Audio/Video/Data Files & Content, Multimedia, Access To Internet/Web Services/Tv/ Telecommunication Services Via Telecommunication Equipment Or Smart Phones Or Mobile Phones Or Wearable Devices Or Smart Watches Or Watches Or Wireless (2g/3g/4g/5g/7g/WIFI/WIMAX/VSAT) Enabled Devices Or GPS/ GPRS Enabled Device, Bluetooth Enabled Devices, Tablet Computer Transmission, Reception, Sharing & Communication Of Software Or Computer Applications Or Mobile Applications Or Smart Devices Applications Or Audio Or Video Or Downloadable Digital Content Or Web/ Internet /Online Data Sharing‟.
2. Notice was issued on the petition, by the learned IPAB, on 28th September 2020. Thereafter, the matter was listed before the learned IPAB on 23rd March 2021. Consequent to the enactment of the Tribunals Reforms Act, 2021 and transfer of the matter to this court, the petition was listed before this Court on 14th January 2022, 26th April 2022, 11th July 2022, 6th September 2022, 28th October 2022, 14th December 2022 and 16th January 2023.
3. Respondent 1, despite service by both before the learned IPAB as well as this Court, has remained continuously absent. As such, the court has heard Ms. Mamta Rani Jha, learned Counsel for the petitioner, and, having perused the record, proceeds to dispose of the present petition.
4. The petitioner is the registered proprietor of the following trade marks:
┌──────────────────────────────────────────────────────────────────────────────────────────────────────┐ │ Sl. No. Trade Marks Services covered under the trade mark │ ├──────────────────────────────────────────────────────────────────────────────────────────────────────┤ │ 1. TIMES NOW TELEVISION AND RADIO BROADCASTING, │ │ CABLE TELEVISION BROADCASTING, │ │ NEWS AGENCIES PROVIDING │ │ TELECOMMUNICATIONS AND USER │ │ ACCESS TO A GLOBAL COMPUTER │ │ NETWORK AND SERVICES, │ │ TELECOMMUNICATION AND │ │ COMMUNICATION BY COMPUTER │ │ TERMINALS, CELLULAR TELEPHONE │ │ SERVICES, OPTIC FIBRE NETWORKS, │ │ TELEGRAMS AND TELEPHONE, │ │ ELECTRONIC AND FACSIMILE │ │ TRANSMISSION, TRANSMISSION OF │ │ MESSAGE AND IMAGE, WIRE SERVICE. │ │ 2. ET NOW TELEVISION & RADIO BROADCASTING, │ │ CABLE TELEVISION BROADCASTING, │ │ NEWS AGENCY PROVIDING │ │ TELECOMMUNICATION & USER ACCESS │ │ TO GLOBAL COMPUTER NETWORK │ │ SERVICES, TELECOMMUNICATION AND │ │ COMMUNICATION BY COMPUTER │ │ TERMINALS, CENTRE TELEPHONE │ │ SERVICES, OPTIC FIBRE NETWORKS, │ │ TELEGRAM & TELEPHONE, ELECTRONIC │ │ FACSIMILE TRANSMISSION, │ │ TRANSMISSION OF MESSAGE & IMAGE, │ │ WIRE SERVICE │ │ 3 MOVIES NOW TELEVISION AND RADIO BROADCASTING │ │ CABLE TELEVISION BROADCASTING; │ │ SATELLITE TRANSMISSION; NEWS │ │ AGENCIES; PROVIDING │ │ TELECOMMUNICATIONS AND USER │ │ ACCESS TO A GLOBAL COMPUTER │ │ NETWORK AND SERVICES, │ │ TELECOMMUNICATIONS AND │ │ COMMUNICATION BY COMPUTER │ │ TERMINALS, CELLULAR TELEPHONE │ │ SERVICES; OPTIC FIBRE NETWORKS, │ │ TELEGRAMS AND TELEPHONE, │ │ ELECTRONIC AND FACSIMILE │ │ TRANSMISSION; TRANSMISSION OF NEWS, │ │ MESSAGES AND IMAGES THROUGH │ │ GLOBAL COMPUTER NETWORK; WIRE │ │ SERVICE │ │ 4 MIRROR NOW TELECOMMUNICATIONS, TELEVISION │ │ BROADCASTING, CELLULAR TELEPHONE │ │ COMMUNICATION, COMMUNICATIONS BY │ │ COMPUTER TERMINALS, INTERNET AND │ │ WEBSITES, INTERNET PORTALS, │ │ INTERNET BROADCASTING, ELECTRONIC │ │ Signature Not Verified │ │ Digitally Signed C.O. (COMM.IPD-TM) 117/2021 Page 3 of 19 │ │ By:KAMLA RAWAT │ │ Signing Date:15.02.2023 │ │ 12:48:02 │ │ Neutral Citation Number : 2023/DHC/001066 │ │ MAIL, PROVIDING ONLINE FORUMS, │ │ SATELLITE TRANSMISSION, COMPUTER │ │ AIDED TRANSMISSION OF MESSAGES AND │ │ IMAGES, PROVIDING ACCESS TO │ │ DATABASES, FACSIMILE TRANSMISSION, │ │ PROVIDING USER ACCESS TO GLOBAL │ │ COMPUTER NETWORKS, PROVIDING │ │ TELECOMMUNICATIONS CONNECTIONS │ │ TO A GLOBAL COMPUTER NETWORK, │ │ TRANSMISSION OF DIGITAL FILES, │ │ TRANSMISSION OF CARDS ONLINE. │ │ 5 ROMEDY NOW TELEVISION & RADIO BROADCASTING, │ │ CABLE TELEVISION BROADCASTING; │ │ NEWS AGENCIES' PROVIDING │ │ TELECOMMUNICATIONS & USER ACCESS │ │ TO A GLOBAL COMPUTER NETWORK & │ │ SERVICES; TELECOMMUNICATIONS & │ │ COMMUNICATION BY COMPUTER │ │ TERMINALS; CELLULAR TELEPHONE │ │ SERVICES; OPTIC FIBER NETWORKS │ │ TELEGRAMS & TELEPHONE; ELECTRONIC │ │ & FACSIMILE TRANSMISSION; │ │ TRANSMISSION OF MESSAGES & IMAGES; │ │ WIRE SERVICE. │ │ 5. The petitioner claims to have adopted the mark „NOW‟, as a │ │ distinct and dominant part of its various marks aforesaid in 2004 and │ │ commenced use of the said mark as part of the mark „TIMES NOW‟ │ │ in 2006. Times Now, as is well-known, is a news channel which │ │ attracts considerable viewership and is viewed both within and outside │ │ the country. Following the success of Times Now, the petitioner │ │ launched a business news channel under the mark „ET Now‟ in June │ └──────────────────────────────────────────────────────────────────────────────────────────────────────┘
22. Sections 11(2) and (3) vis-à-vis Section 11(5)12: 22.[1] Section 11(2) of the Trade Marks Act proscribes registration of a mark which is identical with, or similar to, an earlier trade mark, even if the goods or services, in respect of which its registration is sought, are different from those in respect of which the earlier mark stands registered, provided (i) the earlier mark is a well known trade mark within the meaning of Section 2(1)(zg) of the Trade Marks Act and (ii) the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark. Section 11(3) proscribes registration of any trade mark if its use in India is liable to be prevented by the law of passing off or by the law of copyright. 22.[2] Section 11(5), however, obviates the necessity of examining the applicability either of Section 11(2) or of Section 11(3). Section 11(5) clearly holds that a mark would not be refused registration on the grounds specified in sub-sections (2) and (3) of Section 11 unless an objection, on one of the grounds envisaged by Section 11(2) of Section 11(3), is raised in an opposition proceedings by the proprietor of the earlier trade mark, i.e., in the present case, the petitioner. 22.[3] It is an undisputed position that no objection relatable to Section (5) A trade mark shall not be refused registration on the grounds specified in sub-sections (2) and (3), unless objection on any one or more of those grounds is raised in opposition proceedings by the proprietor of 11(2) or Section 11(3) was raised in opposition proceedings by the petitioner at or before the registration of the impugned mark in favour of the respondent. 22.[4] Ms. Mamta Rani Jha sought to contend that Section 11(5) would apply only at the time when the mark is originally registered and that the rigour of the provision would not operate to dilute the applicability of Section 11(2) or 11(3) at the stage when cancellation of a registered mark is sought. I am unable to agree. 22.[5] Once a mark is registered, Section 57 confers, on a person aggrieved by the registration, the right to seek its cancellation and consequent rectification of the register. The circumstances in which cancellation and rectification can be sought are circumscribed within sub-sections (1) and (2) of Section 57. Section 57(1) envisages cancellation or variation of the entry in the register where there is any contravention or failure to observe a condition entered on the register. That provision, quite clearly, does not apply to the present case. 22.[6] Section 57(2) envisages removal of a mark from the register where either (i) the entry is made in the register without sufficient cause or (ii) the entry is wrongly remaining in the register or (iii) there is any error or defect in the entry in the register. If one or more of these three exigencies exists, the mark can either be expunged or varied from the register. 22.[7] Of these three exigencies, the only exigency which could apply in the present case is the second i.e., that the defendant‟s mark is the earlier trade mark. continuing to wrongly remain in the register. Etymologically, a mark could be regarded as “wrongly remaining on the register” either (i) where it was correctly registered but, owing to intervening circumstances, its continuance on the register is impermissible, or (ii) where its very registration was bad, as the mark was non-registerable on account of one or more of the grounds envisaged in Sections 9 and 11 of the Trade Marks Act. I need not concern myself with the first of these two exigencies, as Ms Mamta Rani Jha has squarely relied on Section 11(1), (2) and (3), which imperil the very entitlement of the mark to registration, to canvass her case. Ms Jha‟s submission is, therefore, that, as the impugned mark was not entitled to registration and was, nonetheless, registered, its continuance on the register was impermissible in law; in other words, that it was “wrongly remaining on the register”. 22.[8] The entitlement of the impugned mark to registration and the entitlement of the opponent of the mark to seek its cancellation or variation, thus, statutorily dovetail into one another. To be able to successfully contend that the respondent‟s mark was liable to be cancelled or varied, Ms Jha would have to successfully invoke one or more of the sub-sections of Section 9 or Section 11. All the rigours which statutorily apply to these provisions, and their invocability, would also, therefore, apply to Ms Jha‟s attempt to do so. 22.[9] I am, therefore, of the considered opinion that Section 11(5) does not apply differently at the stage when the application for registration of a mark is under consideration and when an application for rectification of the register and removal of a mark therefrom, under Section 57(2), has been made. Section 11(5) operates as a proviso to Sections 11(2) and 11(3), by excepting their applicability to cases in which, at the time of consideration of the mark for registration, no opposition predicated on the said provisions is raised. If, therefore, no opposition predicated on Section 11(2) or 11(3) was raised by the petition when the defendant‟s mark was being considered for registration, the mark could not have been refused registration under Section 11(2) or 11(3). The corollary would, therefore, be that the grant of registration to the mark cannot be said to be improper, illegal or vitiated as being violative of Section 11(2) or 11(3).
22.10 As, admittedly, no opposition, predicated on Section 11(2) or 11(3) was raised by the petitioner at the time when the defendant‟s mark was proceeding to registration, the petitioner cannot urge Section 11(2) or 11(3) as a ground to seek its cancellation or variation.
23. In any event, as the grant of registration to the impugned mark of the defendant has already been found by me to be violative of Section 11(1)(b) of the Trade Marks Act, a clear case for rectification of the register and variation of the impugned mark as sought by the petitioner, so as to remove the handicap of Section 11(1)(b), is made out. Conclusion
24. Resultantly, the Registration No. 2948252 dated 23rd April 2015 granted to the impugned mark in favour of the defendant in class 38 shall stand varied and, consequently, rectified by deleting, from the services in respect of which the impugned mark is registered, “Transmission, Reception & Sharing Of Downloadable Digital Data & Content, Electronic Communication Services, Providing Access To GPS/Lbs/Other Navigation Services, Access To Electronic Communication Network, Web Casting/Online/ Offline Services For Transmission Or Reception Of Audio/Video/Data Files & Content, Multimedia, Access To Internet/Web Services/Tv/ Telecommunication Services Via Telecommunication Equipment Or Smart Phones Or Mobile Phones Or Wearable Devices Or Smart Watches Or Watches Or Wireless (2g/3g/4g/5g/7g/WIFI/WIMAX/VSAT) Enabled Devices Or GPS/ GPRS Enabled Device, Bluetooth Enabled Devices, Tablet Computer Transmission, Reception, Sharing & Communication Of Software Or Computer Applications Or Mobile Applications Or Smart Devices Applications Or Audio Or Video Or Downloadable Digital Content Or Web/ Internet /Online Data Sharing”.
25. The registration of the impugned mark shall, therefore, stand restricted to „smart security solution devices, power bank, chats or social networking services or conferences or webinars‟.
26. The petition stands allowed accordingly.
27. Judgment to be uploaded on the website of this Court within 24 hours.
C. HARI SHANKAR, J.
FEBRUARY 14, 2023