Full Text
HIGH COURT OF DELHI
Date of Decision: 06th May, 2019
BENNETT, COLEMON & CO. LTD. & ANR. ..... Plaintiffs
Through: Ms. Mamta R. Jha, Mr.Vipul K.
Tiwari, Ms.Shipra Philips, Advocates
Through:
JUDGMENT
1. Plaintiff No.1 is the proprietor of the trademark “E-TIMES”. Plaintiff No.1 adopted the aforesaid trademark on 01st April, 1994 in respect of one of its supplements to the national newspaper - The Times of India. Plaintiff No.1 registered the trademark “E-TIMES” in 1994 and 1995. However, the registration was granted to plaintiff No.1 subject to the disclaimer that registration shall have no exclusive right to use of the words „E‟ and „TIMES‟ separately. Plaintiff No.1 obtained the registration of its newspaper with the trademark “E-TIMES”. The particulars of the registration are given in para 7 and 21 of the plaint. The plaintiffs launched an internet edition of E-TIMES as a separate section on its website - www.indiatimes.com.
2. In April, 2018, the plaintiffs came to know that defendant No.1 obtained a domain name registration for “www.etimes.in” whereupon the 2019:DHC:2485 plaintiffs filed a complaint before National Internet Exchange of India (NIXI) which resulted in the award dated 27th June, 2018 whereby the impugned domain name was directed to be transferred to plaintiff No.1.
3. On 20th July, 2018, the summons of the suit was issued to the defendants for 30th July, 2018. However, the defendants chose not to appear before this Court. The defendants were proceeded ex parte on 30th July,
2018.
4. On 30th July, 2018 and 23rd August, 2018, this Court passed an ad interim injunction against defendant No.1 in the following terms: “In the facts and circumstances of this case, defendant No.1, its directors, partners/proprietors as the case may be, organizers, assigns in business, licensees and franchisees, and any other person or entity claiming rights through it are restrained from using the domain name www.etimes.in in any manner, or dealing in any manner, directly or indirectly whatsoever, for any other goods or services or any other mark/domain name as may be identical/deceptively similar to the plaintiffs’ registered trademark TIMES/ETIMES or other TIMES formative marks amounting to infringement of plaintiffs’ registered trademark and/or dilution till the next date of hearing.”
5. The plaintiffs have filed the evidence by way of affidavit of Mr. Rajan Vaid (Ex. PW1/A) in support of the averments made in the plaint. The plaintiffs have also filed an affidavit dated 01st February, 2019 and an email dated 12th November, 2018 issued by NIXI.
6. This Court is satisfied that defendant No.1 has no right to use the domain name “www.etimes.in” in view of the registered trademark of the plaintiffs and the plaintiffs are entitled to prayer „C‟ of the suit.
7. During the pendency of this proceeding, NIXI enforced the award dated 27th June, 2018 by transferring the domain name “www.etimes.in” in the favour of the plaintiffs. In view of the transfer of the domain name by defendant no.2 in favour of the plaintiffs, no further direction is warranted in respect of prayer „C‟ of the plaint.
8. The interim orders dated 30th August, 2018 are confirmed and a decree of permanent injunction in terms of the orders dated 30th August, 2018, is passed in favour of the plaintiffs and against defendant No.2. J.R. MIDHA, J. MAY 06, 2019 ds