Delhi High Court holds, No exclusivity of Times Group over NOW!

Facts of the Case

The Plaintiff company, popularly known as the Times Group, a media conglomerate operating since 1838, claims to be involved in various businesses, namely media, newspapers, broadcasting, entertainment, etc., through its subsidiaries and affiliates. Times Group claims to have used the series of marks containing TIMES and NOW for over a decade. Times group filed the present suit against E! Entertainment Television LLC (EETL), a US Company at the Delhi High Court from using and adopting the mark “NOW,” “E NOW,” and “E NEWS NOW” or any other mark identical or deceptively similar to the Plaintiff’s channel name/ registered trademark.

Delhi High Court, at the admission stage (on 14th May 2019), passed an ex-parte interim injunction, restraining EETL, a US Company, from starting any channel/program in India using the mark “NOW” or any other mark deceptively similar to the mark “NOW.” EETL filed an appeal challenging the order. However, the Appeal was rejected, and the appeal bench (Division Bench) directed the EETL to apply to set aside the injunction order before the Single Judge, the Court that granted the ex parte interim injunction.

The post outlines the contention of the parties and the Court’s Ruling.

Plaintiff’s (Bennett Coleman, a Times Group Company) case:

  1. EETL marks E! Now” and “E! News Now” is structurally similar to Plaintiff’s mark “E Now.” Therefore, it amounts to infringement and passing off.
  2. Plaintiff started using “E Now” in 2008 for entertainment shows, wherein E represents Entertainment and NOW shows the connection with Plaintiff.
  3. Plaintiff applied for registration of the mark and logo “E Now” in Classes 38 and 41 in 2018, claiming use since October 2008. However, the same was opposed by the EETL, who claimed proprietary rights over the mark “E!” and its formative marks. The EETL also sent a cease-and-desist notice to the Plaintiff in 2018.
  4. The EETL has not applied for registration of the mark “E! Now” and “E! News Now,” and therefore, EETL cannot claim any right over the same.
  5. Plaintiff claimed to be the proprietor of the “NOW” family of marks in the television and broadcasting industry and asserted that the mark “NOW” is per se registered and is an essential feature of Plaintiff’s mark with various marks of the Plaintiff incorporating the word “NOW” as a suffix or prefix.

EETL’s Contentions

  1. The EETL has been using the mark “E! News Now” since 2007 for online news bulletin and the mark “E! Now” since 2013 for online television services in the USA and other countries across the globe and is the proprietor of “E!” and E! formative marks in Class 9, 38 and 41.
  2. Plaintiff’s mark “NOW” is wrongly registered since the earliest registration of the mark by Plaintiff dates back to 31st July 2008, and the same is subsequent to EETL’s use of the mark “E! News Now“.
  3. Plaintiff has no registration of mark “NOW” under Class 38 for which interim injunction was granted, and Plaintiff’s “NOW” family of marks cannot be compared to the EETL’s marks.
  4. Plaintiff’s mark “NOW” cannot be classified as a well-known mark since Plaintiff has used the same as a composite mark and has never been used independently for any goods or services.
  5. The interim injunction was granted on the misrepresented fact that the trademark “NOW” has been registered in favor of Plaintiff in various classes since 2006. However, Plaintiff has failed to prove the use of “NOW” suffix marks since 2006.
  6. E! is the essential feature of the EETL’s mark owing to the EETL’s use of “E! News Now” since 2007 and the mark “E! Now” since 2013, thereby earning the EETL a transborder reputation. Thus, the EETL is the prior user and has superior rights to that of the Plaintiff.
  7. The Plaintiff is guilty of concealing and misrepresenting material facts:
    1. Plaintiff did not disclose the non-use of the mark “NOW” as a standalone mark.
    2. The Plaintiff withdrew its applications E-News, E TV, and E Net under Class 9, 38, and 41 due to oppositions filed by third parties,
    3. In reply to the objection raised by the Trademarks Registry to its application for the mark “Romedy Now,” the Plaintiff argued that no exclusivity can be claimed over the mark “NOW” as it is “common to the trade,” The Plaintiff did not object to the disclaimers issued by the Trademarks Registry that “NOW” is common to trade until after the EETL pointed out the same during the proceedings,
    4. Plaintiff did not disclose the disclaimers to the Hon’ble Court in the pleadings nor at the time of grant of interim injunction.
  8. The mark “NOW” has been used as a suffix by various third parties in Class 38 and 41.

Court’s Decision

The Court, while setting aside the injunction order, observed:

  • Plaintiff is not the proprietor or prior user of the standalone mark “NOW” in Class 38, and Plaintiff’s registration of the standalone mark “NOW” in Class 41 is on a proposed to be-used basis, which has not been used to date.
  • While Plaintiff is the proprietor of various marks incorporating the word “NOW” as a suffix or prefix, the same is a common word and is used by various third parties.
  • The Plaintiff cannot claim that the mark “NOW” as a suffix or prefix has acquired distinctiveness on the grounds that:-
    • In its reply to the examination report and in the counter statement in response to the opposition filed against the mark “NOW,” the Plaintiff has itself contended that the mark “NOW” is common to trade,
    • Plaintiff gave a disclaimer on the mark “NOW” in its registrations for mark LOCVOM NOW and ROMEDY NOW in classes 9, 16, and 38, respectively.
  • The EETL is the prior user of the mark “E” or “E!” with “NOW” and “E NEWS NOW,” and therefore, no injunction can be granted against the EETL.
  • The Plaintiff is guilty of suppression of material facts.
  • The injunction order was granted by the Hon’ble Court on the Plaintiff’s representation that the mark “NOW” has been registered in various classes since 2006. However, the mark “NOW” in Class 41 was registered on a proposed to-be-used basis and has not been used.

Our comment

The Court’s Ruling highlights the impact of suppression and misrepresentation of material facts on equitable reliefs and the risk of the contrary legal stand taken by parties before the Trademarks Registry and the Courts.

Times Group has appealed against the Order to the two judges bench (Division Bench). However, the Appeal is yet to be heard and no interim directions have been passed.

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