Intellectual Property RightsProprietor owning a “family of marks” cannot Claim rights over Common Components in Composite Marks

In the case of Bennet, Coleman and Company Ltd v. Vnow Technologies Pvt. Ltd. [C.O. (COMM. IPD-TM) 117/2021], decided on February 14, 2023 the Delhi High Court (hereinafter referred to as “High Court”) clarified the requirements for cancellation or rectification petition under Section 57 of the Trademarks Act, 1999 (hereinafter referred to as the “Trademarks Act”). The High Court held that it would be requisite for the Applicant to first have opposed the registration as provided for under Section 11 (5) of the Trademarks Act.

FACTS

Bennet, Coleman, and Co(hereinafter referred to as the “Petitioner”) is the parent company and proprietor of the trademarked prime-time news channel ‘Times Now’ registered under Class 38.

Along with Times Now, the Petitioner also owns other associated well-known channels with considerable viewership such as ‘ET Now’ airing programming related to financial updates and stock market news, ‘Movies Now’ featuring Hollywood films under the mark, ‘Romedy Now’ a television showing romantic and comedy Hollywood films, and ‘Magic Bricks Now’ a real estate related updates TV channel and all of these are viewed both within and outside the country. Thus, the petitioner claimed to have adopted the mark ‘NOW’, as a distinct and dominant part of its various marks.

Vnow Technologies Pvt. Ltd. (hereinafter referred to as “the Defendant”) subsequently released the channel named VNOW, under Class 38 covering “transmission, reception & sharing of downloadable digital data & content” and so on and applied for trademark registration for the same which came to be granted unopposed by the Petitioner.

The Petitioner approached the IPAB, but due to its dissolution, the matter came up for hearing before the High Court. Despite service by both before the learned IPAB as well as the High Court, the Respondent has remained continuously absent and thus the matter came to be heard ex-parte.

ISSUES BEFORE THE HIGH COURT

1. Whether rights arise in a part of the trademark which is common in a family of marks owned by the same proprietor?

2. Whether cancellation should be allowed if the mark is not opposed under Section 11 (5)?

CONTENTIONS OF THE PARTIES

The Petitioner submitted that subsequent to the launch and subsequent popularity of the news channel ‘TIMES NOW’ and other channels ET NOW, ROMEDY NOW, MOVIES NOW and MAGI CBRICKS NOW with the same sub-text ‘NOW’ has become a distinct and dominant part of its various marks since its first appearance in 2004. In addition to this, it was also pleaded that the widespread viewership of the channels have made the marks of the proprietor valid to be considered well-known marks.

The Petitioner pleaded that in consideration of the popularity of the channels owned by the Petitioner, an unwary viewer who views the defendant’s channel, which provides identical services under the impugned mark, would be inclined to draw an association between the impugned mark and the ‘NOW centric’ marks of the Petitioner, merits acceptance.

The Petitioner relied upon a judgement by the Division Bench of the High Court in Amar Singh Chawal Wala v. Shree Vardhman Rice & General Mills [FAO (O) No. 138 of 1996] to contend that proprietorial rights can emerge even from a family of marks held by a registrant, in which part of the marks may be common, stands recognized.  Thus the Petitioner pleaded that through the family of marks owned by the proprietor, their common component being ‘NOW’, the proprietor has the right to exclusive use over the same

By citing the ratio of Amar Singh Chawal Wala, the Petitioner highlighted the concept of the family of marks, thus the Petitioner contended that the ‘NOW’-centric ‘TIMES NOW’, ‘ET NOW’, ‘MOVIES NOW’, ‘MIRROR NOW’ and ‘ROMEDY NOW’ marks similarly constitute a “family of marks”.

DECISION AND FINDINGS

The High Court acted akin to a court in an inquisitorial system of justice as it examined the argument raised by the Petitioner by citing the provision under Section 17(1) of the Trademarks Act which clarifies that the proprietorial rights conferred by registration is for the mark as a whole.

In other words, the rights conferred on the Petitioner by the registrations held by it in respect of the NOW family of marks are over the TIMES NOW, ET NOW, ROMEDY NOW, MOVIES NOW, and MIRROR NOW marks as a whole in each case, and not for a portion of the mark ‘NOW’. This is further supplemented under Section 17(2)(a) which disentitles exclusivity in respect of part of a mark which is registered as a whole. This principle has been reiterated in multiple precedents and, over time, has come to be known as “the anti-dissection rule”

The High Court however agreed with the arguments of the Petitioner about NOW forming a distinct and dominant part of the marks. It was observed in South India Beverages Pvt. Ltd. v. General Mills Marketing Inc [FAO(OS) 389/2014] that though it bears no reiteration that while a mark is to be considered in entirety, yet it is permissible to accord more or less importance or ‘dominance’ to a particular portion or element of a mark in cases of composite marks. Thus, a particular element of a composite mark which enjoys greater prominence vis-à-vis other constituent elements, may be termed as a ‘dominant mark’.

The High Court appreciated the view taken in earlier decisions that while analysing similarities between two marks, one must look at both from the eyes of a consumer. In such cases there will always be small similarities, as well as small differences but to the average buyer, the points of similarity, are more important than minor points of difference.

Thus, the High Court finally observed that violation of the anti-dissection rule to focus upon the “prominent” feature of a mark and decide likely confusion solely upon that feature, ignoring all other elements of the mark is improper use of the principle and that the principle of ‘anti dissection’ does not impose an absolute embargo upon the consideration of the constituent elements of a composite mark. The said elements may be viewed as a preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composites as a whole.

Despite this, the High Court did not agree with the Petitioner’s stand that that Section 11(5) would apply only at the time when the mark is originally registered and that the provision would not operate at the stage when cancellation of a registered mark is sought and held instead that 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.

AMLEGALS REMARKS

Whenever there is a case of trademark infringement allegation there are two main reliefs, opposition, and cancellation. Although in the present case,  the reliefs prayed for by the Petitioner have partially been allowed, the ratio has clearly laid down that a proprietor seeking to cancel a registered mark under Section 57 must have raised an objection at the time of registration under Section 11(5).

It can also be observed that exclusivity cannot be given to one particular portion of the trademark, but the trademark is to be considered as a whole in order to avail rights for the same.

– Team AMLEGALS assisted by Mr. Jason James (Intern)

For any query or feedback, please feel free to get in touch with falak.sawlani@amlegals.com or mridusha.guha@amlegals.com.