117. Learned Counsel for the plaintiff submitted that in the judgment of Office Cleaning Services Limited case (supra) relied upon by defendant No. 1 while it has been recognised that descriptive words are entitled to protection, if they acquire secondary meaning, it has also been held that the distinction between the names 'Office Cleaning Services' and 'Office Cleaning Association' is sufficient to distinguish the two names. It was averred that the said judgment has been diluted to a great extent even in England and in a number of authorities such as Computer Vision v. Computer Vision 1975 RPC 171 and Berkeley Hotel Co. Ltd. v. Berkely International (Mayfair) Limited and Anr. 1971 FSR 300 descriptive names has been protected despite applying the dictum in Office Cleaning Services Limited case (supra).
118. In Berkeley Hotel Co. Ltd. case (supra), the plaintiffs were the owners of a first class hotel by the name of Berkeley Hotel in Berkeley Street, prior to its demolition and were in the process of constructing another hotel by the same name at a new site. The defendants had also started a hotel in Berkeley Street by the name of Berkely International. While it was contended that the name Berkeley being a geographical name the court should accept small differences to avoid confusion, it was held that although the name has a geographical element, the same is primarily distinctive of a particular hotel entity. It was further observed that it is intended to say that the plaintiff company has obtained such a monopoly in the word Berkeley as to prevent its use in any combination of words for a hotel in Berkeley Square or Berkeley Street however, the word Berkeley with this particular suffix (International) is likely to cause confusion.
119. In Computer Vision case (supra) it was observed that even if the words 'Computer Vision' can be regarded as ordinary descriptive words, the question still arises as to whether the defendants trade name has been sufficiently distinguished and differentiated from the plaintiff's mark. Also as regards the contention of the defendants that the plaintiff was 'Computer Vision Corporation' while the defendants were 'Computer Vision Limited', it was observed that the word 'limited' is more often than mark dropped in referring to a company 'colloquially' and the very existence of that difference is likely to lead people to think that the defendant is an English subsidiary of the plaintiff or is in some other way connected with them.
120. Learned Counsel thus contended that the judgments in Online India Capital Co. Pvt. Ltd case (supra) & Manish Vij and Ors case (supra) followed the judgment in Office Cleaning Services Limited case (supra), which has been diluted to a great extent and thus cannot be followed.
Page 1742
121. Learned Counsel sought to distinguish the judgment in Manish Vij and Ors case supra by submitting that in that case the adoption of the domain name by the plaintiff was recent i. e. the suit was field within about one year of the adoption of the domain name which is not the case in the present matter. It was also submitted that while in the case of kabadibazaar.com no imagination is required to connect the same with its contents. However, in the present case, the mark is a unique combination of the words INDIA and TV which can relate to any television channel and doe not convey that the same is a news channel or a Hindi news channel.
122. Insofar as descriptive names are concerned, the position as in the case of the geographical names is that a descriptive mark may be granted protection where the same has assumed a secondary meaning which identifies it either with particular goods or services or as being from a particular source. This is the position as held in Godfrey Phillips India Ltd. case (supra) & Info Edge (I) Pvt. Ltd. case (supra). Also as held in the Living Media India Limited case (supra) protection can be given to individually descriptive words when used as a combination where such combination by reason of long, prior and continuous user in relation to the particular goods or services get identified with the goods/services/source.
123. In Online India Capital Co. Pvt. Ltd case (supra) & Manish Vij and Ors case (supra) protection was not granted to domain names comprising generic words, which were descriptive of the services being provided by the concerned parties. It may, however, be noticed that in both these cases it has been observed that there was absence of material or the material placed on record was insufficient to show that the marks had acquired any secondary meaning which is a 'precondition' for granting protection to descriptive names. Bhartiya Coffee Workers Catering Service Pvt. Ltd. case (supra) was again concerned with the descriptive mark but the same was being used by all co-operative societies of former employees of the Coffee Board and thus could not be identified with the particular service provider as such.
124. Learned senior counsel for defendant No. 1 has contended that by the addition of a suffix 'LIVE' the mark of the said defendant has been rendered different from the mark of the plaintiff as was the case in Digital City Inc. case (supra). Learned Counsel for the plaintiff, however, contended that in the judgments in Computer Vision case (supra) and Berkeley Hotel Co. Ltd. case (supra) protection is granted even where the infringing marks contained different suffixes. However it may be noticed that in Berkeley Hotel Co. case (supra) it was the particular suffix involved in that case that was held to be likely to cause confusion. It was specifically observed that it is not the intention to say that the word BERKELEY could not be used for a hotel in any combination. Similarly in Computer Vision case (supra) it was found that the suffix 'Limited' is most likely to be dropped in referring to the company colloquially and the existence of that particular difference was likely to cause confusion.
125. The judgment of learned single Judge in Automatic Electric Limited case (supra) is to the effect that where the defendants themselves have got the mark registered and claimed proprietary rights therein they cannot claim that the mark consists of a generic expression. Thus, as applications have Page 1743 been filed on behalf of defendant No. 1 for the registration of the marks INDIABROADCASTLIVE and INDIATVLIVE, defendant No. 1 cannot really claim that the marks are incapable of registration.
126. Be that as it may, the mark of the plaintiff INDIA TV is comprised of ordinary descriptive words. The plaintiff is claiming rights over the words in that particular combination. The mark INDIA TV, does not as contended by learned Counsel for the plaintiff, by itself indicate that the same is a Hindi news channel. The mark would prima facie show a connection with Indian television which is the general nature of the business being carried out by the plaintiff but would not immediately lead any person to connect the same with the specific business i. e. a Hindi news channel.
127. As noted hereinabove, the ratings etc placed on record in respect of the plaintiff's channel prima facie do show that the same is among the popular Hindi news channels. However, evidence is still to be led in this behalf. It has also to be seen whether the suffix, 'live' can sufficiently distinguish the website of the defendant from the plaintiff's mark.
128. As observed earlier, at the interim stage, it would suffice to display prominently on the website of defendant No. 1, a disclaimer which shows that the same has no connection with the plaintiff's channel.
Agreement with Jump TV:
129. Defendant No. 1 in its reply has taken the stand that the present suit is at the behest of Jump TV with whom the plaintiff entered into an agreement and which is a competitor of defendant No. 1 in the IPTV (Internet Protocol Television) segment.
130. Learned Counsel for the plaintiff in this regard submitted that the contention of defendant No. 1 is baseless as the Agreement entered into between the plaintiff and JUMP TV is dated 8th August 2006 and was thus entered into prior to the launch of the website of defendant No. 2. Thus, it cannot be contended that the suit has been initiated merely because of the agreement with the competitor.
131. The portions of the agreement with JUMP TV filed by learned Counsel for the plaintiff shows that the agreement with JUMP TV was entered into on 08.08.2006. There is no dispute that the website of defendant No. 1 was launched on 17th August 2006. Thus, the agreement entered into with JUMP TV was prior to the launch of the website of defendant No. 1. However the website was inaugurated in Anaheim, California on 29.06.2006 as per the articles placed on record by defendant No. 1.
132. No evidence has really been placed on record at this stage which indicates that the plaintiff was aware of the launch of the impugned website of defendant No. 1. prior to January 2007. The material placed on record at this stage is insufficient to establish whether the present suit is a consequence of the Agreement entered into with JUMP TV. This aspect would thus be decided after trial.
Delay
133. Learned senior counsel for defendant No. 1 submitted that the plaintiff is guilty of undue and unexplained delay in approaching this court for relief. Page 1744 The website of defendant No. 1 was launched in June 2006 while the present suit was instituted only in January 2007 and there is no explanation for not approaching the court sooner.
134. Reference was made to the judgment of a division bench of this court in B.L. and Co. and Ors. v. Pfizer Products Incl. 2001 PTC 797 (Del) (DB) wherein it was observed that in a passing off action, while delay in filing of the suit may not be fatal, it is one of the important and relevant considerations before granting an ex parte or interlocutory injunction. It was found that the respondents knew about the launch of the products of the appellant but waited till the appellant developed for one year before the action was brought. In fact even after commencement of manufacture, the action was not brought for nearly five months. It was observed that the factor of delay alone should have been sufficient to deny the respondents an ex parte restraint.
135. In The Gillette Co. and Ors. v. A.K. Stationery and Ors. 2001 PTC 513 (Del) learned single judge of this court, as regards the aspect of delay observed as under:
As regards the delay in institution of the suit and its effect for the purpose of grant of ex parte restraint, the settled legal position is that while the delay in institution of a suit for an action for passing off may not be fatal, it is one of the important and relevant considerations before granting an ex parte/interlocutory injunction. Reference in this regard is invited to the 'THE LAW OF PASSING OFF' by Christopher Wadlow. Learned Author while dealing with the motions of interlocutory relevance has observed as under:
Delay in applying for interlocutory relief is a very serious matter. As a rule of thumb, delay of up to about a month, or perhaps six weeks, generally has no adverse effect on an inter parties application and delay of up to twice that period need not be fatal if it can be explained and the plaintiff's case is otherwise strong. On an ex parte application even delay of a few days can be critical. Unjustified delay of more than a few months is almost always fatal to the plaintiff's case, even though delay of this order has no effect on the plaintiff's rights at trial. Unlike many of the issues which can arise on motion, the existence of delay does not normally admit or much argument. Delay, if present, is therefore a short, safe and simple basis for refusing relief. This means that applications for interlocutory injunctions in which there is significance delay are unlikely even to get as far as a hearing, and those that do are quite likely to be refused without going into the merits or the balance of convenience.
136. Learned Counsel for the plaintiff submitted in this behalf that there is only one article on record from the print media being a news clipping from the Financial Express dated 21.08.2006 which mentions that the website of defendant No. 1 will be launched. The other articles regarding the launch of defendant No. 1s website are from various sources on the Internet. It is thus contended that the plaintiff could not have been expected to know of the launch of defendant No. 1s website around August 2006 when it was launched.
Page 1745
137. Learned Counsel referred to the judgment of the Apex Court in Midas Hygiene Industries P. Ltd. and Anr. v. Sudhir Bhatia and Ors. 2004 (28) PTC 121 (SC) in support of the proposition that in cases of infringement either of trademark or of copyright normally and injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was dishonest. Learned Counsel also placed reliance on the judgment in Hindustan Pencil Private Limited v. India Stationery Product Co. 1989 (9) PTC 61 (Del) wherein it was observed that delay by itself is not a sufficient defense to an action for interim injunction, but delay coupled with prejudice caused to the defendant would amount to 'laches'. It is the magnitude of the product of delay and prejudice which must be weighed, not the magnitude of solely the quantum of delay or prejudice alone. For example, in one case, a long delay coupled with even a slight amount of prejudice may suffice to prove an adequate defense of laches. Yet, in another case, a short delay coupled with a great amount of resulting prejudice to defendant may also suffice for laches. Judicial opinion has been consistent in holding that if the defendant acts fraudulently with the knowledge that he is violating the plaintiff's rights then in that case, even if these is an inordinate delay on the part of the plaintiff in taking action against the defendant, the relief of injunction is not denied.
138. It was thus submitted that merely delay in bringing an action is not sufficient for the refusal of an injunction and even if there was a delay by the plaintiff in initiating the action, the same is not of more than three-four months which cannot be said to be excessive.
139. Insofar as the aforesaid aspect is concerned, there is no dispute in the proposition that delay is an important factor to be taken into account while considering an application for the grant of an interim injunction as noticed in the judgments in B.L. and Company and The Gillette Co. cases (supra). It however may be noticed that in the case of B.L. and co. (supra), the fact of the launch of the defendants product was within the knowledge of the respondent/plaintiff for about a year before the action was brought.
140. In the present matter the plea of the plaintiff is that they came to know of the defendants website only in January 2007. The press clippings, articles etc placed on record by defendant No. 1 regarding the launch of their website as pointed out by learned Counsel for the plaintiff are mostly from different websites and the only article from the print media is a small clipping. I am in agreement with the contention of learned Counsel for the plaintiff that the plaintiff could not have been expected to know about the launch of defendant No. 1s website from these materials alone.
141. There is no other material on record at this stage to show that the plaintiff was aware of the launch of the website of defendant No. 1 prior to January 2007 when it is claimed that the plaintiff came to know of the website of defendant No. 1 and when the present suit has been filed. Thus, it cannot prima facie be said that there was excessive delay on the part of the plaintiff in bringing the present action for passing off.
Page 1746 Conclusion
142. The result is that IA 2611/2007 stands allowed and defendant No. 1 is restrained from proceeding with the suit filed in the District Courts at Arizona.
143. Insofar as IA Nos. 651/2007 and 1366/2007 are concerned, the order dated 19.01.2007 is modified and defendants are permitted to use the domain name INDIATVLIVE.COM with the disclaimer This website has no connection, affiliation or association whatsoever with India TV, the Indian Hindi news and Current Affairs television channel which should appear prominently next to its logo Indiatvlive.
144. Defendant No. 1 is also directed to file six monthly statement of revenue earned from the impugned website in India.
145. IA Nos. 651/2007 and 1366/2006 thus stand disposed of.
146. Needless to say, the observations herein are prima facie in nature and will not affect the final disposal of the suit.
CCPO 22/2007
147. The plaintiffs stand in this regard is basically that even after the grant of the ex parte ad interim injunction, the website of defendant No. 1 could still be opened on typing the impugned domain name in the address bar although what would be displayed in the address bar was the IP address of the website and not the impugned domain name.
148. The position was thereafter rectified and on typing the impugned domain name, the person browsing is redirected to indiabroadcastlive.com which is the another domain name of defendant No. 1.
149. In its reply to the petition, the respondents have tendered an unconditional apology for any breach or non compliance of the orders.
150. The respondents have also explained that as the interim order on 19.01.2007 restrained them from using the domain name INDIATV or any other domain name with the combination of the words INDIA TV they removed the domain name from their website and replaced the same with the IP address of the said website and also displayed a disclaimer that the website had no connection with the plaintiff's channel India TV. The respondents have also submitted that the interim order on 19.01.2007 was granted till the next date of hearing which was 07.02.2007 and the same was not directed to be continued till 15.02.2007.
151. The respondents have further pointed out that thereafter they discontinued use of the impugned domain name and shifted the website to another domain name being indiabroadcastlive.com. When the impugned domain name is typed in the address bar, a redirection notice appears which states that the website is not operational due to interim orders passed and persons visiting the said website are automatically redirected to indiabroadcastlive.com. Thus, the respondents have rectified the position.
152. In view of the aforesaid, I do not deem it appropriate to proceed further with the petition and the petition stands disposed of.