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  • Delhi HC Restrains ‘Baap Ki Adalat’ for Trademark Infringement

    Case 4: Independent News Service Pvt. Ltd. & Rajat Sharma v. Ravindra Kumar Choudhary & Ors.

    Citation: 2024 SCC OnLine Del 3142
    Court: Delhi High Court
    Date Decided: 30 May 2024
    Judge: Justice Anish Dayal

    Background

    Independent News Service Pvt. Ltd. (INS), the proprietor of the 24-hour Hindi news channel “India TV,” and its Chairman and Editor-in-Chief, Rajat Sharma, filed a suit against Ravindra Kumar Choudhary and others. The plaintiffs alleged that the defendants were using the mark/logo “Baap Ki Adalat,” which was deceptively similar to their registered trademark/logo “Aap Ki Adalat,” a well-known television program featuring interviews with prominent personalities. The defendants, particularly Choudhary, a self-proclaimed political satirist, were creating and publishing various video and audio content on social media platforms under the impugned mark.

    Plaintiff’s MARK

    Defendant’s MARK

    Legal Issues

    1. Whether the defendants’ use of the mark/logo “Baap Ki Adalat” infringed upon the plaintiffs’ registered trademark/logo “Aap Ki Adalat” under the Trade Marks Act, 1999.
    2. Whether the defendants’ actions constituted passing off, leading to confusion among the public.
    3. Whether the unauthorized use of Rajat Sharma’s name, photograph, and video violated his personality rights.

    Parties’ Contentions

    Plaintiffs (Independent News Service Pvt. Ltd. & Rajat Sharma):

    • Asserted that “Aap Ki Adalat” is a registered trademark and a widely recognized television program, thereby possessing significant goodwill and reputation.
    • Claimed that the defendants’ use of “Baap Ki Adalat” was deceptively similar, both phonetically and visually, leading to confusion among the public.
    • Alleged that the defendants’ use of Rajat Sharma’s name, photograph, and video without consent infringed upon his personality rights.

    Defendants (Ravindra Kumar Choudhary & Ors.):

    • At the time of the interim injunction, the defendants had not filed a response.

    Decision

    The Delhi High Court granted an ex-parte ad-interim injunction in favor of the plaintiffs, restraining the defendants from:

    • Using the mark/logo “Baap Ki Adalat” or any other mark/logo deceptively similar to “Aap Ki Adalat” in any manner, including as a trademark, logo, trading style, domain name, social media posts, audio-video content, or in relation to any services.
    • Using the photograph, video, or name of Rajat Sharma in any manner that would violate his personality rights.

    The court directed the defendants to remove the infringing content from their social media platforms and scheduled the next hearing for 18 October 2024.

    Ratio Decidendi

    • The court found a prima facie case of trademark infringement and passing off, noting the deceptive similarity between “Aap Ki Adalat” and “Baap Ki Adalat.”
    • Recognized the significant reputation and goodwill associated with the plaintiffs’ trademarks, and the potential for confusion and deception among the public due to the defendants’ use of a deceptively similar mark.
    • Acknowledged the violation of Rajat Sharma’s personality rights through the unauthorized use of his name, photograph, and video.

    LEGAL ANALYSIS

    Trade Marks Act, 1999: Sections 29(1), 29(2)(b), 29(4)

    • (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
    • (b) its similarity to the registered trademark and the identity or similarity of the goods or services covered by such registered trademark; or
    • (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which— (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
    • Code of Civil Procedure, 1908: Order XXXIX, Rules 1 and 2
    • Common law principles relating to passing off and personality rights

    Bibliography

    Author: Suhani Sharma

  • Delhi HC Rules in SPARX vs HRX Trademark Dispute: No Injunction Granted

    Case 3: Relaxo Footwears Ltd. v. XS Brands Consultancy Pvt. Ltd. & Ors.

    Citation: 2024 SCC OnLine Del 3141
    Court: Delhi High Court
    Date Decided: 13 May 2024
    Judge: Justice Anish Dayal

    Background

    Relaxo Footwears Ltd., a prominent Indian footwear manufacturer, has been using the “SPARX” brand since 1976. The company developed a distinctive “X” device mark derived from its “SPARX” logo, which it used prominently on its footwear products. In 2024, Relaxo filed a suit against XS Brands Consultancy Pvt. Ltd., associated with the “HRX by Hrithik Roshan” brand, alleging that the defendants’ use of a similar “X” mark on their footwear products infringed upon Relaxo’s trademark rights.

    Plaintiff’s MARK

    Defendant’s MARK

    Legal Issues

    1. Whether the defendants’ use of the “X” mark infringed upon Relaxo’s registered trademark under the Trade Marks Act, 1999.
    2. Whether the similarity between the two “X” marks could cause confusion among consumers, constituting passing off.
    3. Whether the defendants’ use of the “X” mark was honest and concurrent, given their market presence since 2013.

    Parties’ Contentions

    Plaintiff (Relaxo Footwears Ltd.):

    • Asserted that their “X” mark, derived from the “SPARX” logo, had acquired distinctiveness and was associated exclusively with their products.
    • Argued that the defendants’ use of a similar “X” mark on identical goods (footwear) was likely to cause confusion among consumers.
    • Claimed that the defendants’ adoption of the “X” mark was dishonest and aimed at capitalizing on Relaxo’s established reputation.

    Defendant (XS Brands Consultancy Pvt. Ltd. & Ors.):

    • Contended that their “X” mark was distinct and had been used in conjunction with the “HRX” brand since 2013.
    • Argued that the marketplace was crowded with similar “X” marks, and Relaxo had previously agreed to coexist with other entities using similar marks, undermining their claim to exclusivity.
    • Maintained that their use of the “X” mark was honest, concurrent, and had not caused any actual confusion in the market.

    Decision

    The Delhi High Court refused to grant an interim injunction against the defendants. The court observed that:

    • The defendants had been using the “X” mark in conjunction with the “HRX” brand since 2013, indicating honest and concurrent use.
    • Both parties used their respective “X” marks alongside their principal brand names, reducing the likelihood of consumer confusion.
    • The balance of convenience favored the defendants, given their substantial investment in developing the “HRX” brand and the absence of evidence showing actual consumer confusion.

    Ratio Decidendi

    • The court held that the mere similarity of the “X” marks was insufficient to establish infringement or passing off, especially when both marks were used alongside distinctive brand names.
    • Emphasized the importance of considering the overall presentation of the marks, including their use in conjunction with other brand identifiers.
    • Recognized the defendants’ honest and concurrent use of the “X” mark since 2013, which weighed against granting an injunction.

    LEGAL ANALYSIS

    Principles of passing off under common law

    Trade Marks Act, 1999: Sections 29(1), 29(2)(b), 29(4)

    • (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
    • (b) its similarity to the registered trademark and the identity or similarity of the goods or services covered by such registered trademark; or
    • (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which— (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

    Bibliography

    Author: Suhani Sharma