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Tag: Passing Off

  • 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

  • SECTION 27 OF THE TRADE MARKS ACT, 1999

    The Trade Marks Act, 1999 provides legal protection to registered trademarks, allowing owners to exclusively use and also to sue other trade marks for infringement. Section 27 of the Trade Marks Act also provides statutory protection to unregistered trademarks by upholding common law rights through the passing-off principle. In accordance with section 27 of the Act even though an unregistered trademark cannot be protected through an infringement case, the owner may still pursue legal action if someone tries to mislead consumers or damage the company’s reputation by abusing the mark.

    Let’s discuss section 27 of the Trade Marks Act, 1999 in detail.

    Section 27(1) of the Trade Marks Act:

    According to Section 27(1) of the Trade Marks Act an infringement suit cannot be filed against an unregistered trademark i.e. the trade mark not registered under the Trade Marks Act, by any person. 

    Illustration: 

    A person ‘X’ uses a trademark ‘PickliBoo’ for confectionery goods. The trademark ‘PickliBoo’ of ‘X’ is not registered under the Trade Marks Act. If other person ‘Y’ copies the mark ‘PickliBoo’, ‘X’ cannot file an infringement suit against the copied trademark of the ‘Y’ since the mark ‘PickliBoo’ is not registered by ‘X’. 

    Section 27(2) of the Trade Marks Act:

    Section 27(2) of the Trade Marks Act protects registered as well as unregistered trade mark. This section recognises common law rights of the trade mark owner to take action against any person for passing off goods or services as the goods or services of another person. Accordingly, even if a trade mark is not registered, the owner of such trade mark can still take action under the common law principle of passing off. 

    And, for this, the owner of the unregistered trade mark must prove that the said trade mark has reputation and goodwill in the market, there has been misrepresentation in the market and owing to this the use of the other copied mark would substantially damage the business of the owner of the unregistered trade mark.

    Illustration:

    A person ‘X’ uses a trademark ‘PickliBoo’ for confectionery goods. The trademark ‘PickliBoo’ of ‘X’ is not registered under the Trade Marks Act, however, enjoys substantial goodwill and reputation in the market and have extensive market base. If other person ‘Y’ copies the mark ‘PickliBoo’, ‘X’ can file a Passing off suit against the copied trademark of the ‘Y’.

    Conclusion

    In conclusion, section 27 of the Trade Marks Act restricts legal action for infringement to registered trademarks only. Nonetheless, it recognizes passing off as a powerful remedy to protect business reputation and goodwill for unregistered trademarks.

    Learn more about common law rights and passing off at WIPO and IP India.

    Register your trademark with us starting at only Rs. 999/-