In CS (COMM) 253/2019-DEL HC- “NOW” is a common word used by number of other entities: Delhi HC vacates injunction order passed against E! Now; dismisses application of Times Group
Justice Mukta Gupta [31-05-2023]

Read Order: BENNET, COLEMAN & COMPANY LIMITED versus E! ENTERTAINMENT TELEVISION LLC.

Tulip Kanth

New Delhi, June 1, 2023: The Delhi High Court has granted relief to E! Entertainment Television LLC by vacating an ad-interim injunction order passed in favour of Times Group restraining the American pay television channel from starting any channel/ programme in India by the mark “NOW” or any other mark deceptively similar to the mark “NOW”.

“From the facts as noted it is evident that though the plaintiff has number of registrations with suffix and prefix “NOW”, it is a common word and is used by number of other entities”, Justice Mukta Gupta asserted.

The plaintiff- Times Group had prayed for an order restraining the Defendant from adopting and using the mark “NOW”, “E NOW” and “E NEWS NOW” or any other mark or name which is identical or deceptively similar to plaintiff’s channel name/ registered mark or mark’s logo style.

The plaintiff also prayed for restraining the Defendant from using the plaintiff’s domain name/ website timesnow.tc, moviesnow.co.in, romedynow.com, economictimes.indiatimes.com/et-now, etc. or any other domain name similar in fashion for any internet site or social media site, account or handle of the plaintiff or to create any third party interest in the domain name currently in use by the defendant and for direction to defendant to maintain accounts of profit illegally earned by them.

Summons in the suit were issued and interim injunction was also granted in favour of the plaintiff restraining the respondent from starting any channel/ programme in India by the mark “NOW” or any other mark deceptively similar to the mark “NOW”.

The defendant thereafter sought vacation of this injunction order dated May 14, 2019.By another interim application, the defendant also prayed for rejection of the plaint filed by the plaintiff with exemplary costs, or in alternative, the return of plaint for presentation before a court of competent jurisdiction.

It was claimed by the plaintiff that the trademarks “TIME”, “TIMES” and “NOW” are the property of the plaintiff company only, and its subsidiaries and affiliates have been allowed to use the same. The plaintiff has been using the series of mark “TIMES” and “NOW” in various combinations, in respect of television channels for more than a decade. It was contended on behalf of the plaintiff that the present suit is limited to class 38 and 41 of the trademark registrations which pertain to “television broadcasting services” and “television based entertainment services” respectively.

It was also submitted that the defendant had not filed any trademark application for ‘E! Now’ or ‘E! News Now’ in India till date and hence, no right could be claimed by the defendant.

The Defendant had put forth a case stating that the earliest registration of the mark “NOW” by the plaintiff was of  July 31, 2008 which was subsequent to the date of use of “E! News Now”  by the defendant, and hence, the “NOW” label and marks had been wrongly registered.

Noting the fact that the plaintiff was not the proprietor of the standalone trademark “NOW” nor prior user of the said mark in Class-38 and the stand-alone registration of the plaintiff in Class-41 was of September 18, 2014 on the proposed to be used basis and had not been used till date, the Bench said, “Thus, the registration of “NOW” simplicitor in Class-41 cannot be used to seek an injunction against the defendant‟s mark “E! Now” and “E! New Now” and the defendant’s first use of “E News Now” was since September 30, 2007.”

It was also clarified by the Bench that whether a mark is a common to trade or not is a question of fact. Similarly, a mark may be a trademark in some jurisdiction and publici juris in others, but a mark which may be common to trade at one time may become distinctive over a period of time, or vice versa.

The Bench made it clear that though the plaintiff has number of registrations with suffix and prefix “NOW”, it is a common word and is used by number of other entities. Further the plaintiff’s own stand is that the mark “NOW” is common to trade as stated by the plaintiff in response to the examination report for ROMEDY NOW under No.2589055 in Class-9, and the counter statement in relation to opposition filed against the mark “NOW” under No.1716885 in Class-9.

The plaintiff had also given a disclaimer on “NOW” in registration for LOVCOM in Class-9, LOVCOM NOW in Class-16 and ROMEDY NOW in Class-38. Thus, the plaintiff cannot be permitted to claim that the word ‘NOW’ used by it as a prefix or suffix has acquired a distinction. Therefore, the defendant who is a prior user of mark ‘E’ or E! with ‘NOW’ and ‘E NEWS NOW’ cannot be injuncted.

It was also observed that the Plaintiff in his plaint had claimed that it has principal office in Delhi which fact to the knowledge of the plaintiff was incorrect and was sought to be amended by way of an application under Order VI Rule 17 CPC. Further the plaintiff on the one hand claimed that the defendant had no transborder reputation affecting the plaintiff’s reputation, thus, denying the existence of the defendant as a prior user, however, on the other hand claimed defendant’s transborder reputation to claim injunction from the Court.

Further, the order granting ad-interim injunction also noted that the same was granted on the representation that the trademark ‘NOW’ had been registered in various categories in favour of the plaintiffs since 2006 but the plaintiff had registration only in Class 41 which was also on the proposed to be use basis and till now the plaintiff had not used the trademark ‘NOW’ simplicitor in Class 41.

Consequently, the ad-interim injunction was vacated by the Bench. The Court also dismissed the Plaintiff’s application under Order XXXIX Rule 1 & 2 CPC and disposed of the defendant’s application.