The Delhi High Court recently denied granting interim relief by way of injunction sought by TV 18 Broadcast Limited (“the plaintiff”) on the basis of its mark against Bennett, Coleman and Company Limited (“the defendant”) which had subsequently adopted and started using the mark “Bhaiya Ji Superhit”.
The plaintiff, belonging to Network18 Group based in Mumbai, owns and operates various national channels such as News18, CNBC-TV18 and CNN News18. The plaintiff filed a trademark application for registering the mark “” on December 29, 2016, under classes 38 and 41 and secured trade mark registrations for the same in the stated classes under registration numbers 3443722 and 3443723 respectively. However, the registration for the said mark in class 41 was granted with the disclaimer – Registration Of This Trade Mark Shall Give No Right To The Exclusive Use Of The Word Separately. The plaintiff mentioned that on December 26, 2016, it first aired the Hindi television show under the mark / on News18 India and has broadcasted over 1,200 episodes ever since. The plaintiff also submitted revenue generated by the show under the said mark for the years 2017-2018 to 2021-2022.
On January 2, 2022, the plaintiff came to know about another show titled being launched by the defendant wherein newsworthy issues were to be brought to light through humour and satire. Owing to the alleged similarity as well as the alleged similar nature of the shows, the plaintiff issued a cease-and-desist notice to the defendant on January 10, 2022. The defendant in response requested the plaintiff to withdraw the notice stating that there seems no likelihood of confusion between the two competing marks. The plaintiff then again sent a legal notice which the defendant refuted. Consequently, the present suit was filed to restrain the defendant from infringing the trademark of the plaintiff, passing off and other ancillary reliefs.
The defendant argued that the show “Bhaiya Ji Superhit” is an interactive thirty-minute infotainment programme that has become immensely popular since its first episode that aired on January 8, 2022. It was highlighted by the defendant that the mark “Bhaiyaji Kahin” of the plaintiff was registered with the condition that “Registration of this trade mark shall give no right to exclusive use of the word separately” which reflects that the plaintiff cannot claim exclusive right on the term “Bhaiyaji”. The defendant argued that the word “Bhaiya” or “Bhaiyaji” is a generic Hindi word which means “brother” and therefore, the plaintiff cannot claim exclusive use of the said word/term.
On the question of the likelihood of confusion, the defendant argued that the viewers of the shows identify the same with two different news channels “Times Now Navbharat” and “News18”, and the formats are completely different. The show of the plaintiff is in the form of a news debate show, whereas the show of the defendant is a scripted and non-interactive infotainment programme that is hosted by a comedian.
Responding to the defendant’s contention regarding the disclaimer in the plaintiff’s registration, the plaintiff argued that its class 38 registration includes no such disclaimer and thus the plaintiff is entitled to complete protection of the mark “Bhaiyaji Kahin”. It was further contended that though the plaintiff is not claiming exclusive rights over the term “Bhaiyaji”, the said term is the most dominant part of the plaintiff’s registered trademark.
The defendant answered that the relevant class which deals with television programmes is class 41 and the disclaimer/condition is included in class 41 registration. Once the plaintiff agreed on conditional registration, it cannot subsequently claim exclusivity on the term “Bhaiyaji”, which is also not possible as per Section 17 of the Trade Marks Act, 1999. The term “Bhaiyaji” is common to trade and is used often in television as well as radio programmes. The defendant also pointed out that during the examination stage of the plaintiff’s mark, the plaintiff differentiated its mark “Bhaiyaji Kahin” from an earlier mark “Bhaiyaji Aisa Kyun”, and therefore, the plaintiff should now be estopped from taking a different stand when it comes to the comparison between the marks of the plaintiff and the defendant.
After hearing both sides, the Court noted the Nice Classification in respect of classes 38 and 41 and observed that television programmes, including news-related programmes, fall under class 41 and not class 38. Class 38 includes telecommunication services, which include television broadcasting but there is a clear exclusion in respect of television programmes in class 38. Therefore, while names of television channels, such as Times Now, CNN News18, and News18 will fall under class 38, the names of programmes that are telecast on these channels would be the subject matter of class 41, and for the purpose of ascertaining infringement, the relevant class would be 41 wherein a disclaimer is inserted in the plaintiff’s registration.
The Court further observed that the sole commonality between the rival marks is the term “Bhaiyaji”. There is no similarity between the words “Kahin” and “Superhit”. In view of the disclaimer in respect of the term “Bhaiyaji” under class 41, the plaintiff cannot restrict the defendant from using the said term. Reference was also made to Section 28(2) of the Act, which provides that the exclusive right to use a trademark shall be subject to any condition and limitation that is part of the registration granted. The Court also considered that the term “Bhaiyaji” is a word of common use in certain states of India, including Uttar Pradesh and Bihar and took note of the previous stance of the plaintiff during the examination stage of its mark where it differentiated its mark from an earlier mark containing the word “Bhaiyaji” and remarked that the plaintiff cannot be permitted to approbate and reprobate.
On the aspect of passing off, the Court noted that the formats of the respective shows are quite different, and they are shown on different television channels. Therefore, the Court expressed a prima facie view that there does not seem to be a likelihood of confusion between the two television shows. On the question of the plaintiff’s mark “Bhaiyaji Kahin” having acquired distinctiveness on account of the long user, the Court observed that this can only be examined in trial and cannot be the basis for the grant of an interim injunction. The court held that the plaintiff has failed to establish a prime facie case for the grant of injunction and thus the application seeking interim injunction was dismissed.