Now is not the time for injunctions

In the recent case of Bennet, Coleman & Company v E! Entertainment Television LLC, the Delhi High Court vacated an interim injunction against entertainment industry giant, E! Entertainment Television, over the use of the term Now. Bennet Coleman had been granted the order in 2019, restraining the defendant from starting any channel or programme in India using that term or deceptively similar marks.

The plaintiff, under the name of the Times Group, operates many businesses in print media, television broadcasting and channel distribution. It has trademarked Time, Times, Now and their derivatives, for its channels Times Now, ET Now, Mirror Now, Movies Now, and Romedy Now. Since October 2008, the plaintiff has used the E Now logo for entertainment and film review shows. E stood for entertainment and Now linked it to the Times Group. Their trademark applications for E Now marks and logos in classes 38 and 41 were opposed by the defendant, on the basis of existing rights.

The plaintiff claimed that the defendant had asserted its proprietary rights to E! Now and E! News Now for television entertainment services in class 41, but had filed no trademark application in India. The plaintiff has more than 250 registrations for the mark, Now, with 78 registrations in class 38, and 76 in class 41. It claimed exclusive rights to the Now family of marks. The defendant’s marks were said to constitute infringement and passing off.

The defendant contended it began using E! News Now internationally in 2007, the plaintiff’s earliest registration being in July 2008. It argued that the Now label and marks were wrongly registered in the plaintiff’s favour. The injunction was for class 38, in which the plaintiff had no registered rights for the mark. The defendant averred the plaintiff concealed its response to the examination report for Romedy Now, in which it accepted the mark, Now, had no exclusivity being common to the trade and that several third parties were also using it.

The plaintiff accepted it was not using Now as a standalone mark, and argued that no cause of action arose in Delhi. The defendant’s E! family of trademarks did enjoy a transborder reputation in India. However, the plaintiff argued that substantial evidence was needed to prove the mark was common to the trade.

The court held that it had territorial jurisdiction to hear the case as the plaintiff had a subsidiary office in Delhi, at which notices had been served.

The court found that the injunction had been issued based on claims for registration of the Now trademark in various classes; however, only classes 38 and 41 were relevant here. The plaintiff did not have a standalone proprietary interest in the mark in class 38, and the registration in class 41 was filed in 2014 on an intent-to-use basis, remaining unused up to the hearing. The class 41 registration could not be used to seek an injunction, as the defendant’s first use of E News Now was in 2007.

Following leading cases, the court held that an infringement action is a statutory remedy, allowing registered proprietors of a trademark to enjoy exclusive rights. While the plaintiff held registrations for various Now forms, the court held that Now itself is a common word, used by other entities.

The plaintiff had admitted the term was common to trade and disclaimed using the sole description, Now, in three registrations, including one in class 38. The plaintiff could not subsequently say to the contrary that the term is distinctive. The defendant was using E and E! with Now and E News Now, before the plaintiff.

The court held the suppression of material facts against the plaintiff, for incorrectly stating its principal office was in Delhi. The plaintiff changed its stance on the defendant’s transborder reputation between seeking an injunction and trying to refute the defendant’s prior rights. The court vacated the interim injunction against the defendant.

This case is a guide to whether an interim injunction should be continued against a party with prior international rights and without dishonest intentions. Taking contrary stances at different stages to suit a party’s convenience is unjustifiable. Interim injunctions based on misrepresented facts cannot be maintained, especially when good faith, prior adoption exists over a significant period, as against non-existent rights in a mark in public use.