Media conglomerates dispute and "the nation wants to know"
Introduction
The Delhi High Court restrained the famous media personality Arnab Goswami and Republic TV from using the mark “NEWSHOUR” in the case of Bennett Coleman & Co. Ltd. (Times Now) v. ARG Outlier Median Pvt. Ltd. (Republic TV)[1]. The Court granted an interim injunction in favour of the news channel Times Now in their dispute with their ex-employee, Arnab Goswami for the mark “NEWSHOUR”.
However, the Court declined to interfere with Republic TV’s use of the tagline/mark/title “NATION WANTS TO KNOW”, which was used and popularized by television personality Arnab Goswami during his course of employment with Times Now.
Facts & Arguments
Arnab Goswami served as the Editor-in-Chief at Times Now before launching Republic TV and rose to fame through his live debate show ‘Newshour’ and his tagline “NATION WANTS TO KNOW”. In 2016, when he left Times Now to start his own channel, Times Now initiated several lawsuits against him, including breach of contract, misappropriation of confidential data and trade mark infringement. With regards to trade mark infringement, Times Now sought an injunction against Republic TV from using the marks “NEWSHOUR” and “NATION WANTS TO KNOW”.
Times Now claimed ownership in the registered trade mark “NEWSHOUR” and stated that marks such as “ARNAB GOSWAMI’S NEWSHOUR”, “THE NEWSHOUR”, “THE NEWSHOUR DEBATE”, “NEWSHOUR WITH ARNAB GOSWAMI 9” etc. were violative of their registered trade mark “NEWSHOUR”. They also claimed that Republic TV had ‘wholly and identically incorporated and usurped the most dominant feature’ of their trade mark. Times Now also stated that Republic TV cannot claim that the mark “NEWSHOUR” is generic because they have incorporated the same in their own marks and have also applied for its registration.
Furthermore, Times Now also claimed that they had applied for trade mark registration of their tagline “NATION WANTS TO KNOW” in classes 38 and 41 and based on this application, they had claimed use of the said mark. Times Now further argued being invested with ownership rights for the tagline since it was created by them for use by their employee, Arnab Goswami on his show, during his course of employment.
In response, Republic TV claimed that “NEWSHOUR” is a generic term and their addition of the prefix or suffix and name “ARNAB GOSWAMI” made it easily distinguishable from Times Now’s “NEWSHOUR”. They also claimed that as a result of the modification, there was no likelihood of confusion in the minds of the viewers of both the channels. Republic TV further claimed that the tagline “NATION WANTS TO KNOW” is attached to Arnab Goswami’s image and reputation alone and they also claimed that Arnab Goswami was the one who had spontaneously coined the term.
It is also worth noting that Times Now had applied for the mark “NATION WANTS TO KNOW” on a “proposed to be used” basis and then tried to amend the prior use date later on by stating a “clerical error”. As a result, Republic TV claimed that they lacked any rights or ownership in the tagline/mark.
The Decision
The Court ordered an interim injunction in favour for Times Now, restraining Republic TV from using the mark “NEWSHOUR” or any other deceptively similar mark to its primetime debate show.
In this regard, the Court held that, “merely adding some prefixes or suffixes to the trade mark NEWS HOUR, in my opinion does not help the defendants to claim that the mark which is being used by the defendants is not deceptively similar to that of the plaintiff.” It was also observed that Republic TV could not claim that “NEWSHOUR” was a generic term since they had applied for trade mark registration of the same themselves as well.
However, no relief was granted with regards to the tagline/mark “NATION WANTS TO KNOW” since there was lack of evidence with regards to first use and because Times Now had first applied for the registration of the tagline/ mark on an “proposed to be used” basis and then changed the date of use to an earlier date. The Court stated that a detailed scrutiny of evidence was needed to ascertain the issue regarding the tagline “NATION WANTS TO KNOW” and in the meantime, Republic TV was free to use the same as part of speech and/ or presentation. However, the Court noted that if Republic TV was allowed to use the tagline as a trade mark, in relation to their goods or services, they would have to maintain accounts for such usage and file those accounts in Court every six months.
For any questions, please feel free to write to the author, Ms. Vrinda Sehgal, Associate, at vrinda@iprattorneys.com.
[1] IA No. 7306/2017 in CS [COMM] 434/2017
The article was originally published on www.lexology.com on December 21, 2020 and can be accessed here..
