HT MEDIA LIMITED & ANR. vs HINDUSTAN NEWS NETWORK & ORS.
$~42
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 21st March, 2024
+ CS(COMM) 681/2023 & I.A. 18978/2023, I.A. 6116/2024
HT MEDIA LIMITED & ANR. ….. Plaintiffs
Through: Mr. Rishabh Rao, Advocate.
versus
HINDUSTAN NEWS NETWORK & ORS. ….. Defendants
Through: D-1 is ex-parte.
Mr. Parva Khare and Ms. Shweta Sahu, Advocates for D-2.
Mr. Varun Pathak, Mr. Shyamal Anand and Ms. Prasidhi Agrawal, Advocates for D-3.
Mr. Sauhard Alung, Advocate for D-4.
CORAM:
HON’BLE MR. JUSTICE SANJEEV NARULA
JUDGMENT
SANJEEV NARULA, J. (Oral):
1. The Plaintiffs, registered owners of the trademarks HINDUSTAN, , HINDUSTAN TIMES, www.hindustantimes.in and www.hindustantimes.co.in, have filed the present suit seeking to prevent infringement and passing off of their marks by Defendant No. 1, who uses the trade name HINDUSTAN NEWS NETWORK, trademarks and , and the domain name www.hindustannewsnetwork.in for dissemination of news and information on the internet, the same way as the Plaintiffs.
The Plaintiffs case
2. Plaintiff No. 1 is a leading media house in India, with expansive operations in the business of print media, radio, internet etc. Plaintiff No. 1 derives its business from the Hindustan Times Limited, their predecessor-in-interest. Their flagship publication Hindustan Times, was founded in 1924 and has over time, established itself as a newspaper with editorial excellence, innovation, and integrity. In addition to print circulation, Plaintiff No. 1 also maintains the websites www.hindustantimes.com and www.livehindustan.com for online news publication, having traction of about 65 million and 56 million users, respectively. Plaintiff No. 2 is a subsidiary of Plaintiff No. 1.
3. The Plaintiffs publish their newspapers in various languages, including Hindi. Since the 1930s, their Hindi segment has been sold under the mark, which has about 19 editions circulated across Delhi, Uttar Pradesh, Uttarakhand, Bihar etc. The paper is also available on Plaintiffs website www.livehindustan.com. The rights in the trademarks HINDUSTAN and were assigned by Plaintiff No. 1 to Plaintiff No. 2 under the Deed of Assignment dated 31st March, 2016.
4. The Plaintiffs hold several registrations for their trademarks , HINDUSTAN, and HINDUSTAN TIMES, www.hindustantimes.in and www.hindustantimes.co.in across classes 16, 38, 41 and 42, details whereof are enumerated in paragraph No. 23 of the plaint. The original artistic work in the device also qualifies for protection under the Copyright Act, 1957.
5. Due to open and extensive use by the Plaintiffs, the afore-noted trademarks are exclusively associated with the news publications of the Plaintiffs. The revenue generated by Plaintiff No. 2 from the sale of newspaper in the year 2022-23 amounted to Rs. 47,6444 lakhs. Similarly, the sales figures of Plaintiff No. 1 for the Hindustan Times newspaper for the year 2020-21 ranged up to Rs. 52,810 lakhs. The publicity expenses borne by both Plaintiffs are set out in paragraph No. 27 of the plaint.
6. Defendant No. 1, Hindustan News Network, operates the domain name www.hindustannewsnetwork.in for publishing, storing, hosting, making available and communicating, literary and artistic works viz. news, articles, stories, and the photographs associated therewith, in Hindi language to Indian readers.1 The impugned website prominently displays the mark , and is actively promoted by Defendant No. 1 via social media platforms such as Facebook, YouTube and Instagram. As per the information available on the WhoIs portal, the impugned website was recently created and registered on 20th March, 2023. The first video posted on Defendant No. 1s YouTube channel also dates 19th March, 2023. However, an examination of the social media pages of Defendant No. 1 reveals use of around October, 2021. Prior to this, Defendant No. 1 was using the mark .
7. Upon learning of Defendant No. 1s use of the impugned mark and website, Plaintiffs addressed a cease-and-desist notice to Defendant No. 1 on 22nd August, 2023, which was responded to on the same date. In their reply, Defendant No. 1 stated that their trade name Hindustan News Network is distinct from Plaintiffs trademarks and they do not use the trademark HINDUSTAN. Additionally, Defendant No. 1 informed Plaintiffs about their trademark application No. 5178652 in class 38 for the mark , filed on 19th October, 2021 on a proposed-to-be-used basis. This application has been objected to by the Trademarks Registry. While the application states that mark has not been used yet, the Facebook page of Defendant No. 1 depicts use of in 2021.
8. The manner and style of the marks adopted by Defendant No. 1 and are virtually identical to the Plaintiffs trademark . The use of the impugned marks, impugned website, and Defendant No. 1s trade name is intended to deceive the public and misrepresenting an association with the Plaintiffs, which amounts to infringement and passing off of the Plaintiffs registered marks.
Proceedings in the suit
9. At the stage of issuance of summons on 27th September, 2023, the Court passed an ad-interim injunction restraining Defendant No. 1 from using the mark HINDUSTAN as well as the logo or any other name, including HINDUSTAN NEWS NETWORK, which is identical or similar to Plaintiffs name/ mark HINDUSTAN. Specifically, Defendant No. 1 was restrained from using the logo .
10. Defendant No. 1 was served with the summons on 09th October, 2023, however, they failed to file join the proceedings or file a written statement within the prescribed timeframe. This led to closure of their right to file the same on 15th March, 2024. Even today, there is no appearance on their behalf. Accordingly, Defendant No. 1 is proceeded ex-parte.
11. Counsel for Defendants No. 2 to 4 inform that the said Defendants have complied with the directions issued by this Court on 27th September, 2023.
Analysis and findings
12. The Court has considered the afore-noted contentions. A comparison of the Plaintiffs marks with Defendant No. 1s marks is as follows:
Plaintiffs marks/ website
Impugned marks/ website
www.hindustantimes.in
www.livehindustan.com
www.hindustan.in
www.hindustannewsnetwork.in
13. The field of business operations of both parties is identical i.e., publication and dissemination of news through online modes. A perusal of the impugned marks reveals the word ??????????? as the dominant feature, which is likely to be recalled by the users for identifying the source of services provided by the Plaintiffs. The word is also written in an identical font and style as in the Plaintiffs registered mark , which enhances the possibility of a consumer linking the impugned marks with the Plaintiffs. Thus, the Court concludes that the impugned marks are visually, phonetically, and deceptively similar to the Plaintiffs trademarks. Through the material placed on record, the Plaintiffs have sufficiently established their continuous use of the mark HINDUSTAN and prior to the first demonstrated use of the impugned marks by Defendant No. 1. Further, the impugned website and Defendant No. 1s trade name wholly subsume the Plaintiffs registered trademark HINDUSTAN, which also forms an integral component of their domain names. Given these similarities in the mark and identity in services for which the same are used, it is evident that Defendant No. 1 has infringed the Plaintiffs registered trademarks.
14. As noted above, Defendant No. 1 has refrained from contesting the suit, despite sufficient knowledge of the proceedings. In these circumstances, the present suit is liable to be decreed in favour of the Plaintiffs, as per Order VIII Rule 10 read with Order XIII-A of the Code of Civil Procedure, 1908, as applicable to commercial suits, and Rule 27 of the Delhi High Court Intellectual Property Rights Division Rules, 2022.
Relief
15. Accordingly, the suit is decreed in favour of the Plaintiffs and against Defendant No. 1 in terms of paragraph No. 86 (a) to (d) of the plaint. As regards the prayers against Defendants No. 2 to 4, as sought in paragraph No. 86 (f), (h) and (i), the same have already been fulfilled under the directions issued by this Court on 27th September, 2023.
16. Counsel for Defendant No. 2 submits that they have no objection in transferring the impugned domain name www.hindustannewsnetwork.in in favour of the Plaintiffs. It is ordered accordingly, subject to the Plaintiffs executing the necessary formalities for effecting the transfer.
17. Counsel for Plaintiffs, on instructions, does not press for the relief of rendition of accounts, damages, and costs prayed for in paragraph No. 86(j) to (l) of the plaint.
18. Plaintiffs are permitted to file a copy of this judgment and decree before the Trademarks Registry for information.
19. Decree sheet be drawn up.
20. The suit and pending applications are disposed of.
SANJEEV NARULA, J
MARCH 21, 2024/d.negi
1 impugned website.
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CS(COMM) 681/2023 Page 2 of 2