The case of Time Incorporated V. Lokesh Srivastava & Anr 2005 (30) PTC 3 (del) is of significance from the perspective of the extent and nature of relief awarded by the Court in infringement proceedings. It facilitates the philosophy of deterring trademark infringements and not just compensating the aggrieved party against the losses suffered.
Facts of the case
Time Incorporated, a registered proprietor of the Trademark "TIME" in about 150 countries, is a subsidiary of Time Warner Incorporation, and publishes internationally renowned magazines like ‘TIME’ and ‘TIME ASIA’, known all over the world for their good reporting and writing. It launched international edition of Time magazine named ‘TIME ASIA’ in the year 1945. Trademark ‘TIME’ is registered in India and the cover design with red border device is protected under the Copyright Laws.
It came to the notice of Time Incorporated that a magazine styled as "TIME ASIA SANSKARAN" was being printed, published and distributed for sale with the phrase "now in Hindi also a News Magazine of international standards". It was not only that the font style and size were identical to the Time’s trademark but also the red border in the magazine had been copied and also it claimed to have an office in New York USA. The address stated therein was with intent to deceive the public.
Time alleged that its trademark "TIME" had been dishonestly used by Lokesh Srivastava, et all, with an intention of free riding on their international goodwill and reputation. The latter advertently represented to the public that their magazine was the Indian version of the world-renowned magazine "TIME". The Time had actually suffered loss in revenue and produced the bill for advertisement in the infringers’ magazine that they received in one of their branch offices. Thus Time’s clients were getting diverted to the infringers on the false believe that the infringer’s magazine was associated with that of the Time.
In the light of the foregoing facts, Time prayed for permanent injunction against the infringers from launching, publishing, issuing and advertising their magazine under the trademark "TIME ASIAN SANSKARAN" and from using the component "TIME ASIA" or "TIME" together with or separately in conjunction with any prefix or suffix or from using the distinctive red border, design. Time also prayed for delivery up of all the infringing materials, including the equipments used to produce infringing materials. It claimed for damages amounting to Rs. 12.5 lacs for losses suffered due to the infringing activities, Rs 5 lacs for the loss of their reputation and another 5 lacs by ways of exemplary damages.
The infringers did not appear before Delhi High Court and therefore the Court proceeded ex parte against the defendants.
Decision
From the perusal of the affidavit and evidence produced by the Time, the Court ruled that Time is the registered proprietor of the mark "TIME" and its magazine enjoys tremendous good will and reputation globally. The infringer’s mark is deceptively similar to that of Time and this leads to association of the mark with the latter. The Court found that the infringer’s magazine is a slavish copy of the Time’s magazine and held:
‘the infringer’s do not have the right to use the Time’s trademark "TIME" in any manner whatsoever and they also do not have the right to use the distinctive red border on their magazine, as it is identical of the cover design of the Time’s magazine’
However, Court did not award the damage of 12.5 lacs on the ground that the Time had failed to prove as to how and on what basis it had arrived at the above-mentioned figure. Instead Court ordered the infringer’s to render account of their profits. The Court awarded the Time damages of Rs. 5 lacs for the loss of their good reputation.
Deciding on the punitive or exemplary damages of 5 lacs prayed for by the Time, Court drew out the distinction between the two forms of damages namely: the compensatory damages and the punitive damages. According to Court, former are awarded to compensate the plaintiff for the losses suffered whereas the latter are awarded to deter the infringer from violating the law again. Court was of the opinion that in the instant case, loss was caused not only to the Time but also to the innocent readers who mistook the defendant’s magazine to be a publication of the Time. Also that since the infringers very well knew that they are working contrary to law, it is unlikely that they would have kept correct account of their profits. The court found that this is a fit case for granting punitive damages.
The Court passed permanent injunction in favour of Time restraining the infringers from launching, publishing, issuing and advertising their magazine under the trademark "TIME ASIAN SANSKARAN" and from using the component "TIME ASIA" or "TIME" together with or separately in conjunction with any prefix or suffix or from using the distinctive red border design. The Court made an order for delivery up of all the goods bearing the impugned mark on them. Also, Court decreed an amount of 5 lacs as compensatory damages and another 5 lacs as punitive damages in favour of the Time.
Comments
The Courts are generally reluctant in granting exemplary or punitive damages in case of infringement of trademark. In the backdrop of the blatant and ever-increasing infringement of well-known trademarks in general and the circumstances of the case in particular, the Court rightfully awarded punitive damages against the defendants. It is necessary to punish those who for their commercial end commit fraud on the innocent public. Such decisions have a deterrent effect on those who have the propensity to free ride on others’ trademark.
© Lex Orbis 2005
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