The Delhi High Court in the passing off case - Entertainment Network (India) Ltd. v. HT Media Ltd. (CS(COMM) 179/2016 & IA No.3316/2016) granted temporary injunction in favour of the Plaintiff, vide judgment dated July 13, 2018.
To summarize the facts of the case, the Plaintiff, that operates radio station called Radio Mirchi, launched its internet radio channel under the mark PEHLA NASHA in 2014. This internet radio channel broadcasts songs of 1990s and is operated through the Plaintiff's website www.radiomirchi.com. The Plaintiff has applied for registration of the trademark PEHLA NASHA and has proved to have accumulated a wide listener base. The Defendant, that operates radio station Fever 104 FM, launched its FM Radio Channel under the mark RADIO NASHA in 2016, which is not acceptable to the Plaintiff.
Considering totality of facts, temporary injunction was granted in favour of the Plaintiff and the Defendant was restrained from using the mark 'RADIO NASHA' on the following grounds:
- Difference in medium (Internet Radio
Channel and FM Radio Channel) – The Defendant's main line
of argument was regarding the difference in medium. It was argued
by the Defendant that the Plaintiff's radio streaming
website is different from the Defendant's
radio channel. It was argued that the
Defendant's radio channel can be heard by listeners who have a
device that can catch a particular frequency and the listeners do
not have any choice of selection of a particular music; while on
the other hand, the Plaintiff's music streaming website,
containing 'PEHLA NASHA' as one of the web pages, requires
internet connection and is not live, unlike a radio.
However, the analogy drawn by the court could not have made the issue clearer. It was stated that the difference in medium is not that of 'apples' and 'oranges' but that of buying apples 'from a supermarket' and 'from a sabzi mandi'. Just like a person buying apples from supermarket can buy the same from a sabzi mandi as well, a patron of music can access radio from either platform. Emphasis was laid on the widespread use of smart phones having the facility of both radio and internet.
- Distinctiveness over the mark
'NASHA' (Hindi word for
The Defendant argued that the word 'NASHA' is devoid of any originality and creativity and is a commonly used term in the field of music that has been used by many third parties as names of music streaming websites and thus, cannot be said to be distinctive of the Plaintiff's services. The Plaintiff's response, ruling out the Defendant's contention was that none of the names mentioned by the Defendant are those of radio stations; the names are those of playlists and none of them are operational in India. The Plaintiff argued that there is no other radio service under the name 'NASHA' and moreover, the Defendant itself having applied for registration of the mark 'NASHA' in various derivative / formative forms, cannot say that the same is generic. It was also observed that the Plaintiff by adopting the word 'NASHA' is attempting to lure the patrons to get intoxicated and addicted to its music and will certainly suffer if any of its patrons, owing to confusion, is directed to the services of the Defendant.
- Confusing similarity between the
marks PEHLA NASHA and RADIO NASHA – It was contended by the
Plaintiff that the dominant part of both the marks is
The court, holding the same view, held that an unwary consumer in the context of music services is likely to remember only the word 'NASHA'. Such a consumer would Google the word NASHA with 'Radio' or 'Music' and would find the Plaintiff's mark 'PEHLA NASHA' as the superseding result. Moreover, there is no difference in the genre of music provided under the rival marks. While the Plaintiff provided 1990s music, the Defendant provided music from 1970s to 1990s.
- Lack of Defendant's bona fide intention in adopting the term 'NASHA' – Another reason why the case tilted in the Plaintiff's favour was failure of the Defendant to prove bona fide intention in adopting the term 'NASHA', when the Defendant himself claimed to be a fierce competitor of the Plaintiff. Taking into account the rivalry between the parties, merit was found in the Plaintiff's contention, that since the Defendant was earlier using the mark 'Radio Fever', it is inexplicable as to why it abandoned the mark with the word 'Fever' and opted for the mark with the word 'Nasha'.
While the judgment seems to be well-founded according to the established principles of trademark jurisprudence, the Defendant has preferred an appeal before the Division Bench. The Bench has ordered to maintain the status quo and listed the hearing on October 11, 2018. It would be interesting to see if this appeal brings a new turn to the case.
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