March 28, 2016     

 India: “Pehla Nasha*” Not Pehla Enough For Radio Mirchi

 

(*Pehla, a Hindi word, when translated to English means ‘First’. Nasha, also a Hindi word, when translated to English means ‘Intoxication’.).

 

In a recent trademark passing off dispute involving Entertainment Network (India) Ltd. and HT Media Ltd., the Delhi High Court dealt with whether a prima facie case had been made out by the former for grant of an ad-interim injunction against the latter.

 

Brief Facts of the Case-

 

Entertainment Network (India) Ltd. trading as ‘Radio Mirchi’ (hereinafter referred to as the ‘Plaintiff’) filed a suit in the Commercial Division of the Delhi High Court, numbered as CS(COMM) No. 179/2016, seeking, inter alia, an injunction against HT Media Ltd. trading as ‘Fever’ (hereinafter referred to as the ‘Defendant’), restraining the Defendant from using the trademark/tradename ‘Radio Nasha’ or any other mark deceptively similar to that of the Plaintiff’s. The Plaintiff’s grievance is that it is the exclusive owner of the trademark ‘Pehla Nasha’ used by it with respect to an internet radio channel and the Defendant is passing off the Plaintiff’s said trademark by using the mark ‘Radio Nasha’ in respect of its radio channel.

 

Contentions of the Plaintiff-  

  1. The Plaintiff operates an internet radio channel, ‘Radio Mirchi’, a sub-channel of which is ‘Pehla Nasha’ which provides music to its listeners.

  2. The Plaintiff had applied for registration of the trademark ‘Pehla Nasha’, which was not granted at the time of instituting the suit. The Plaintiff subsequently got to know of the Defendant passing off its aforesaid trademark by using ‘Radio Nasha’, when the Defendant had applied for registration of its trademark ‘Radio Nasha’.

  3. The word ‘Nasha’ forming a part of the trademark ‘Pehla Nasha’ is in the ownership of the larger trademark ‘Pehla Nasha’ of the Plaintiff. Hence, the Defendant cannot use the word ‘Nasha’ from ‘Pehla Nasha’ in its FM radio channel name, ‘Radio Nasha’.

Contentions of the Defendant-

  1. The Defendant runs an FM radio channel/station under the trademark/tradename ‘Radio Nasha’.

  2. The Defendant, through Sr. Advocate Mr. P. Chidambaram, contended that the Plaintiff was not the exclusive owner of the trademark ‘Nasha’ forming a part of the trademark ‘Pehla Nasha’ since there were other music and song suppliers, whether through internet channels or radio channels, who use the word ‘Nasha’ as part of their trademark/ tradename and who were in business prior to the alleged first use by the Plaintiff of ‘Pehla Nasha’ in 2014. Hence, the Plaintiff was not entitled to an injunction.

  3. The Defendant filed an affidavit citing various music websites and channels on the internet using the word ‘Nasha’, since 2006 (nashamusic.com), 2012 (Nepali Nasha on 8tracks.com) and 2013 (Haroon Ka Nasha on 8tracks.com), prior to the adoption of and use by the Plaintiff of ‘Pehla Nasha’, in 2014.

Counter-Contentions by the Plaintiff-

  1. Responding to the Defendant’s contention that the word ‘Nasha’ is being used in many playlists, the Plaintiff, through Sr. Advocate Mr. Sandeep Sethi, distinguished the playlists of ‘Nepali Nasha’ and ‘Haroon Ka Nasha’ as available on the music sharing website 8tracks.com with respect to the use of the word ‘Nasha’ as not affecting the ownership of its trademark ‘Pehla Nasha’. This was based on the argument that though both the aforementioned playlists enable listeners to listen to songs on the repertoire of these playlists, the listeners can control the playlists by skipping the songs. These aspects distinguish such music channels from those of the Plaintiff, where the listener cannot choose a specific song or control the playlist. The same was contended for all playlists with the word ‘Nasha’ on the websites of itunes.apple.com, 8tracks.com and nashamusic.com.

  2. The Plaintiff also contended that playlists on itunes.apple.com have come into operation after 2014 and that the iTunes website was not available in India till 2016, therefore, not being users of the word ‘Nasha’ prior to the Plaintiff.

Single Judge’s Decision-

 

The Learned Single Judge held vide its order dated March 17, 2016, that there was prior use by other parties and, thus, there was no prima facie case of passing off in the present suit. In the absence of any grounds for the grant of an ad-interim injunction, temporary injunction was not granted. In this regard, the Learned Single Judge observed the following:

  • That the suit was at an initial stage where the pleadings were not completed as the Defendant was yet to file its written statement and the Plaintiff its replication thereto.

  • That in the short period of time since the suit was instituted, both the parties still had to file various additional documents to support their respective pleas. Hence, it would not be appropriate to grant an ad-interim injunction and stop an existing FM radio channel of the Defendant.

  • That the grant of an ad-interim injunction till the completion of the pleadings of the parties, hearing of the case and disposal of the suit under Order XXXIX Rules 1 & 2 of the Code of Civil Procedure, 1908, was under question in the suit.

  • That since there exist other music suppliers and websites who had adopted the word ‘Nasha’ for their music and song channels prior to the use by the Plaintiff, the Plaintiff is not the exclusive owner and user of the word ‘Nasha’ forming part of its trademark ‘Pehla Nasha’. The use by the Defendant of the word ‘Nasha’ is relatable to and adapted from the use of ‘Nasha’ by the other music suppliers.

  • That granting an ad-interim injunction would have the effect of decreeing the suit at an interim stage itself without giving an opportunity to the Defendant, who prima facie had defences, to contest and seek the dismissal of the suit on the merits like the ground of prior use of the word ‘Nasha’ by other parties, thus, depriving the Plaintiff of an exclusive ownership. Subsequently, aggrieved by the aforesaid decision, the Plaintiff immediately filed an appeal against it, numbered as FAO(OS)(COMM) 8/2016.

Divisions Bench’s Decision-

 

Hearing the matter on appeal, the Division Bench, vide its order dated March 21, 2016, observed that to interfere against an order declining to grant an ad-interim injunction, perversity has to be shown in the finding of the Learned Single Judge and the present case was not one where an ad-interim injunction should have been granted by the Learned Single Judge, who committed no error in postponing the same till the Defendant files its written statement and reply to the injunction with the required documents. The appeal was, thus, dismissed on March 21, 2016, as it is not a case where the denial of a protem ad-interim injunction, pending hearing of the injunction application, was an erroneous exercise of jurisdiction by the Learned Single Judge. Thus, the Division bench of the Delhi High Court dismissed the appeal.

 

Concluding Remarks-

 

The aforesaid decision of the Division Bench of the Delhi High Court confirms the well-settled position in law that an appellate bench will not usually interfere with the decision on grant of injunction by the Single Judge/Trial Court if the same has been passed based on sound principles of law, and does not prime facie cause irreparable injury to the Plaintiff.

 

      

 

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