By Nitika Sinha and Bhanu Dhingra
In a recent legal tussle between two media giants TV18 Broadcast Limited (the plaintiff) filed an application seeking interim relief against Bennet Coleman (defendant) requesting the Delhi High Court[1] to stop the use of the mark “Bhaiya Ji Superhit”. The claim hinged on the allegation that the name bore a striking resemblance to the plaintiff’s own show, “Bhaiyaji Kahin” and could potentially confuse the audience due to the similarity in both the titles and the nature of the programs.
At the heart of the dispute was the question of whether the two trademarks were similar enough to create confusion amongst public. The Court decided not to grant the interim relief, highlighting that the plaintiff’s case did not show enough prima facie merit to justify halting the defendant’s use of the mark.
Plaintiff’s Stand: We were here first!
In a bid to safeguard its intellectual property, the plaintiff argued that its trademark “Bhaiyaji Kahin” should be entitled to complete protection under class 38[2], given that there was no disclaimer on the term “Bhaiyaji”- the most distinctive and essential part of the mark.
The plaintiff claimed that the key element had become synonymous with the show, which has been on air for over a decade. Over time, the name had gained immense recognition and developed a unique, distinctive character, making it a valuable part of the brand’s identity. The use of the mark by the defendant was not just coincidence, but rather a deliberate act of dishonesty. It can be seen as an attempt to benefit from the goodwill and reputation the plaintiff had painstakingly built over years of uninterrupted success.
Defendant’s Defense: Apples and Oranges, Not identical Twins!
The defendant, made a compelling case that the two shows were fundamentally different in format. “Bhaiyaji Kahin”, the plaintiff’s show was set in an outdoor environment where the anchor interacted with public, discussing serious matters of public interest. In contrast, the defendant’s show “Bhaiya Ji Superhit”, was a completely different show- hosted by a stand-up comedian and filmed indoors, it used humour and satire to provide social commentary. Basis on the stark contrast in both content and tone, the defendant argued, that it is unlikely for the audience to confuse between the two.
They contended that the relevant class for protection should be class 41[3], the one covering entertainment services rather than 38, as argued by the plaintiff. The defendant pointed to a previous objection raised by the Registry itself. When the plaintiff sought to register “Bhaiya Ji Aisa Kyu” under class 41, the Registry had rejected the application arguing that the mark was too similar to existing marks, containing the words “Bhaiya”. The plaintiff, however, had then argued that the marks were dissimilar- a stance that seems to conflict with their current position in the dispute.
Court’s Observations
The High Court ruled that television programs, including news shows, fall under class 41 and not 38, which is reserved for broadcasting services like TV Channel including Times Now, CNN etc.
Since TV18’s class 41 registration included a disclaimer-“REGISTRATION OF THIS TRADE MARK SHALL GIVE NO RIGHT TO THE EXCLUSIVE USE OF THE WORD SEPARATELY” the Court stated that the Plaintiff could not claim exclusivity over “Bhaiyaji”.[4] This term is widely used as a generic reference to ‘brother’, making it non-distinctive in nature. Simply put, a common word cannot become the sole property of one entity. The Court pointed out an inconsistency in their legal stance. In a previous trademark dispute, the plaintiff had argued that marks should be assessed as a whole, and not dissected word by word. Yet, in this case, they attempted to isolate “Bhaiyaji” to assert their rights- something the Court was quick to dismiss.
On the issue of passing off, the Court found no real risk of consumer confusion, since these two shows had completely different formats and target audiences. The plaintiff’s show, “Bhaiyaji Kahin” was an unscripted, interactive news show featuring an anchor/ journalist, while the defendant’s show “Bhaiya Ji Superhit” was a scripted, non-interactive show hosted by a standup comedian. With such stark differences, the Court saw no reason to believe that the viewers would mistake one for the other.
Trademark≠ Common Culture
This case is not just about two rival media houses fighting over “Bhaiyaji”- it is a classic lesson in trademark law, where common words and classification battles take center stage. The Delhi HC’s ruling reinforces the principle that generic terms, especially those deeply ingrained in everyday language, cannot be monopolized.
A particularly interesting spin-off in this dispute was the classification debate. The court’s ruling ultimately favored the Defendant concluding that TV shows by nature, belong in Class 41- where TV18’s registration had disclaimer, weakening their exclusivity claim. Moreover the Trade Mark Registry itself had imposed limitations on the use of the term “Bhaiyaji” since the plaintiff agreed on conditional registration of the same and therefore no exclusive rights on the same.
While TV18 may push its arguments further in trial, one thing remains clear: you can trademark a brand, but you can’t own a word that belongs to a common culture.
Feba Sara Vinu , Assessment Intern at S.S. Rana & Co. has assisted in the research of this article.
[1] 2023 SCC OnLine Del 38.
[2]https://www.indiafilings.com/learn/trademark-class-38-telecommunications/
[3]https://www.indiafilings.com/learn/trademark-class-41-education-entertainment-and-training/
[4] Section 17 of Trademarks Act, 1999.