NOW what? The Delhi High Court's recent decision in the Bennett Coleman case

A rather interesting decision was passed by Justice Mukta Gupta on May 31, on the eve of her retirement in Bennett, Coleman & Company v. E! Entertainment LLC.

The case involved a battle between two media behemoths – Bennett Coleman (owner of the Times of India Group) and NBC Universal.

Bennett Coleman (plaintiff) had secured an ad interim injunction on May 14, 2019 against NBC Universal’s E! Entertainment Television (defendant) on the basis of the word “NOW”.  Their claim was that NOW was proprietary to them by virtue of a large number of trademark registrations with NOW as a suffix. The case was fashioned as a quia timet action and was filed in response to E! Entertainment Television’s notice to them about their use of an “E” logo similar to its “E logo” where it mentioned that it had been using NOW in its celebrity news segments bulletins E! Now and E! News Now since September 30, 2007.

A number of interesting issues arose in the case. The central question was whether the mere registration of a number of trademarks with NOW as a suffix was enough for a media house to claim proprietorship over the term NOW per se, especially in the context of news and entertainment. The Court noted the extensive third-party use of NOW in television and entertainment services to rule that there was in fact no such monopoly. This finding is the second in a series of similar findings in relation to media houses attempting to monopolise descriptor terms.

An earlier Division Bench in Living Media India Ltd & Anr v. Alpha Dealcom Pvt Ltd & Ors had noted that “the law demands closer scrutiny when it comes to the use of common words (such as TODAY), that are descriptive of the services or goods offered by the service provider or trader,” while ruling against the Living Media Group in their demand for an injunction in respect of the use of TODAY by a news channel.

In the present case, the defendant was found to be a prior user of NOW since September 2007. The Court noted that the plaintiff had failed to demonstrate any standalone use of NOW that pre-dated the defendant and had also failed to apprise the Court that it had applied to register the mark NOW in Class 38 for the services of “Television & radio broadcasting,” etc. on a proposed user basis. When this application was opposed, it was withdrawn by the plaintiff. The plaintiff had heavily relied on its registration for the standalone word NOW in Class 41 without alluding to the fact that it was registered in 2014 on a proposed use basis and there was no accompanying evidence of use that was relied on either, even as on date.

The Court also noted with disfavour the plaintiff’s repeated stand before the Trademark Registry in various opposition proceedings and responses to office actions, that NOW was “common to trade”. Earlier this year, the Division Bench of the Delhi High Court in the decision of Raman Kwatra v. KEI Industries Limited had cautioned against parties taking conflicting legal positions in the Trademark Office and the Court, and this judement too, takes a similar position.

The defendant sought a dismissal of the plaint, which prayer was denied. The Court noted that the exchange of legal notices in Delhi was sufficient to vest it with jurisdiction over the dispute and the fact that the plaint wrongly claimed the registered office to be in Delhi when it was in fact in Mumbai, was in itself not a game changer.

Shwetasree Majumder is the Managing Partner of Fidus Law Chambers.

Disclaimer: The author represented the defendants in this case.