Republic TV gets relief from Calcutta HC in passing off suit [Read Order]

The Calcutta High Court recently granted relief to Arnab Goswami’s AGR Outlier Media Asianet News Pvt. Ltd. (plaintiff) in a passing off suit citing infringement of Republic TV’s trademark..Trademark infringement had been alleged on the part of Shailputri Media Pvt. Ltd. (defendant) in running an internet portal under the domain name “www.republichindi.com." The domain name was obtained on May 6, 2017, the same date on which Goswami’s Republic TV was launched..Justice Debangsu Basak of the Calcutta High Court found that,.“On a visual appreciation of the two marks, it appears that, the mark used by the defendant is deceptively similar to that used by the plaintiff. A person may be misled to understand that the defendant is a part of the plaintiff."Calcutta High Court.The plaintiff argued that even prior to May 2017 launch, the launch of Republic TV was advertised on a nation-wide basis in the preceding months. The trademark for “Republic” was obtained prior, on November 20, 2016, the plaintiff told the High Court..In these circumstances, it was contended that there is every likelihood of the defendant had copied the trademark of the plaintiff. It was the case of the plaintiff that domain name used by the defendant was deceptively similar to Republic TV and that it amounted to passing off. A legal notice sent to the defendant on this count also went unanswered, the plaintiff submitted..The defendant, on the other hand, countered that the name of “Republic Hindi” was conceptualised and implemented by itself. Inter alia, it was argued that the plaintiff was seeking to monopolise the use of the word “Republic”, although it was a generic word with nothing distinctive about it. To buttress this argument, reference was also made to other media outlets with the word “Republic” as part of its brand such as ‘News Republic’, ‘online Republic Malayalam’, ‘online Republic – Tamil’ and ‘news republic India.’.The plaintiff does not have any right over the word “Republic, and, therefore, the plaintiff could not restrain the defendant from using the same, the defendant argued..It was also pointed out that the defendant’s Republic Hindi portal was also launched on May 6, 2017. Therefore, the defendant could not have had any prior knowledge of the plaintiff’s channel which had also launched on the same date, it was argued. The defendant claimed the domain name “www.republichindi.com” was an honest, concurrent and bona fide adoption..The Court, however, observed marked similarities between the logo of Republic TV and Republic Hindi. Further, even though the two parties operated on different modes of media, the Judge observed,.“Although the plaintiff and the defendant are using different media for airing their products, however, at this age of technological development, a person who has access to the television programmes on a television is more likely than not to have access to the Internet.”.The Court proceeded to observe that while the claims of the defendant regarding bonafide adoption of its domain name required consideration, there was nothing on record to suggest that it had conceptualised “Republic Hindi” concurrently with the plaintiff..“The user starts on the same day as that of the plaintiff. However, the plaintiff used the mark prior to the defendant as would appear from the advertisements of March 2017 and April 2017. Therefore, prior to the defendant purchasing the domain name ‘www.republichindi.com’, the public at large was made aware by the plaintiff that, there would be a launch of a TV channel under the name and style of ‘Republic TV’.”.In view of these observations, the Court disposed on the plea by holding that,.“In the facts of the present case, I find that, the manner in which the defendant is using the word ‘Republic Hindi’ with the colour combination and font used by the defendant, the mark of the defendant is deceptively similar to that used by the plaintiff. In such circumstances, there will be an order in terms of prayers (a) and (d) of the petition.”.The plaintiff, ARG was advised and represented in the matter by a team from Phoenix Legal comprising Partners, Saket Shukla, Debarshi Dutta, Mrinal Ojha; Senior Associate, Rajat Pradhan, and were led before the Calcutta High Court by Senior Counsel Ranjan Bachawat and Advocate Rajarshi Dutta..The respondent was represented by Advocates Rudraman Bhattacharyya, Sayan Roy Chowdhury, Shuvasish Sengupta, Amitabh Ray, Sourajit Dasgupta and N Banerjee..[Read the Order]