Delhi HC say no Nasha for Fever FM over trademark dispute with Radio Mirchi

Delhi HC say no Nasha for Fever FM over trademark dispute with Radio Mirchi

Meera Emmanuel

A trademark dispute before the Delhi High Court has seen to it that HT Media owned Fever FM ceases to use the word “Nasha”, in relation to their radio service “Radio Nasha”.

Justice RS Endlaw on Friday allowed a prayer for an interim injunction against HT Media, brought by the Entertainment Network [India] Limited (ENIL), which owns Radio Mirchi.

Case Background

In 2014, ENIL/Radio Mirchi launched “Pehla Nasha” as a 24-hours non-stop free internet radio channel streaming retro music for listeners, powered by commercial music streaming service 

In 2016, rival HT Media announced plans to launch another radio channel under the name of “Radio Nasha”. To this end, they also applied for trademark registration and applied for approval before the Ministry of Information and Broadcasting.

Even as ENIL sent representations objecting to the same, HT Media publicly announced the launch of Radio Nasha through several newspapers on March 9, 2016.

The following day, ENIL filed a suit against the same in the Delhi High Court, contesting HT Media’s adoption of the name “Nasha” as being identical/deceptively similar to ENIL’s trademark.

Arguments made

ENIL/Radio Mirchi was represented by Senior Advocates Sandeep Sethi and Pratibha M (now High Court Judge), assisted by Singh & Singh Partner Sudeep Chatterjee along with Jaya Mandelia, Nupur Lamba, and Nikhil Lal.

Senior Advocate P Chidambaram appeared for HT Media, assisted by Advocates Rajshekhar Rao, Meghna Misra, Nakul Sachdeva, Ankit Rajgarhia, Naman Joshi and Julien George.

It was ENIL’s case that, being the prior adopter and user of the mark “Pehla Nasha”, it is entitled to all common law rights over the same. HT Media’s adoption of the deceptively similar mark “Nasha” constituted a complete infraction of the rights of ENIL.

Among other arguments, ENIL argued that the test of imperfect recollection was applicable in the case. As pointed out in their petition,

The test of ‘imperfect recollection’ has complete application in as much as the radio listeners and internet users who may have heard of the Plaintiff”s [ENIL’s] internet radio channel/station and viewed the various activities of the Plaintiff’s on its website regarding its internet radio channel are bound to believe that the Defendant’s [HT Media’s] recently launched FM radio channel belongs to the Plaintiff.

The parties being in the same line of business, such usage by a competitor is completely unethical and unlawful. It is a completely tardy attempt to rise on the goodwill and to capture the market carved out by the Plaintiff’s high-quality entertainment services.”

ENIL also pointed out that HT Media would have known that the name “Nasha” was already in use, given that the two were business rivals.

Further, it was contended that the case also involved the copying of ENIL’s concept of broadcasting retro music. The radio programme proposed by HT Media also revolved around the broadcast of retro songs. Hence HT Media’s use of the name “Nasha” was bound to cause confusion among relevant consumers.

In their defense, HT Media argued against the possibility that the two services would be confused with each other. It was HT Media’s case that there was a difference in the kind of services provided by the two parties. Whereas ENIL Media runs an online radio station, HT Media runs a conventional FM radio station.

Inter alia, it was also pointed out that the website streaming ENIL’s online radio service was styled as, not

The suit itself was contended to be an outcome of the trade rivalry between the two parties, as evident from the fact that it was filed shortly before HT Media was due to launch Radio Nasha.

Court’s conclusions

Justice Endlaw disagreed with HT Media’s view that the services provided by the parties were too different for the trademark dispute to arise. As noted in the order,

However, the difference is not as of chalk and cheese as suggested by the senior counsel for the defendant [HT Media] or as between apples and oranges. Both, to earn revenue from advertising, are catering to the need of the patrons of free music.”

To drive home his point, Justice Endlaw resorted to drawing an analogy from the purchase of fruit.

The difference pointed out by the senior counsel for the defendant is in the mode of access to the music of the plaintiff and the music of the defendant. The said difference, in terms of apples and oranges, would be a difference of going to buy apples, to the supermarket / air-conditioned mall or to a street vendor/hawker/ wholesale fruit market or subzi mandi.

I have wondered, whether, again in terms of apples, it can be said that the trade mark of apples sold in a supermarket / mall and those sold in the subzi mandi/by a street vendor, can be the same because the patrons accustomed to shopping for their fruits from a supermarket/mall are unlikely to ever stop by at a street vendor or a hawker or to go to a subzi mandi to buy apples.

The answer obviously has to be no, inasmuch as there is no difference in the apples, whether sold in the supermarket/mall or by street vendor/hawker or in the subzi mandi.

Thus in my opinion, it is immaterial that the music platform under the mark ‘PEHLA NASHA’ of the plaintiff is accessible from use of medium of Wi-Fi/internet and the music platform of the defendant under the mark ‘RADIO NASHA’ is accessible through the medium of radio/transistor and transmitted through frequency modulation airwaves.

Further, the Court also found merit in ENIL’s contention that the advent of smartphones had bridged the gap between conventional radio and internet radio.

Ultimately, the Court found that the use of the word “Nasha” (being the dominant part of ENIL’s trademark) by its self-admitted trade rival is likely to divert unwary consumers.

Given the admitted position that HT Media appropriated the mark “Nasha” two years after ENIL/Radio Mirchi launched “Pehla Nasha”, Justice Endlaw concluded that HT Media should not be allowed to gain the goodwill built up by Radio Mirchi during those years. As noted in the order,

It can at this stage safely be assumed that the defendant hoped, either to cause loss or harm to the plaintiff by incorporating the word ‘NASHA’ in its mark or to gain from the goodwill of the plaintiff. In either situation, the intention of the defendant would qualify as ‘not bona fide’ and the plaintiff would be entitled to interim injunction.”

Accordingly, the Court allowed ENIL/Radio Mirchi’s application for interim injunction against HT Media, restraining them from using the word “Nasha” for their radio service during the pendency of the suit.

However, the Court also directed that the injunction will only come into force after thirty days, to allow HT Media enough time to make the required changes.

Read the order:

Bar and Bench - Indian Legal news