The Bombay High Court refused to restrain Tata Play from using the mark ‘Tata Play Astro Duniya’ for its astrology channel [Rajeev Prakash Agarwal v. Tata Play LTd & Ors.].Justice Sharmila U Deshmukh rejected a plea for interim injunction by astrologer Rajeev Prakash Agarwal, who trades under the name ‘Astro Dunia’.In the order passed on March 7, the Court held that there was no prima facie case of trademark infringement or passing off made out against Tata Play Limited..The astrologer moved High Court claiming infringement of trademark by Tata. He said that he provides astrological and spiritual services since 2005 under the registered mark “Astro Dunia” and asserted exclusive rights over the words. He alleged that Tata Play’s use of “ASTRO DUNIYA” for its astrology channel launched in December 2020, was visually, phonetically and structurally identical except for the inconsequential ‘Y’. He sought to restrain Tata Play from using “ASTRO DUNIYA” or any deceptively similar mark..The Court noted that the registration of Agarwal's mark was a composite label mark comprising of the words “Astro Dunia” along with the device of star.The Court further noted that he was allowed the registration of the mark by the trademark registry subject to the disclaimer that the registration shall give no right to the exclusive use of all descriptive matters and that labels shall be used together.Justice Deshmukh noted that Agarwal himself claimed that “the distinctiveness of the present mark is in its innovative combination of the words in English ‘Astro’ and Hindi ‘Dunia’ along with the logo of a star. He also argued that the distinctiveness lay in the features taken together. Thus, the Court estopped Agarwal from claiming any distinctiveness in the words ‘ASTRO DUNIA’..On descriptiveness, the Court found that ‘Astro Dunia’ combines the clipped English ‘Astro’ (from astrology) with the Hindi ‘Dunia’ (world). Taken together, the ‘mark means the world of astrology’ and is descriptive of the services, the judge held. .The order noted that invoices using ‘ASTRO DUNIA – Your World of Astrology’ clearly indicated that Agarwal used the phrase in a descriptive sense. “The combination of the clipped version of the English word with the Hindi word prima facie does not make it inherently distinctive in our country, where there is a tendency of blending Hindi and English and spoken as such,” the court said. The Court compared the marks to find dissimilarities in the rival marks. .Tata Play uses ‘TATA PLAY Astro Duniya’, with the house mark prominently displayed and ‘Astro Duniya’ written one below the other. Agarwal’s mark depicts ‘AstroDunia’ horizontally with a star device. The court held that the renowned industry house mark ‘TATA PLAY’ is “prima facie sufficient to distinguish the rival marks.”.The Court held that Tata Play’s DTH/OTT astrology channel offers a different service from Agarwal’s personalised, market‑focused astrology advisory. The Court also doubted Agarwal’s claim of continuous use since 2005, noting that much of the material and sales figures were self‑attested and tied to the company, weakening the claims of acquired distinctiveness. Therefore, it found no prima facie case of infringement or passing off and dismissed the interim application..Advocates Rashmin Khandekar, Anand Mohan and Grishma Mody briefed by Kartikeya and Associates appeared for Agarwal.Advocates Rohan Kadam, R Vaidya, Sanjeel Kadam and Nitisha Lad briefed by Kadam and Co. represented Tata Play.[Read Order].Follow Bar and Bench channel on WhatsAppDownload the Bar and Bench Mobile app for instant access to the latest legal news.
