Living Media India Limited vs. AABTAK CHANNEL.COM and the Dominant Mark Dilemma

Case: Living Media India Limited & Anr. vs. AABTAK CHANNEL.COM (John Does) & Ors.

Case Citation: CS(COMM) 193/2022 & I.A. 4841/2022 in the High Court of Delhi at New Delhi

Introduction:

In the digital age, where online presence is a crucial aspect of business, trademark disputes in cyberspace have become increasingly common. The Case of Living Media India Limited & Anr. vs. AABTAK CHANNEL.COM and others (hereinafter referred to as “the case”) presents one such legal battle that delves into the complexities of trademark infringement in the realm of online media and social platforms.

Procedural History:

The dispute at hand revolves around the unauthorized use of trademarks by the defendants, which is alleged to infringe upon the rights of the plaintiffs, Living Media India Limited and Anr. The plaintiffs are the proprietors of registered trademarks AAJ TAK bearing Registration No. 1242922 in Class 38 i.e. Telecommunications and Registration No. 1242921 Class 41 i.e. Education, Providing of Training, Entertainment, Sporting and Cultural Activities. The first plaintiff, Living Media India Limited, licensed these marks to the second plaintiff under a license agreement dating back to October 1, 2003.

The plaintiffs operate an established online news channel under these registered trademarks, utilizing them for their YouTube channel, as well as across various social media platforms including Facebook, Instagram, and Twitter. They have adopted several marks incorporating the “TAK” suffix, such as ‘Yoga Tak,’ ‘Tech Tak,’ ‘Sports Tak,’ and more.

Issues Presented:

The case brings forth several critical issues for adjudication, including:

1. Whether the defendants’ use of marks containing the “TAK” suffix constitutes trademark infringement?
2. Whether the plaintiffs can claim exclusivity over the “TAK” suffix when it has not been separately registered as a trademark?
3. Whether the defendants’ marks are deceptively similar to the plaintiffs’ registered marks?

Rules of Law:

a. Trademark Infringement: Trademark law protects registered marks from unauthorized use by others in connection with similar goods or services.

b. Anti-dissection Rule: The Trade Marks Act contains an anti-dissection rule, but there’s an exception where the dominant part of a composite mark can be treated as the determining factor for infringement.

Contentions of the Plaintiff/Applicant:

1. Trademark Ownership and Licensing: The plaintiffs, Living Media India Limited and Anr., assert that they are the rightful owners of registered trademarks in Class 38 and Class 41, supported by Registration No. 1242922 and Registration No. 1242921, respectively. Plaintiff 1, Living Media India Limited, granted a license to Plaintiff 2, allowing them to utilize these trademarks.
2. Established Online Presence: The plaintiffs operate a well-known online news channel under the said trademarks. They also extensively use these marks on their YouTube channel and across various social media platforms, including Facebook, Instagram, and Twitter.
3. Family of Marks: The plaintiffs emphasize that they have developed a family of marks featuring the “TAK” suffix. These include ‘Yoga Tak,’ ‘Tech Tak,’ ‘Sports Tak,’ ‘Mobile Tak,’ ‘News Tak,’ and more. They contend that the “TAK” suffix serves as the dominant and identifying element of their marks.

Contentions of the Defendant/Respondents (Defendants 15 to 19):

1. Anti-dissection Rule: Defendants 15 to 19 assert that the plaintiffs cannot claim exclusivity over the “TAK” suffix since it has not been separately registered as a trademark. They invoke the anti-dissection rule, which traditionally prevents the separation of elements within a composite mark.
2. No Deceptive Similarity: Defendants 15 to 19 argue that their use of the “TAK” suffix does not create confusion or deception among consumers. They contend that their marks are distinct and do not infringe on the plaintiffs’ registered marks.
3. Absence of Separately Registered Mark: The defendants highlight the absence of separate registration for the “TAK” suffix and argue that this absence prohibits the plaintiffs from asserting exclusive rights over it. They assert that the plaintiffs’ claims lack legal basis due to this absence.

Analysis and Reasoning:

The analysis and reasoning in the case of Living Media India Limited & Anr. v. Aabtak Channel.com & Ors. (Defendants 15 to 19) primarily center on two key legal principles: the anti-dissection rule and the concept of deceptive similarity in trademark law.

1. Anti-dissection Rule:

The anti-dissection rule is a fundamental principle in trademark law that traditionally prevents the separation of elements within a composite mark. It holds that a trademark must be considered as a whole, and its individual elements should not be dissected or evaluated in isolation. However, there are exceptions to this rule, as established in precedent cases[1].

In the present case, Defendants 15 to 19 rely on the anti-dissection rule to challenge the plaintiffs’ assertion of exclusive rights over the “TAK” suffix. They argue that since the “TAK” suffix has not been separately registered as a trademark, it cannot be dissected from the overall composite marks used by the plaintiffs. Therefore, they contend that the plaintiffs cannot claim trademark infringement based solely on the use of the “TAK” suffix.

2. Deceptive Similarity:

The concept of deceptive similarity is central to trademark disputes. It evaluates whether the marks in question are likely to confuse or deceive consumers regarding the source or origin of the goods or services. In cases where marks are found to be deceptively similar, the likelihood of consumer confusion becomes a key factor in determining trademark infringement.

The plaintiffs argue that the “TAK” suffix serves as the dominant and identifying element of their marks, creating a family of marks. They contend that this suffix is distinctive and has become strongly associated with their brand. They imply that consumers are likely to associate any mark featuring the “TAK” suffix with their online news channel.

However, Defendants 15 to 19 counter this argument by asserting that their use of the “TAK” suffix does not result in deceptive similarity. They claim that their marks are distinguishable from the plaintiffs’ and do not confuse consumers. They highlight the distinct font and color scheme used in their marks, which they argue set them apart.

Balancing the Arguments:

The court’s role in this case is to balance the competing arguments presented by the plaintiffs and Defendants 15 to 19. It must determine whether the plaintiffs can claim exclusivity over the “TAK” suffix, even without separate trademark registration, and whether the marks used by Defendants 15 to 19 are deceptively similar to the plaintiffs’ marks.

Holding and Decision:

Defendants 1 to 14 and Defendants 20 to 30, who have not contested the case, are found liable for trademark infringement. They are permanently enjoined from using any marks confusingly similar to the plaintiffs’ marks for any online channels or related services.

Defendants 15 to 19, despite their written statement, are also found liable. The ad interim injunction against them is extended, and they are directed to take down websites and social media pages featuring the infringing mark. Failure to comply within a week will result in Defendants 31 to 34 taking action.

Implications and Significance:

This case underscores the importance of dominant elements in trademark disputes. It sets a precedent that even if a composite mark hasn’t been separately registered, the dominant part can be protected against infringement.

Trademark owners must be vigilant in safeguarding their marks in the online landscape, where infringement can occur rapidly and extensively. It also highlights the significance of online evidence, such as URLs and social media profiles, in trademark litigation.

Conclusion:

The Case of Living Media India Limited & Anr. vs. AABTAK CHANNEL.COM and others offer valuable insights into trademark protection in the digital era. It establishes that a dominant element of a composite mark can be protected, even without separate registration. This decision reinforces the need for trademark owners to safeguard their marks in the online realm and serves as a precedent for future trademark disputes with similar characteristics.

[1] South India Beverages Pvt Ltd v. General Mills Marketing Inc, (2015) 61 PTC 231: The decision crafted an exception to the anti-dissection rule by providing that, if a part of a composite mark was dominant, the plaintiffs could plead infringement on the ground that the dominant part of the mark was copied or replicated.