Bombay High Court
Rajeev Prakash Agarwal vs Tata Play Limited on 7 March, 2026
2026:BHC-OS:5834
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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (L) NO. 597 OF 2025
IN
COMMERCIAL IP SUIT (L) NO. 257 OF 2025
Rajeev Prakash Agarwal ...Applicant/Plaintiff
Versus
Tata Play Limited and Others ...Respondents
------------
Mr. Rashmin Khandekar, Mr. Anand Mohan and Ms. Grishma Mody i/b Kartikeya
and Associates for Plaintiff.
Mr. Rohan Kadam, R. Vaidya, Sanjeel Kadam and Ms. Nitisha Lad i/b Kadam and
Co. for Defendant No. 1.
Ms. Vaishali Bhingade for Defendant No. 2.
------------
Coram : Sharmila U. Deshmukh, J.
Reserved on : 23rd January, 2026.
Pronounced on : 7th March, 2026.
ORDER :
1. This is an action for infringement of trade mark and passing-off.
The interim application seeks to restrain the Defendants from using
the impugned mark (s) “ASTRO DUNIYA” and/or any trade name/mark
comprising “Astro Dunia” or deceptively similar thereto.
2. The Plaintiff is an individual trading as sole proprietary concern
in the name and style of M/s. Astro Dunia providing astrological and
spiritual services since the year 2005 including inter alia consultancy
and advisory services based on astrological principles under the mark
“AstroDunia” . It is stated that the mark is coined and arbitrary mark
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combining “Astro” taken from English language and “Dunia” taken from
Hindi language. It is stated that the Plaintiff’s mark include the words
Astro Dunia and also the label and device mark “Astro Dunia”
conceived by the Plaintiff which is reproduced hereinbelow :
Plaintiff’s mark
3. The Plaintiff is the registered owner of domain name
www.astrodunia.com of which “Astro Dunia” forms an essential feature
since August, 2005. The Plaintiff’s website is operated under the
domain name and the website is freely accessible from locations across
India and globally. The mark is used by the Plaintiff on various
platforms including numerous TV shows which have been aired on
Bhaskar TV, Sadhna and Dabang News and advertisement published in
print media etc. The statement of sales as well as copy of specimen
invoices have been set out at Exhibit-J of the Plaint and pleaded in
Paragraph No. 8.6 of the Plaint. It is stated that several documents
were lost to floods in 2015 and not readily available with the Plaintiff
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at the time of filing of suit.
4. It is submitted that the Plaintiff’s “Astro Dunia” mark is
registered in class 45 with user claim of August, 2005 and the objection
raised under Section 9(1)(b) of the Trade Marks Act, 1999 [for short,
“the T.M. Act”] was replied by the Plaintiff asserting that the mark is an
arbitrary mark and distinctive combination of words from English and
Hindi language in addition to logo of star and none of three
components i.e Astro, Dunia, device of star are sought to be
individually monopolised. On 6th March, 2023, the registration was
allowed with disclaimer that the registration of the trade mark shall
give no right to the exclusive use of all descriptive matters and that
labels shall be used together. The Plaintiff has applied separately for
copyright registration in respect of the artistic work being the
device/label mark of the Plaintiff’s “Astro Dunia” mark. The Plaintiff
has also applied on 30th July, 2024 for registration of the Plaintiff’s
mark “Astro Dunia” as word mark, which is pending.
5. Insofar as Defendants are concerned, it is stated that the
Defendant No. 1 which is content distribution platform that offers
inter alia Pay TV and Over the Top Services (OTT) had announced
launch of services identical to Plaintiff’s services under “Astro Duniya”
mark which is visually, phonetically and structurally identical to the
Plaintiff’s mark with inconsequential addition of alphabet “Y” in the
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2021 by the Plaintiff which was responded on 28 th January, 2021
denying any infringement. Hence, the present suit came to be filed.
6. The Defendant’s Affidavit in reply dated 4th February, 2025
contends that the Plaintiff’s mark is descriptive and as the registration
is granted with disclaimer, the Plaintiff is not entitled to exclusive use
in respect of individual components of the mark. The Defendant first
used the descriptive expression “Astro Duniya” in combination with its
house mark/trade name TATA SKY in December, 2020 and later with
TATA PLAY. Prior to adopting the expression “TATA PLAY Astro Duniya”
in September, 2020, search was conducted in the Trade Marks Registry
and upon confirmation that there was no registration of the said
expression, the same was adopted in relation to astrology platform
services. The manner of use of the rival marks is completely different.
7. There is no case of passing-off made out as Plaintiff has failed to
establish any reputation or goodwill, misrepresentation or any damage
to the alleged reputation and goodwill of the Plaintiff or even the
exclusive right on the use of expression “Astro Dunia”. The Plaintiff’s
claim is impeded by delay, laches and acquiescence as the Plaintiff was
aware of Defendant No. 1’s use of the mark since 2021.
8. The Affidavit-in-rejoinder reiterates the stand taken in the Plaint.
The Affidavit in sur rejoinder dated 24 th February, 2025 contends that
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the Plaintiff’s marks comprises of placement of two common words
meaning astrology and work and is not an invented mark. The Plaintiff
is rendering investment advisory services which are prohibited in law
without procuring license and no actionable goodwill attaches itself to
such activities. The Defendant’s services are available on demand on
specific portal requiring subscription and the channel is an
entertainment/eduction channel and does not render one to one
service to the consumers or financial advisory in terms of
markets/stocks. The Plaintiff’s invoices reveal miniscule sales
insufficient to indicate extensive use of the mark.
9. The sur sur rejoinder affidavit dated 24 th April, 2025 deny that
astrology related services rendered by the Plaintiff since the year 2005
are illegal and any such allegation relating to SEBI regulations is
required to be tested in appropriate forum.
10. There is second Affidavit in reply dated 4th October, 2025 filed by
the Defendant No 1 which re-iterates the earlier stand. It sets out the
registrations obtained of TATA marks and the foray in the DTH services.
It contends that its channel is strictly passive television channel and
does not offer any personal consultations. Initially the subscribers were
provided an option to avail of phone call consultations which has been
discontinued in or around October, 2024.
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11. The Affidavit in rejoinder dated 5th November, 2025 to the
second affidavit in reply contends that in guise of filing composite
reply, the Defendant No 1 has attempted to improvise its case and has
canvassed defences which are in teeth of its admissions in earlier
replies. It is contended that the there is no instance of any third party
using the combination of the words Astro and Duniya apart from
Plaintiff and Defendant. The Plaintiff is not claiming any exclusivity
over “astro” per se but over the distinctive combination mark. It is
stated that notwithstanding the disclaimer , the words “Astro Dunia”
being essential feature of Plaintiff’s mark is liable to be protected. The
Defendant’s plea of the adoption of the impugned mark being honest
and bona fide and descriptive use is liable to be rejected. The rival
services are identical and there is no meaningful difference in trade
channels or consumers. The Defendant No 1 is offering personalised
services and has revised the contents of its website before filing of
second affidavit.
SUBMISSIONS :
12. Mr. Khandekar, learned counsel appearing for Plaintiff has taken
this Court through the registrations of the label/device mark of the
Plaintiff and would contend that the words”Astro Dunia” is the
prominent and essential feature of the Plaintiff’s registered mark. He
points out the registration granted with effect from 7 th January, 2021
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with user claim since 10th August, 2005 in class 45. He submits that by
reason of registration of Plaintiff’s mark, the same is presumed to be
distinctive. He submits that the essential feature of Plaintiff’s mark is
“ASTRO DUNIA” is not a dictionary term or existing phrase in any
language and is combination of English prefix “Astro” and Hindi word
“Dunia”. He submits that Defendant No. 1 has neither pleaded nor
shown even a single instance outside the Plaintiff and Defendant No.
1’s use of this combination as phrase of general use to demonstrate
that the mark is descriptive. He would further submit that the word
“Astro Dunia” at the highest is distinctive or suggestive at its lowest.
He submits that in 2005, the Plaintiff has registered the domain name
containing the names “ASTRO DUNIA” over which the Plaintiff’s
services are promoted and points out the media/online presence , the
advertisements and annual newsletters.
13. He would submit that the Defendants in January, 2021, started
the use of the impugned mark “ASTRO DUNIYA” in respect of identical
services, which has been admitted by Defendants in response to the
Plaintiff’s e-mail of 8th January, 2021 and reply to cease and desist
notice. He submits that it is improbable that though Defendant No. 1
conducted a search of Trade Marks Registry, the Defendant No. 1 did
not conduct a simple online search which would show the Plaintiff’s
mark. He submits that Defendant No. 1 has not filed any rectification
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application in respect of the Plaintiff’s registration and has adopted its
mark at its own peril.
14. He would further submit that the disclaimer in the registration
prohibits the Plaintiff from asserting its right on three individual
components of the Plaintiff’s mark i.e. Astro, Dunia, device of star. He
submits that the combination of “ASTRO DUNIA” does not fit within the
meaning of descriptive matter in respect of which the condition would
operate. He submits that the disclaimers in any event do not travel to
the market and the Court must consider the whole of Plaintiff’s mark
including the disclaimed material while deciding the question of
infringement. He would further submit that notwithstanding that the
mark is label/composite mark with the disclaimer as the essential
feature is “ASTRO DUNIA”, the same is liable to be protected from
infringement. He submits that the contention that mere addition of
house mark “TATA” obviates confusion is unacceptable and does not
eliminate the likelihood of false representation as to the connection
between the Plaintiff and Defendants, where none exists.
15. He would further submit that the Defendant is using “ASTRO
DUNIYA” as trade mark and the Defendant is not entitled to any
defence of bona fide descriptiveness under Section 30 and/or Section
35 of Trade Marks Act, 1999. He submits that the Defendant’s own
material shows that it has used music to designate its music channel,
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comedy to designate its comedy channels and instead of using the
word astrology to describe its astrological channel has used the
impugned mark “ASTRO DUNIYA”.
16. He would further submit that Defendants have belatedly
contended that the services are dissimilar falling within entertainment
channel, which is contrary to the plea taken in the pre suit
correspondence exchanged between the parties. He submits that it is
settled that the trade mark classifications are only administrative
guidelines and what is required to be tested is the nature of the rival
services.
17. He would further submit that plea taken in sur-rejoinder that
there is no actionable goodwill is unacceptable since the Plaintiff is
offering astrological services for last 20 years without any complaint.
He would further submit that the defense of illegality in running the
Plaintiff’s business owing to SEBI violations proceeds on incorrect
premise that the Plaintiff’s entire business pertains to financial or
market related astrological predictions. He submits that the Plaintiff is
offering varied astrological and spiritual services since 2005 and the
SEBI regulations relied upon by the Defendants have come into force in
2013. He submits in any event, the violation of SEBI regulations cannot
be agitated in present forum.
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18. He submits that an artificial distinction is now sought to be
drawn by Defendant No. 1 to limit the Plaintiff’s right to personalized
services and there is enough material on record to demonstrate that
Defendant No. 1 is offering personalized/ individual centric services
under the impugned mark. He submits that it is only after the last
hearing that Defendant No. 1 has revised the descriptions and written
contents on its website. He would further submit that the contention
that the Defendant’s service requires a subscription is contrary to
record which shows that Defendant No. 1’s services are
advertised/marketed and offered through public platforms including
Youtube, Google searches, Defendant No. 1’s website, etc. He submits
that even creation of initial interest by using similar mark at the point
of advertisement or display prior to any actual use amounts to
infringement. He submits that pertinently it is not the Defendant’s
case that there is any difference between the Plaintiff’s consumer and
Defendant’s subscribers.
19. He would further submit that once it is shown that Defendant
adopted the Plaintiff’s mark dishonestly and with notice of Plaintiff’s
mark, passing-off is proved. He submits that it is not necessary for the
sales to be in several crores of rupees and there is no requirement to
show actual deceit or ill-intention or fraud. He would further submit
that considering the reach of Defendant No. 1’s platform, magnitude
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of injury to the Plaintiff is of rapid loss of distinctiveness of the
Plaintiff’s mark as the source indicator of the Plaintiff’s services and
the loss of goodwill stands established. He submits that the defense
of delay/balance of convenience/equity/acquiescence is without
merits. In support, he relies upon the following decisions :
Anheuser Busch Inbev India Ltd. vs. Jagpin
Brewerise Limited1Sony Music Entertainment India Private Limited vs.
Ilaiyaraaja Music N. Management Private Limited
and Others2Videocon Industries Limited vs. Whirlpool of India
Limited3Pidlite Industries Ltd vs. Jubilant Agri and
Consumer Products Limtied4Wockhardt Limited vs. Torrent Pharmaceuticals5
Laxmikant V. Patel vs. Chetanbhai Shah and
Another6Intercontinental Great Brands vs. Parle Product
Pvt. Ltd.7Under Armour INC vs. Anish Agarwal8
Gujarat Bottling Co. Ltd. vs. Coco Cola and Others9
1 Commercial Suit No. 110 of 2012, decided on 8th December, 2025.
2 IA (L) NO. 25506 of 2023 in Commercial IP Suit No. 560 of 2022, decided on 8th November, 2023.
3 2012 SCC OnLine Bom 1171.
4 2014 SCC OnLine Bom 50.
5 (2018) 18 SCC 346.
6 (2002) 3 SCC 65.
7 2023 SCC OnLine Del 728.
8 2025 SCC OnLine Del 3784.
9 (1995) SCC 545.
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Lupin Limited vs. Eris Lifescience Pvt. Ltd.10
Pidlite Industries Ltd. vs. Zar Metamorphose
Combine11Kedar Nath Motani and Others vs. Pralhad Rai and
Others12IFB Agro Industries vs. Siggil India Ltd.13
Encore electronics Ltd. vs. Anchor Electronics and
Electricals Pvt. Ltd.14Cadila Health Care Ltd. vs. Cadila Pharmaceuticals
Ltd.15Sun Pharma Lab vs. The Madras Pharmaceuticals16
Renissance Hotel vs. B. Vijaya Sai17
Meher Distilleries vs. S. G. Worldwide18
Jaquar Company vs. Villeroy Boch AG19
Allied Auto Accessories Ltd. vs. Allied Motors Pvt.
Ltd20
Schering Corporation vs. Klitch Co. (Pharma) Pvt.
Ltd.21
Indchmie Health Specialites Pvt. Ltd. vs. Naxpar
Labs Pvt. Ltd.22
10 2015 SCC OnLine Bom 6807.
11 2020 SCC OnLine Bom 2382.
12 1959 SCC OnLine SC 16.
13 (2023) 4 SCC 2009.
14 2007 SCC OnLine Bom 147.
15 (2001) 5 SCC 73.
16 2016 SCC OnLine Bom 9481.
17 (2022) 5 SCC 1.
18 (2021) SCC OnLine Bom 2233.
19 2023 SCC OnLine Del 2734.
20 2002 SCC OnLine Bom 1138.
21 1990 SCC OnLine Bom 425.
22 2002(2) Mh.L.J. 513.
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Saga Lifescience Limited vs. Aristo
Pharmaceuticals23
Century Traders vs. Roshal Lal Duggar and Co.24
Lupin Limited vs. Eris Lifesciences25
Empire Spices and Foods Ltd. vs. Sanjay
Deshmukh26
Emami Limited vs. Hindustan Unilever Ltd.27
Pidlite Industries Ltd. vs. S. M. Associates and
Others28
Serum Institute of India Ltd. vs. Green Signal Bio
Pharmaceuticals29
Jagdish Gopal Kamath vs. Lime and Chilli
Hospitality30
Prince Pipes and Fittings vs. Shree Sai Plast Pvt.
Ltd.31
20. Per contra, Mr. Kadam, learned counsel for Defendant No. 1
would submit that the Defendant No. 1 is operator of TATA Play DTH
services which broadcasts through various proprietary and other
television channels. He submits that in or around December, 2020, the
Defendant No. 1 launched “TATA PLAY Astro Duniya” television channel
exclusively available on TATA Play DTH/TV service for subscription fee
23 2022 SCC OnLine Del 1351.
24 ILR 1977 (ii Delhi 711).
25 2015 SCC OnLine Bom 6807.
26 Interim Application No. 2119 of 2025, decided on 30th June, 2025.
27 2024 SCC OnLine Cal 3579.
28 2003 SCC OnLine Bom 143.
29 2011 SCC OnLine Bom 696.
30 2015 SCC OnLine Bom 531.
31 2024 SCC OnLine Bom 3743.
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of Rs. 60/- per month. He submits that channel telecasts scheduled
programs discussing astrology and is available for viewing exclusively
only on Defendant No. 1’s “Tata Play” service. He submits that
Defendant does not offer one to one consultations or personal
appointments and the same passive content is beamed to the masses.
He submits that initially subscribers were provided an option to avail
phone call consultations by calling particular number, which reference
services has been discontinued in or around October, 2024.
21. He submits that it is only on 8 th January, 2021, that the Plaintiff
applied for trade mark registration of the device mark of “Astro
Duniya” in class 45 which was granted registration with disclaimer. He
submits that the Plaintiff cannot split up the mark and is bound by the
condition to use the mark as a whole. He points out to the Plaintiff’s
response to the examination report that the distinctiveness of its
marks was in combination of the words alongwith the logo of the star.
He submits that the Plaintiff is yet to receive the registration of the
word mark “ASTRO DUNIA”.
22. He would submit that the online presence of the Plaintiff
indicates that it offers financial services and is dedicated to help clients
about making informed decisions about their investment. He submits
that the pith and substance of the Plaintiff’s services is rendition of
personalized investment services to his client by following astrological
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principles.
23. He would further point out that the specimen invoices annexed
to the plaint lack the hallmark of invoices issued in the ordinary course
in the absence of any service/tax registration, GST registration and that
the invoices are not even signed and are issued to individuals mainly
addressed by name without any addresses. He submits that there is no
document to show receipt of payment against the invoices and there
are no I.T. returns or assessment orders to corroborate these invoices.
He submits that the sale certificates have not been certified by the
Chartered Accountant but are self-certified. He submits that the
pleaded case in paragraph No. 18 of the plaint is that the Defendant’s
mark is used in relation to the identical services which is lacking in
material particularization and is insufficient in law to fasten the liability
under Section 29(2) to establish similarity in services.
24. He submits that no case for relief is made under Section 29(1) of
Trade Marks Act, 1999 since the services are not the same. He submits
that the Plaintiff’s mark is registered in class 45 and the explanatory
note to class 45 asserts that it includes mainly legally and security
services as well as certain personal and social services rendered by
others to meet the need of individuals. He submits that the common
feature of the services classified in class 45 is rendition of personal
services tailored to specific needs of individuals whereas the
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Defendant’s services provides entertainment/education to consumers
and is relatable to classification in class 38 and class 41 and it is in this
class that the Defendant No. 1 has registered the “TATA Play” trade
mark.
25. Drawing attention of this Court to provision of Section 29(2) of
the Trade Marks Act, 1999, he submits that similarity of service is to be
examined from business and commercial point of view taking into
account the user and use of services, the physical natures of services,
the trade channels and the extent to which the services are in
competition with one another. He submits that these facts ought to
have been pleaded in the Plaint and there is no factual foundation led
in the Plaint.
26. He submits that the Plaintiff’s latest website shows that there is
no personalized services rendered and rendition of services even
otherwise through television medium is inherently not personalized.
He submits that Defendant No. 1 has online presence on Youtube and
Google and test is to assess whether services are sold through the
same channels.
27. He submits that the marks are not identical and there is no
deceptive similarity. He submits that the Plaintiff’s claim to exclusivity
to the words “Astro Dunia” must be examined in backdrop of Section
17 of the Act read with Section 28(1) and (2). He submits that having
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accepted the distinctiveness in the Plaintiff’s mark in its combination of
the word along with logo or star, the Plaintiff cannot now claim
monopoly over the words.
28. He submits that the combination of “Astro” and “Dunia’ is
Hinglish which is a colloquial manner of speaking in this country. He
submits that the mere use of the mark does not give it a secondary
meaning and sales and advertisement expenses are not the sole
criteria. The Plaintiff is required to show the market survey, etc. as the
law imposes such burden since the protection on such descriptive
marks leads to reduction of ordinary expressions to describe and/or
inform customers about the products.
29. He submits that in the present case, the rival marks are device
marks and the test is similar to copyright by examining the aspect of
depiction and stylization, lettering and placement of indices. He
submits that the prefix “TATA PLAY” enjoys trade mark registration and
is well-known trade mark and there can be no absolute proposition
that the use of the house mark does not dispel confusion. He submits
that the claim of the Plaintiff that the mark is a well-known trade mark
does not satisfy the requirement of Section 29(4).
30. He submits that the argument of initial interest confusion also
fails since the services are different and are available through different
trade channels. Insofar as the aspect of passing-off is concerned, he
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submits that Plaintiff has not proved goodwill and pith and substance
of Plaintiff’s business is in relation to investment advisory services and
even assuming it has goodwill, the same is not actionable as there is
violation of SEBI regulations. He submits that there are no
commonality of activities which is the relevant consideration. He would
submit that the Plaintiff’s alleged sales are only to tune of Rs. 1.07
crores for over 20 years and Rs. 1.4 crores for over 20 years which are
also uncertified. He submits that there is no misrepresentation in the
present case. He submits that the balance of convenience is in favor of
Defendant No. 1 as Defendant No. 1 started its channel in December,
2020 and the Plaintiff has sent its first email to Defendant in January,
2021 and suit has been filed in January, 2025 by which time, the
Defendant No. 1 has built its business for over five years and expended
substantial money which constitutes acquiescence. In support, he relies
upon the following decisions :
Balkrishna Hatecheries vs. Nandos International
Ltd. and Another32Advance Magazine Publishers Inc. vs. M/s. Just
Lifestyle Pvt. Ltd.33K. R. C. S. Balkrishna Chetty and Sons and Co. vs.
State of Madras34Unichem Laboratories Ltd. vs. Ipca Laboratories
32 2007 Vol. 109(2) Bom. L. R. 0911.
33 2013 SCC OnLine Bom 8417.
34 (1961) 2 SCR 736.
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Ltd. and Another35
Phonepe Private Limtied vs. Resilient Innovations
Private Limited36Aegon Life Insurance Company Ltd. vs. Aviva Life
Insurance Company India Ltd.37Anneliese Hackmann vs. The Registrar of Trade
Marks38Rich Products Corporation vs. Indo Nippon Food
Limited39Sun Pharmaceuticals Industries Ltd. vs.
Meghmani Lifesciences Ltd.40Meso Pvt. Ltd., Mumbai vs. Liberty shoes Ltd.,
Haryana41Toyoto Jidosha Kabushiki Kaisa vs. Prius Auto
Industries Limited42Brihan Karan Sugar Syndicate Pvt. Ltd. vs.
Yashwantrao Mohite Krushna Sahakari Sakhar
Karkhana43APEX Laboratories Pvt. Ltd. vs. Deputy
Commissioner of Income Tax, Large Tax Payer
Unit-II44S. Venkatramaiah vs. K. Venkataswamy45
Nuziveedu Seeds Ltd. vs. Mahyco Monsanto
35 2011 SCC OnLine Bom 2114.
36 2023 SCC OnLine Bom 764.
37 2019 SCC OnLine Bom 1612.
38 Vol. LXIII. The Bombay Law Reporter 650.
39 ILR (2010) II Delhi 663 CS (OS)
40 IA(L) NO. 9484 of 2025 in ComIP (L) No. 353 of 2025, decided on 23rd December, 2025.
41 253 2020 (1) Mh. L.J.
42 (2018) 2 SCC 1.
43 (2024) 2 SCC 577.
44 (2022) 7 SCC 98.
45 1976 (2) (H.C) 28 Andhra Pradesh law Journal.
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Biotech (India) Pvt. Ltd.46
Office Cleaning Services Ltd. vs. Westminster
Window and General Cleaners Limited47Pernod Ricard India Private Limited vs.
Karanveer Singh Chabra48ARG Outlier Media Pvt. Ltd. vs. Rayudu Vision
Media Ltd.49
31. In rejoinder, Mr. Khandekar would submit that the Defendant’s
defense of dissimilar services is an afterthought. He submits that the
belated case of discontinuation of personalized services since October,
2024 is false and unbelievable and in fact, constitutes an admission
that the rival services were clearly alike. He submits that pertinently
the Defendant’s current website shows a drop down response that
their astrologers are certified professionals which ensures that viewers
receive high quality astrological services while seeking personalized
“kundli” reading which has been suppressed by the Defendant.
32. He submits that defense of prosecution history does not apply
in the present case as Section 9(1)(b) cited in examination report
applies not only to the words, but also to indications. He would submit
that the Defendant has admitted to using the mark for advertisement
and for promoting the Defendant’s services even outside its DTH
46 2020 SCC OnLine Bom 816.
47 No. 2 Vol. LXIII. Report of Patent, Design and Trade Mark Classes dated 19th June, 1946.
48 2025 SCC OnLine SC 1701.
49 2023 SCC OnLine Bo, 1825.
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ecosystem and specific instances are actually shown in the present
case. He submits that Defendant has limited its argument only to the
action for passing-off and the argument of no actionable goodwill is
entirely irrelevant to the action for infringement.
REASONS & ANALYSIS :
33. The Plaintiff’s registration is of composite label mark comprising
of the words “Astro Dunia” along with the device of star. The interim
relief which the Plaintiff seeks is to restrain the Defendants from using
the impugned mark “ASTRO DUNIYA”/ Astro Duniya and/or trade
name/mark comprising “ASTRO DUNIA” or any deceptively similar mark
to the Plaintiff’s mark “ASTRO DUNIA”. The Plaintiff thus claims an
exclusive right to the words “ASTRO DUNIA” per se claiming the words
“ASTRO DUNIA” to be inherently distinctive and essential feature of its
mark. The Plaintiff has secured registration of its device mark of
“ASTRO DUNIA”, which registration was applied on 7 th January, 2021
with user claim of 10th August, 2005 in class 45 i.e. astrological and
spiritual services, astrological consultancy, astrological advisory
services.
34. At the time of examination, the Registrar of Trade Marks had
raised an objection under Section 9(1)(b) of Trade Marks Act, 1999,
which reads as under:
“9. Absolute grounds for refusal of registration.- (1)
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(a)…..
(b) which consist exclusively of marks or indications which
may serve in trade to designate the kind, quality,
quantity, intended purpose, values, geographical origin
or the time of production of goods or rendering of the
service or other characteristic of the goods or service.
(c)……
shall not be registered:
Provided that a trade mark shall not be refused
registration if before the date of application for
registration it has acquired a distinctive character as a
result of the use made of it or is a well known trade
mark.”
35. Section 9(1)(b) bars the registration of mark which is descriptive
of the goods/services quality, kind, purpose etc. In response to the
objection, the Plaintiff has stated as under:
“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 star.
…There can be cases where all the component parts
of a trade mark are separately common, to the trade,
yet, the mark as a whole may be considered
distinctive, if combination gives distinctiveness,
which is the applicant’s case. Because distinctiveness,
has to be considered on the basis of impression the
mark creates as a whole. The mark does not become
non distinctive by virtue of the only fact that it
includes a mark or a word which is not separately
registrable. Not only this, combined features of the
mark together constitutes a distinctive entity
different in feature.
…. Apart from the above,applicant also has a strong
web presence since 2005. Owing to the long and
continuous use of 15 years and advertisement and
promotions “Astro Dunia” have come to be
exclusively associated to the applicant in the minds
of general public.”
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36. The Plaintiff’s case for registration was that distinctiveness is
achieved by reason of combination of all features of the mark together
which constitutes a distinctive entity different in feature. To
substantiate its right to restrain the Defendants, in present
proceedings the distinctiveness is claimed in combination of the words
“Astro Dunia”. Having taken a specific stand before the Registrar of
Trade Marks, the Plaintiff is now estopped from claiming any
distinctiveness in the words “ASTRO DUNIA”. The Registrar of Trade
Marks granted registration to the Plaintiff’s mark with the disclaimer
as under:
“The registration of this trade mark shall give no right
to the exclusive use of all descriptive matters. This is
condition of registration that labels shall be used
together.”
37. The registration is thus granted with specific disclaimer that the
labels shall be used together meaning that the words alongwith the
logo of star makes the mark distinctive and not the individual
components and neither the combination of individual components.
The Plaintiff reads the disclaimer to mean that prohibition is from
asserting any right in three individual components viz “Astro”, “Dunia”
and device of star and not against the claim for unique combination of
words Astro Dunia. The disclaimer is required to be read in the
background of the objection and the response to the objection and
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when so read, it is prima facie evident that the distinctiveness claimed
was in entire combination of the features and not in the combination
of the words ASTRO DUNIA. The words “Astro Dunia” is combination
of the English word “Astro” and Hindi word “Dunia”. Assuming that the
mark “Astro Dunia” is coined by the Plaintiff, the mark is being used in
respect of astrology services rendered by the Plaintiff. The words
“Astro” and “Dunia” when taken separately are completely descriptive
as the word “Astro” is clipped version of the English word ‘astrology’
and the word “Dunia” is a Hindi word which means ‘world’. Taken
together, the mark means the world of astrology and combination of
the words results in the word “ASTRO DUNIA” being completely
descriptive as relating to the world of astrology which are services
rendered by the Plaintiff. 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 tendency of
blending Hindi and English and spoken as such. In fact, the Cambridge
Dictionary defines Hinglish as a mixture of Hindi and English, a special
type of English used by the speakers of Hindi. Section 29(9) of Trade
Marks Act, 1999 provides for infringement by spoken use of distinctive
elements of a registered trade mark. The Plaintiff’s mark being
descriptive, there are no distinctive elements for application of the
provisions of Section 29(9). The decisions of Encore Electronics Ltd vs
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Anchor Electronics (supra) and Renissance Hotel vs B. Vijaya Sai
(supra) are distinguishable as in the present case, the Plaintiff’s mark is
non distinctive.
38. The disclaimer was imposed as the mark consisted of descriptive
matter and the only entitlement is to use of the composite mark as a
whole. In this context, if Section 17 of the Trade Marks Act, 1999 is
seen, clause (b) of sub-section (2) of Section 17 prohibits the exclusive
right in any matter which is common to the trade or is otherwise of a
non-distinctive character. The disclaimer which has been imposed by
the Registrar is in the context of Section 17(2)(b) by holding the mark
to be descriptive and of non-distinctive character. The Plaintiff claims
infringement by use of the words “Astro Dunia” which words stand
disclaimed.
39. The Hon’ble Apex Court in the case of Registrar of Trade Marks
vs Ashok Chandra Rakhit50 held that the real purpose of disclaimer is
to define the rights of the proprietor under the registration so as to
minimize, even if it cannot wholly eliminate, the possibility of
extravagant and unauthorised claims being made on score of
registration of trade mark. The Hon’ble Apex Court noted that where a
distinctive label is registered as a whole, such registration cannot
possibly give any exclusive statutory right to the proprietor of trade
50 (1955) 1 SCC 655.
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mark to the use of particular word or name contained therein, apart
from the mark as a whole.
40. In the present case, the disclaimer is as regards the descriptive
matter i.e. ASTRO DUNIA. The Plaintiff cannot predicate its case of
infringement on the part of mark which stands disclaimed by
contending that the disclaimed part has been copied by the Defendant.
The disclaimed portion cannot form the basis for infringement. In
event the Plaintiff’s case of infringement would have been premised
on infringement of entire label mark and not exclusively of the
disclaimed portion, while assessing the deceptive similarity, the marks
would have to be compared as a whole including the disclaimed part. In
Pidilite Industries Vs S.M. Associates (supra), it was the Defendant’s
contention that the disclaimed word SEAL should be ignored while
considering the aspect of infringement. The Plaintiff therein did not
allege infringement by reason of copying of the disclaimed part SEAL
but the entire mark M-SEAL vs S M-SEAL. In the case of Serum
Institute of India Ltd vs Green Signal Bio Pharma Pvt Ltd (supra), the
disclaimed portion was “BCG” in Plaintiff’s mark ONCO BCG. The
infringement was claimed by use of “BCG ONCO” and not based
exclusively on the disclaimed portion. In that factual scenario, the
Court rightly compared the marks as whole including the disclaimed
portion. The decision of Lupin Limited vs Eris Lifescience Pvt Ltd
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(supra), Sun Pharma Laboratories Ltd vs The Madras Pharmaceuticals
& Anr (supra) and Empire Spices and Foods Limited vs Sanjay
Deshmukh (supra) and Prince Pipes and Fittings Ltd vs Shree Sai Plast
Pvt Ltd (supra) did not deal with the case of registration being granted
subject to disclaimer. In the decision of Jagdish Gopal Kamath & Ors vs
Lime and Chilli Hospitality (supra) , the disclaimer was on the exclusive
right to use the word “Madras”. The claim for infringement was not
based on the disclaimed word but the entirety of the mark which is the
distinguishable feature. The decision of Anheuser Busch Inbev India
Ltd vs Jagpin Brewerise Limited (supra) turned on facts of that case by
considering the descriptive material contained in respect of the rival
marks therein.
41. In the case of Aegon Life Insurance Company Ltd. vs. Aviva Life
Insurance Company India Ltd. (supra), this Court noted the test for
descriptive mark and reproduced in paragraph no. 28 the decision in
the case of Bharat Enterprises (India) vs. C. Lala Gopi Industrial
Enterprises & Others51 as under:
“The true test in determining whether the particular
name or phrase is descriptive is whether as it is
commonly used, it is reasonably indicative and
descriptive of the thing intended. In order to be
descriptive within the condemnation of the rule, it is
sufficient if information is afforded as to the general
nature or character of the article and it is not necessary,
that the words or marks used shall comprise a clear,51 AIR 1999 P&H 231.
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complete and accurate description. The meaning which
should be given is the expression and significance which
has been conveyed in the public. Whether the words or
marks claimed as trade marks are descriptive, or whether
they are suggestive, arbitrary, fanciful must be tested
with respect to the articles which they are applied and
the mark must be considered as a whole.”
42. Applying the said principles to the Plaintiff’s registered label
mark, the words “Astro Dunia” with the device of star above the words
is purely descriptive of the services offered to the public i.e. astrology.
Even assuming arguendo that it is a coined word, the mark is not
arbitrary and unconnected to the services offered by the Plaintiff. The
Plaintiff’s invoices itself uses the mark “ASTRO DUNIA” followed by the
words “Your World of Astrology” which indicates the descriptive nature
of the trade mark. In the Affidavit in reply, the Defendant has placed
on record screen shots of various websites using the words Astro
World and Astro ki duniya, which shows prima facie the common use of
term. There cannot be any two views that the use of the words
astrology or its clipped version combined with the word depicting the
word “world” either in english or hindi would be used commonly for
describing astrology services in India such as World of Astro, Astrology
ki Duniya, Astro World, Astro Dunia etc. The fact that the invoices of
the year 2005-2006 which are placed on record makes a reference to
the words “Astro Dunia” and describes it as a world of astrology is a
clear indicator that the same was used in a descriptive sense. Prima
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facie I do not find that the Plaintiff’s mark “Astro Dunia” to be anything
but descriptive.
43. For purpose of comparison, the rival marks are reproduced
hereinbelow:
Plaintiff’s mark Defendant’s mark
44. For purpose of assessing infringement, the anti dissection rule
requires that the marks must be compared as a whole. Prima facie
comparison of the whole mark shows the dissimilarity in the rival
marks. The Plaintiff’s mark is a composite label comprising of the
words AstroDunia alongwith the device of star above the words. The
Defendant’s mark is Astro Duniya which is used alongwith the
Defendant’s house mark TATA PLAY. The manner of depiction of the
rival marks is different. In the Defendant’s mark, the words Astro
Duniya are placed one below the other in contrast to the manner of
depiction of words AstroDunia in the Plaintiff’s mark in a horizontal
manner. The Defendant’s house mark is a renowned industry house
which is prima facie sufficient to distinguish the rival marks. The
addition of the house mark obviates the possibility of confusion
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particularly, considering the house mark “TATA Play” which is depicted
prominently and especially when the access to the Defendant’s mark is
by a registered subscriber, who is well informed that it is the
Defendant who is rendering the services. The contention that the
essential feature of the Plaintiff’s mark being Astro Dunia is required
to be statutorily protected will run foul of the disclaimer imposed
while granting registration. The proposition of comparison of the
essential feature will not apply when the words stand disclaimed. If
the said contention is accepted, then the disclaimer would be rendered
meaningless. The principle that disclaimers do not travel to the market
would not apply to present facts as the services rendered are dissimilar
and not available through same trade channels.
45. The allegation that the Defendant is using the words “Astro
Duniya” even without the house mark TATA PLAY to substantiate
aspect of similarity is misplaced as the extract from the Defendant’s
website at Exhibit “F” to the rejoinder makes specific reference to TATA
PLAY ASTRO DUNIYA and the reference to only Astro Duniya in the
website is in descriptive sense. As far as the decisions in Meher
Distilleries Pvt Ltd vs SG World wide InV & Anr (supra) and Jaguar
Company Pvt Ltd vs Villeory Boch AG & Anr (supra) are concerned,
there can be no debate that there is no absolute proposition in law
that the use of the trade mark with the housename would not amount
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to infringement and will obviate likelihood of confusion. Every case has
to be tested on its own individual facts. The contention of the Plaintiff
that the consumers will be put into a state of wonderment as to
whether the Defendant has acquired Plaintiff’s brand and business to
the Plaintiff’s detriment overlooks the primary difference of the
Defendant being a DTH service provider.
46. The Plaintiff claims to be prior adopter and user of the mark
since the year 2005. The application of the Plaintiff for registration of
the device mark was filed on 7th January, 2021 with user claim of 10 th
August, 2005. It is specifically pleaded in paragraph 1 of the Plaint as
under :
“…Since atleast 2005, the Plaintiff’s services have
been provided/marketed/promoted openly,
extensively and continuously across India as well as
globally under the Plaintiff’s distinctive trade
mark/name ‘Astro Dunia/Astro Dunia’ including
interalia label/device marks/domain name containing
“ASTRO DUNIA”/”ASTRODUNIA” as the dominant,
prominent, essential and leading feature thereof
(each and collectively referred hereinafter as the
Plaintiff’s ‘Astro Dunia’ Marks(s) as the context may
require.)”
47. The pleadings indicate claim of user since the year 2005 not only
of the words “Astro Dunia” but also of the label/device mark, which is
prima facie not substantiated from the material on record. In so far as
the domain name is concerned, the use of the word “Astro Dunia’ as
part of domain name and website content will have to be read in the
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background of the disclaimer placed while registering the device mark.
As far as the website archives are concerned, the trade mark used by
the Plaintiff is the word “Astro Dunia” with tagline “Our world of
Astrology” in the year 2011-2012. Perusal of the website extracts
would indicate that along with the words “Astro Dunia” and tagline
“Our world of Astrology”, the device used with the mark is as under :-
48. At Page 558 of the Plaint, the word “ASTRODUNIA” is used
during the years 2006-2007 along with the following device:
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49. Prima facie, the material on record indicates use of the mark
“Astro Dunia” along with logos distinct from the device mark which has
been registered. There is one annual letter of 7 th January, 2016 in
which the registered device mark is used and thereafter the use is
shown from the year 2020. Apart from solitary use in 2016, there is no
material on record to show the use of the labels/logos since the year
2005 as claimed. The Plaintiff has placed on record about 30 volumes
of documents consisting of website extracts, newsletters and annual
letters stated to be published by the Plaintiff. Volume 2 and Volume 3
i.e. from pages 106 to 571 contains an introduction which is found in
several pages such as pages 281, 331, 338,342 which reads as under:
“Astrodunia officially registered as MAA ASTRODUNIYA
PRIVATE LIMITED incorporated in the year 2005 provides
masses with various top priority and quality astrological
reports, analysis, services and tips for trading in the financial
segment such as stock market and commodity market across
the globe.
The firm also has experience as a stock and commodity broker
in the year 2006-2010. The accuracy of tips provided by
astrodunia.com has been about 92%.”
50. The introduction prima facie indicates that the incorporation in
the year 2005 was of a private limited company and Astrodunia was
officially registered as the private limited company. There is no
pleading in the plaint explaining the connection between the Plaintiff,
who is an individual, the mark Astro Dunia and the private limited
company MAA ASTRODUNIYA PRIVATE LIMITED. From the introduction
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in the news letter, it appears that the firm of Astro Dunia was
registered in the year 2005 as MAA ASTRODUNIYA PVT LTD. Similarly
Volume 21 to 25 i.e. from pages 4813 to 6139, which are daily/weekly
news letter (market time report) mentions that all rights are reserved
by Maa AstroDuniya Pvt Ltd. At Page 6861 of the annual letter for the
year 2013-2015, the name of the company Maa Astro Duniya Pvt Ltd is
mentioned along with the name of the present Plaintiff. The plaint
pleads that the Plaintiff is trading as sole proprietary concern in name
and style of M/s Astro Dunia and that of prior user of the mark since
the year 2005, which appears to be prima facie doubtful as the
volumes of documents produced on record reflects the name of the
private limited company for which there is no explanation. Despite
production of volumes of newsletters claimed to be published by the
Plaintiff, there is not a single averment as to the number of subscribers
of these newsletters to demonstrate the enormity of the goodwill and
reputation of the Plaintiff.
51. Insofar as invoices are concerned, the invoices either makes a
reference to the name “Maa Astro Duniya Pvt. Ltd.” or the words “Astro
Dunia” and not to the device mark. This is apart from the fact that
prima facie the invoices are unacceptable as the invoices contains only
the name without any details of the consumers such as address, time
and duration of visit. There is no service tax details printed on the
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invoice and the invoices do not bear the signature of the Plaintiff and
does not use the device mark. The statement of sales is a self-attested
statement by the Plaintiff signed as proprietor for ASTRO DUNIA and
shows the business done by Maa Astro Duniya Private Limited under
the Plaintiff’s “Astro Dunia” mark and not of the Plaintiff who is one
Rajeev Agarwal trading in the name and style of M/s. Astro Dunia.
52. Further, some of the advertisement invoices which are placed on
record shows the vendor as Maa Astro Dunia Limited and not the name
of the present Plaintiff. Prima facie, at this stage, it is difficult to
accept, based on the material on record that since the year 2005, the
Plaintiff was using the entire label/device of the Astro Dunia in respect
of which registration was obtained or even the mark Astro Dunia. As
the material on record does not demonstrate the use of the registered
mark by the Plaintiff since the year 2005 , without evidence being led,
it is difficult to accept the prior use of the registered mark by the
Plaintiff since the year 2005.
53. The Plaintiff having chosen to adopt a trade mark which is
descriptive of services offered has to discharge the burden of proving
that the registered trade mark has acquired secondary meaning which
means distinctiveness on account of long usage and promotion of such
an extent that the customers would associate the trade mark only with
the Plaintiff. It is required to be proved by producing cogent material
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the manner in which the public perceives the mark and that the primary
meaning of the word is forgotten and when the word “Astro Dunia” is
used, it is only Plaintiff’s services which comes in the mind of general
public. The burden is thus greater on the Plaintiff when the mark is
held to be descriptive. In the present case, as discussed above, the
material placed on record relates to the different manner of use of the
trade mark “Astro Dunia” along with different devices and the
Plaintiff’s registered trade mark which is the composite label is not
shown to have been acquired secondary meaning.
54. It is also pertinent to note that it is only recently that Plaintiff
has applied for registration of the word mark “Astro Dunia” which
implies that the Plaintiff was aware of the restrictions which were
placed on its exclusive right of user by reason of disclaimer imposed on
registration and thought it fit to apply for registration of the word
mark.
55. The Defendant is a DTH service provider and uses the mark
ASTRO DUNIYA alongwith its house mark of TATA PLAY. The
Defendant’s adoption of the words Astro Duniya in respect of its
astrology services in descriptive sense is prima facie bonafide. The use
of the housemark is with the intent to identify the source of the
broadcasted content as emanating from the Defendant. In reply to the
cease and desist notice, the Defendant has contended that the mark
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was adopted by the Defendant as it aptly describes astrology platform
services and that it has taken a search in trade mark registry. Prima
facie the defence of adoption of the word ASTRO DUNIYA for
describing an astrology channel is possible acceptable explanation.
The search taken in the trade mark registry cannot singularly
constitute the driving factor to hold that the mark is used in trade mark
sense.
56. Coming to the rival services, the pleading in paragraph 17 of the
plaint is that the Plaintiff and the Defendant admittedly deal in
identically/similar services. In paragraph 18 of the plaint, it is pleaded
that the Defendant’s impugned mark is used in relation to services
identical and/or similar and/or allied and/or cognate to those of which
the Plaintiff’s registered trade mark is used. The Plaintiff’s pleaded
case swings between identical services to similar services to allied or
cognate services attempting to fit its case in one or other category of
infringement. The Plaintiff is expected to come with specific pleadings
which is absent in present case. The material produced on record by
the Plaintiff in the form of website archives comes with the heading as
” Predictions – Stock Market Commodity Market and the webpage is
substantially devoted to the predictions on the stock market. The
volumes of newsletters produced on record also pertains to stock
market and commodity market predictions. The use of the label mark
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even if accepted on 7th January, 2016 at Page No. 577 comes with a
tagline “We predict stocks, commodities, forex”. The linkedin page at
page no. 637 of the Plaint describes the services as financial services
and that the Plaintiff is dedicated to helping the clients make informed
decision about their investment. The facebook page introduces the
Plaintiff as a remarkable name in field of financial astrology. The
specimen invoices produced by Plaintiff to show consultation and
horoscope analysis are inadequate and not backed by sufficient
supporting material to come to a prima facie finding that Plaintiff
rendered astrology services on life predictions apart from financial
market predictions. The promotional material placed on record prima
facie projects the Plaintiff as financial market advisor based on
astrology. The newsletters on record are replete with the stock market
and financial market predictions.
57. On the other hand, the Defendant is operator of Tata Play DTH
services which broadcasts various television channels relating to music,
cinema, sports entertainment, and one of the channels is astrology
services. It advertises its services as subscriber services and astrology
linked life predictions. For purpose of availing these services, the
consumer is required to subscribe to TATA Play DTH Services, have a set
top box installed and thereafter, pay monthly subscription fees for the
purpose of viewing the channel. The same astrology content is beamed
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to the masses as opposed to the one to one consultation offered by
the Plaintiff. Further the Defendant is not shown to render astrology
predictions in financial markets, which is the core service rendered by
the Plaintiff. I am unable to read the email chain between the parties
as an admission that the rival services are identical by mere use of the
words “astrology services” and in any event, the similarity in the
services is required to be considered by applying the well settled tests.
58. In the case of Balkrishna Hatecheries vs. Nandos International
Limited and Another (supra), this Court noted the leading case of
British Sugar Plc v. James Robertson and Sons Ltd. 52 identifying the
essential factors while considering whether the goods were of the
same description as under :
(a) the respective uses of the respective goods or
services;
(b) the respective users of the respective goods or
services;
(c)the physical nature of the goods or acts of service;
(d) the respective trade channels through which the
goods or services reach the market;
(e) in case of self-serve consumer items, where in
practice they are respectively found or likely to be
found in supermarkets and in particular whether they
are or are likely to be found on the same or different
shelves;
(f) the extent to which the respective goods or
52 [1996] R.P.C. 281.
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services are competitive. This inquiry may take into
account how those in trade classify the goods, for
instance whether market research companies, who of
course act for industry, put the goods or services in
same or different sectors.
59. Applying the tests to the rival services, in my view, there is no
similarity for the following reasons:
(i) The Defendant is a DTH service provider which
broadcasts through various television channels and
the same content is beamed to the entire subscriber
base. On the other hand, the services of the Plaintiff
are personalised services offered on one to one basis
and predictions are individual centric.
(ii) The users of the Defendant’s services are
consumers who have availed the services by payment
of the subscription fees in respect of entire bouquet
of channels not restricted to astrology channels
which is not the case in respect of Plaintiff’s services.
(iii) The Defendant’s services can be availed only by
subscription mode unlike the Plaintiff’s services.
(iv) The rival services are not competitive in as much
as the Defendant do not offer the astrology services
for financial market prediction which forms the
chunk of Plaintiff’s services.
(v) The Defendant’s consumer base are subscribers
most likely to flip channels and watch the astrology
channel without the serious intent to look for life
predictions. The Plaintiff’s customers approach the
Plaintiff with the intent to seek astrological guidance
in address their specific issues and considering the
material on record mostly likely in financial markets.
(vi) The rival services are offered through different
trade channels and there is no probability of overlap
between the services or of the consumers.
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60. Insofar as the contention that the Defendants also provides
personalised consultation, there is specific averment by the
Defendants that initially the subscribers were provided with the option
of phone call consultation which reference services has been
discontinued in or around October, 2024 much prior to filing of the
suit. Assuming that one to one consultation were being offered by the
Defendants, considering the difference in the nature of astrology
services offered by the Plaintiff and the Defendants, even accepting
that one to one consultation was offered, by itself, is not sufficient to
come to a conclusion of similarity in services. The services of an
OTT/DTH service provider cannot prima facie be considered to be
competitive to a personalised astrology consultant.
61. The concept of initial interest confusion test recognizes that the
confusion in the minds of the consumers arises at the stage of
purchase and at the time of completing the transaction there is no
doubt in the minds of customers regarding the origin of goods. To
substantiate the initial interest confusion test, Mr. Khandekar would
contend that the impugned mark is used over mainstream channels
even outside the subscription model which is readily accessible even to
those who do not own “TATA Play” set top box or OTT subscription. It is
not denied that outside OTT/DTH platform, the Defendant’s services
are advertised soliciting subscription to their services. However, it is
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subscription based model. The test which is required to be applied is
whether the customer would be confused at the initial stage and would
be in a state of transient wonderment, which would apply where the
services are rendered through same trade channels. The chances of
likelihood of confusion are remote as the Defendant’s DTH service is
distinct from the personalised astrology services rendered by the
Plaintiff. In the case of Under Armour Inc vs Anish Agarwal and
Another (supra), the Appellant therein had placed on record google
search screenshots to demonstrate that search results showed
products from both the parties for purchase on e commerce platforms.
In that case both the parties were conducting sales through identical
trade channels i.e. through e-commerce websites. In that facts, the
Delhi High Court opined that an customer with average intelligence
and imperfect recollection who comes across the respondent’s
products on any of the e-commerce platforms used by both parties or
through other interactive websites may wonder whether there is
connection between the two marks and confusion would arise for brief
period of time.
62. Dealing with the case of passing off, the assessment of similarity
of the rival marks would precede the classic trinity test of (a) goodwill
and reputation (b) misrepresentation and (c) damage. As held above,
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this Court is of the view that the marks are dissimilar. The case for
passing off is therefore terminated at the threshold. However, this
Court has gone ahead and considered whether the trinity test stand
satisfied. In Saga Lifesciences Limited vs Aristo Pharmaceuticals Ltd
(supra), it was held that it is not necessary that sales have to be in
crores of rupees. In Century Traders vs Roshan Lal Duggar (supra),
the Court in the context of passing off action has opined that it is not
necessary that the goods should have acquired a reputation for quality
under that mark. Accepting the said proposition, there must be
material to demonstrate actionable goodwill and reputation, which is
required to be protected from being damaged by reason of the use of
the impugned mark. The sales turnover relied upon by the Plaintiff is
doubtful as the sales turnover is self-attested certificate by the
Plaintiff and certifies the sales generated by Maa Astro Duniya Pvt Ltd
in respect of Astro Dunia mark. The nexus between the company and
the mark has not been explained and the company is not the Plaintiff
but the proprietorship firm.
63. The Hon’ble Apex Court in the case of Cadila Healthcare Limited
(supra) has laid down following broad factors to be considered in an
action for passing off:
(a) The nature of the marks i.e. where the marks are
word marks or label marks or composite marks i.e.
both words and label marks;
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(b) the degree of resemblance between the marks,
phonetical similarity and hence, similar in idea;
(c) the nature of the goods in respect of which they
are used as trade marks;
(d) the similarity in the nature, character and
performance of the goods of the rival traders;
(e) the class of the purchasers who are likely to buy
the goods bearing the marks they require on their
education and intelligence and degree of care they
are likely to exercise while purchasing or using the
goods;
(f) the mode of purchasing goods or place the order
of goods;
(g) any other surrounding circumstances in aspect of
dissimilarity between the mark.”
64. The Hon’ble Apex Court has held that weightage is to be given to
each of the aforesaid factors depending upon the facts of each case. In
in the present case, both marks are label marks and as already held
above, there is no resemblance in the manner in which the label marks
are used. The services of the Defendants are available through
subscription model which is not so in the case of the Plaintiff’s services.
The common field of activity is a relevant consideration in an action for
passing off as the same would determine association between the
Plaintiff’s services and that of the Defendant. Considering that the
Plaintiff’s substantial consumer base are related to financial markets, it
is unlikely that the Plaintiff’s consumer base would be confused when
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confronted with the Defendant’s services which is a common content
meant for the masses. Insofar as the misrepresentation is concerned,
there is no material on record to come to prima facie conclusion of any
attempt of misrepresentation or that Defendants have projected its
services as something different from what it offers. It is necessary for
prima facie case to be made out of false representation even if
unintended which would lead the public to believe that the goods
offered by the Defendants are that of the Plaintiff. The manner in
which the Defendant’s services are made available to the general
public rules out possibility of misrepresentation.
65. In light of above, there is no prima facie case made out of
infringement of trade mark or passing off for grant of interim
injunction. Interim Application stands dismissed.
[Sharmila U. Deshmukh, J.]
Sairaj 45 of 45