Delhi High Court
Tv Today Network vs Saurashtra Aaj Tak And Anr on 30 July, 2026
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
# CNR No. DLHC010986622012
Reserved on: 28th March, 2026
Pronounced on: 30th July, 2026
+ RFA 320/2012 & CM APPL. 80300/2025
TV TODAY NETWORK .....Appellant
Through: Mr. Hrishikesh Baruah, Ms. Radhika
Gupta, Ms. Nishtha Sachan, Mr. Saket
Verma, Mr. Utkarsh Dviwedi, Mr.
Kumar Kshitij, Ms. Pragya Agarwal
and Mr. Yashashwy Ghosh, Advocates
(M: 9958387755)
Email:
[email protected]
versus
SAURASHTRA AAJ TAK AND ANR. .....Respondents
Through: Mr. Arjun Mahajan, Mr. Sumit R.
Sharma, Mr. Raghvendra N. Budholia,
Mr. Sagar Agarwal, Mr. Piyush
Gautam, Mr. Harshit Kapoor, Mr.
Manav Singh, Mr. Siddharth Bajaj,
Mr. Aryan Verma and Ms. Bhavya
Arora, Advocates
Mob: 8851563395
Email: [email protected]
CORAM:
HON'BLE MS. JUSTICE MINI PUSHKARNA
JUDGMENT
MINI PUSHKARNA, J.
INTRODUCTION:
1. The present Regular First Appeal (‘RFA’) has been filed under Section
96 of the Code of Civil Procedure, 1908 (‘CPC‘), thereby, challenging theSignature Not Verified
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judgment dated 29th February, 2012 (‘impugned judgment’), passed by the
Additional District Judge (‘ADJ’) (Central) 12, Tis Hazari Courts, Delhi, in
TM 08/2011 (earlier suit bearing C.S. 838/2003), titled as M/s T.V. Today
Network Versus M/s Saurashtra Aaj Tak and Another.
2. The aforesaid suit was filed by the appellant/plaintiff, seeking
permanent injunction to restrain the respondent/defendant from using the
name ‘Saurashtra Aaj Tak’ and publishing its newspaper under the name, style
and title of ‘Saurashtra Aaj Tak’. A further prayer for mandatory injunction
was sought for directing the respondent/defendant to change the name of its
newspaper from ‘Saurashtra Aaj Tak’ to any other name, style and title, not
being similar/deceptively similar to the name, style and title ‘Aaj Tak’.
3. The Trial Court, vide the impugned judgment, decreed the suit and
passed a decree of mandatory injunction in favour of the plaintiff/appellant
and against the respondent/defendant, thereby, directing the
respondent/defendant to prominently publish the disclaimer with its name,
wherever the word ‘Saurashtra Aaj Tak’ was published either in its own
newspaper or magazine or in any promotional material. The disclaimer was
directed to be published in the words “‘Saurashtra Aaj Tak’ has no connection
or association with ‘Aaj Tak’ of T.V. Today Network”. Further a decree of
permanent injunction was passed, thereby, restraining the
defendant/respondent from claiming any association or connection with the
appellant/plaintiff, either expressly or impliedly.
4. Before adverting to the facts of the present case, it is noted that this
Court, vide order dated 16th July, 2013, admitted the present appeal arising out
of the impugned judgment and decree. Further, the Court was informed that
on account of change in the management of respondent no. 1, respondent no.
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2 was no longer an editor or publisher in respondent no. 1. The Court noted
that respondent no. 2, despite service, had failed to appear and was
accordingly proceeded ex-parte. Additionally, it was also recorded that no
interim protection had been operating during the pendency of the suit before
the Trial Court, and consequently, the applications seeking interim relief were
dismissed.
5. On 02nd May, 2025, the counsel for the appellant informed this Court
that the trademark in question has been declared a Well-Known trademark by
the Registrar of Trademarks.
6. By way of order dated 19th December, 2025, this Court took on record
additional documents filed by the appellant/plaintiff, namely the Status Pages
and Trademark Registration Certificates pertaining to the mark ‘Aaj Tak’ in
Class 38 and Class 41, as well as the Trademark Registration Certificate of
‘Aaj Tak’ in Class 16.
FACTUAL MATRIX:
7. The brief facts, relevant for adjudication of the present appeal, as culled
out from the impugned judgment and the pleadings on record, are as follows:
Pre-Filing of Suit:
7.1. The present dispute pertains to the use of the expression ‘Aaj Tak’ by
the respondent/defendant and the publication of a newspaper under the title
‘Saurashtra Aaj Tak’.
7.2. The appellant/plaintiff namely, ‘T.V. Today Network’ is a company
registered under the Companies Act, 1956 (‘Companies Act‘) having its
registered office at Videocon Towers, E-1 Jhandewalen Extension, New Delhi-
110055. The appellant/plaintiff company is engaged in the business of
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dissemination of news in media. The appellant/plaintiff has been operating the
news channel ‘Aaj Tak’, and has a viewership of twenty million people.
7.3. The news channel ‘Aaj Tak’ was initially launched on ‘Doordarshan
Channel’ in the year 1995. In year 2000, ‘Aaj Tak’ was introduced as the first
24-hours Hindi news channel, and since then has acquired substantial public
viewership and recognition.
7.4. During the first week of December, 2002, the appellant/plaintiff came
to know that a newspaper under the title ‘Saurashtra Aaj Tak’ had been
launched and published by the respondent/defendant from Rajkot, Gujarat.
The newspaper was being published in Gujarati language and was being
circulated in the Saurashtra region of the State of Gujarat.
7.5. Upon acquiring knowledge regarding the publication of the newspaper,
the appellant/plaintiff issued a legal notice dated 27 th January, 2003, calling
upon the respondent/defendant to discontinue the use of the expression
‘Saurashtra Aaj Tak’. However, no reply to the said notice was received from
the respondent/defendant and the publication of the said newspaper continued
thereafter.
7.6. Aggrieved thereby, the appellant/plaintiff filed the suit, on 09 th April,
2003, being C.S. 838/2003, titled M/s T.V. Today Network Versus M/s
Saurashtra Aaj Tak and Another, before this Court.
Post-Filing of Suit:
7.7. This Court, by order dated 14th October, 2003, transferred the suit to
the District Court, in view of change in the pecuniary jurisdiction of this
Court, and subsequently, the suit was renumbered as TM 08/2011, titled as
M/s T.V. Today Network Versus M/s Saurashtra Aaj Tak and Another.
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7.8. The Trial Court by way of the order dated 20th August, 2008, recorded
that despite due service of summons, the defendant had stopped participating
in the proceedings and, accordingly, proceeded against them ex-parte.
7.9. The Trial Court by way of order dated 04th February, 2012, took the
subsequent fact on record with regard to the registration of the words ‘Aaj
Tak’ as a trademark during the pendency of the suit. M/s. Living Media India
Limited was granted Certificate of Registration of Trademark dated 07th
October, 2005, bearing Trade Mark no. 1242921, for the words ‘Aaj Tak’ in
Class 41 in respect of education, providing of training, entertainment, sporting
and cultural activities. Additionally, a Certificate of Registration of Trademark
dated 23rd November, 2005, bearing Trade Mark No. 1242922 for the mark
‘Aaj Tak’ was granted in favour of M/s. Living Media India Limited under
Class 38 in respect of Telecommunications.
7.10. The Trial Court passed the impugned judgment and decree dated 29 th
February, 2012, whereby, the suit was decreed in favour of the plaintiff and a
mandatory injunction was granted against the respondent/defendant, thereby,
directing the respondent/defendant to prominently publish the disclaimer with
its name, in the words “‘Saurashtra Aaj Tak’ has no connection or association
with ‘Aaj Tak’ of T.V. Today Network”, wherever the word ‘Saurashtra Aaj
Tak’ was published, either in its own newspaper or magazine or in any
promotional material. Further, a decree of permanent injunction was passed,
restraining the respondent/defendant from claiming any association or
connection with the appellant/plaintiff, either expressly or impliedly.
7.11. Thus, the present appeal has been filed by the appellant/plaintiff,
seeking to set aside the impugned judgment and decree, since theSignature Not Verified
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respondent/defendant were not restrained from using the mark ‘Saurashtra Aaj
Tak’, but were allowed to use the same with a disclaimer, as aforesaid.
SUBMISSIONS OF THE APPELLANT:
8. Before this Court, the appellant has raised the following contentions:
8.1 The present appeal has been filed against the impugned judgment in so
far as it permits the respondent to use the mark ‘Saurashtra Aaj Tak’, despite
clear and categorical findings that the respondent are riding on the goodwill
of the appellant.
8.2 The appellant forms part of the India Today Group, which was
established in the year 1975 with the launch of the ‘India Today magazine’
and has since developed into a reputed and well-established media group in
the country. The appellant adopted and commenced use of the trademark ‘Aaj
Tak’/’आज तक’ in the year 1995, when a 30-minute news programme under the
said name was launched on Doordarshan Channel of Prasar Bharti
Broadcasting Corporation. The said programme gained considerable
popularity and success amongst viewers, which eventually led to the launch
of India’s first private 24-hour Hindi satellite news channel under the mark
‘Aaj Tak’/’आज तक’ in the year 2000, and since then, the appellant has
continuously engaged in dissemination of news and allied media services
under the said mark.
8.3 The appellant has been operating for more than thirty years, and has
acquired substantial reputation and goodwill in the market with a viewership
exceeding twenty million people. By virtue of long, continuous, exclusive and
uninterrupted use, the mark ‘Aaj Tak’/’आज तक’ has acquired distinctiveness
and secondary meaning and has become closely associated with the appellant
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and its news dissemination activities. Over a period of time, the combination
of the words ‘Aaj’ and ‘Tak’ have become synonymous with the appellant
and has acquired the status of a household name amongst the public.
8.4 Further, during the pendency of the suit in question, the appellant
secured the registration for the mark ‘Aaj Tak’ bearing Trademark no.
1242921, i.e., Exhibit PW-1/11, dated 07th October, 2005 in Class 41 and
Trademark no. 1242922, i.e., Exhibit PW-1/12, dated 23rd November, 2005,
in Class 38 in the name of M/s Living Media India Limited, i.e., the holding
company of the appellant. Both the aforesaid trademark registrations operate
as of date 13th October, 2003.
8.5 The appellant is the prior user of the trademark ‘Aaj Tak’, and the
subsequent adoption of the mark ‘Saurashtra Aaj Tak’ by the respondent, even
in Gujarati language, would deceive and mislead the public as well as the
advertisers, into believing that the newspaper belongs to or is closely
associated to the appellant. The respondent has adopted the deceptively
similar trade name for its own gain and to exploit the appellant’s goodwill and
name, generated over the years.
8.6 The respondent has adopted a mark that is phonetically similar to the
appellant’s mark, and even by adding the prefix ‘Saurashtra’ to the words ‘Aaj
Tak’, the respondent’s mark remains deceptively similar.
8.7 The appellant has a family of marks, all of which use the ‘Tak’ suffix,
and the same has become a source identifier of the marks of the appellant and
is therefore, the dominant part of the marks.
8.8 The appellant and respondent operate in the same business, i.e.,
dissemination of news and media business, in which the respondent only has
a regional presence while the appellant enjoys a national presence. Thus, the
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apprehension that the respondent is riding on the goodwill of the appellant
cannot be ruled out.
8.9 The consumers have developed a certain expectation and standard of
quality from the appellant, and if the services of the respondent fall short of
such expectations, then the same is likely to be suffered by the appellant on
account of ostensible likelihood of association between the appellant and
respondent, owing to similarity of the marks.
8.10 Thus, the appellant has established the ingredients of passing off, i.e.,
goodwill, misrepresentation and likelihood of damage before the Trial Court.
The Trial Court has itself arrived at the finding that the adoption of the mark
‘Saurashtra Aaj Tak’ by the respondent is likely to be associated with the
appellant’s trademark ‘Aaj Tak’, and likely to create confusion in the minds
of the public. The Trial Court has also come to the conclusion that the acts of
the respondent are likely to injure the goodwill and reputation of the appellant.
8.11 However, despite such categorical findings, the Trial Court has erred
in not granting permanent injunction, and thereby, completely restraining the
respondent/defendant from using the mark ‘Aaj Tak’.
8.12 The Trial Court has erroneously held that the use of the mark
‘Saurashtra Aaj Tak’ by the respondent was not per-se dishonest, and the
respondent must have also acquired goodwill. The said findings of the Trial
Court are based on surmises and conjectures, since the respondent has not led
any evidence to establish its goodwill and reputation. Further, the element of
per-se dishonesty is not a material aspect for establishing passing off, and
proof of fraudulent intention is not a necessary element in a passing off action.
8.13 The written statement dated 22nd April, 2003, filed by the
respondent/defendant before the Trial court was only a pleading, and not
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evidence. The contentions of the respondent/defendant in the written
statement had to be proved by way of evidence and witness had to be cross-
examined in this regard. However, no evidence was led by the respondent.
8.14 Further, the respondent has asserted various defences, including bona
fide use, which were not tested in evidence and therefore cannot be the basis
of any legitimate claim. Since the respondent did not lead any evidence before
the Trial Court, an adverse inference has to be drawn against the respondent.
8.15 It was the case of the respondent itself that it had commenced its
business in the year 2002 under the name ‘Saurashtra Aaj Tak’. Even though
the respondent had obtained registration for the name ‘Saurashtra Aaj Tak’
under the Press and Registration of Books Act, 1867 (‘PRB Act‘), however,
the said registration under the PRB Act has no relevance or over-riding effect
on the provisions of the Trade Marks Act, 1999 (‘Trade Marks Act‘).
8.16 Thus, the impugned judgment erred in permitting the respondent to use
the mark ‘Saurashtra Aaj Tak’ with a disclaimer.
8.17 During the pendency of the present appeal, ‘Aaj Tak’ has been declared
as a Well-Known trademark by the Registrar of Trademarks. Thus, the
adoption of the words ‘Saurashtra Aaj Tak’, by the respondent is not
permissible as the same amounts to a conflicting mark.
8.18 The suit in question has been instituted by the company ‘T.V. Today
Network Limited’, which is the entity using the trademark ‘Aaj Tak’. The
name of the appellant is clear from the plaint as well as the documents filed
by the appellant before the Trial Court. The institution of the suit by the
authorized representative is maintainable and there is no defect in the Board
Resolution dated 23rd May, 2008, which duly authorizes Mr. Ashok Kumar
Vermani, General Manager (Legal) and Company Secretory to institute
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proceedings before the Court.
8.19 The appellant had inadvertently missed the word ‘Limited’ in the cause
title. However, the said defect is only a case of misdescription, and is not fatal
to the maintainability of the suit. Moreover, the respondent ought to have
taken an objection in this regard at the very inception, and not at the stage of
appeal.
SUBMISSION OF RESPONDENT NO. 1:
9. Rebutting the contentions of the appellant, the respondent has raised
the following arguments before this Court:
9.1 The suit filed by the appellant suffers from serious defect and is not
maintainable in the eye of law. The appellant has failed to demonstrate any
enforceable legal right in the trademark ‘Aaj Tak’ and has not properly
disclosed its legal status or the capacity in which it claims to have filed the
suit. The full legal name of the plaintiff/appellant entity has not been
disclosed, i.e., whether it is a limited company, private limited company, or
a partnership firm.
9.2 Only a registered proprietor or a duly authorised licensee can maintain
an action for infringement or passing off. The appellant has claimed
proprietary rights in the trademark ‘Aaj Tak’, but the Trademark Registration
Certificates filed on record clearly show that the mark ‘Aaj Tak’ is not
registered in the name of the appellant, but in the name of M/s Living Media
India Limited, which is a separate legal entity. Thus, the appellant failed to
disclose that the registered proprietor of the trademark ‘Aaj Tak’ is not ‘T.V.
Today Network Limited’. A party approaching the Court must disclose all
material facts and cannot be permitted to obtain equitable relief by
concealing relevant information.
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9.3 The appellant has failed to produce any licence, assignment or power
of attorney from M/s Living Media India Limited. The plaint filed by the
appellant neither contains averments explaining the relationship between the
appellant company and M/s Living Media India Limited, nor any right to
enforce the mark, rendering the present proceedings unsustainable. There is
no pleading in the plaint about any internal group structure, control, or
authorisation from M/s Living Media India Limited, thereby, making the
claim wholly unsupported.
9.4 The suit suffers from a clear misjoinder of parties, as the registered
proprietor, M/s Living Media India Limited, who alone could claim
proprietary rights in the mark ‘Aaj Tak’, was not impleaded as a party to the
proceedings despite the appellant asserting itself to be merely a division
thereof.
9.5 The Board Resolution dated 23rd May, 2008, relied by the appellant to
demonstrate authorisation, is signed solely by Mr. Ashok Kumar Vermani.
However, there is no document on record to show that he was a director of
the appellant company at the relevant time, nor there is any supporting
material such as minutes of the board meeting or the signature of any other
directors. Therefore, the said Board Resolution is self-serving and the
institution of the present suit was unauthorised and legally untenable.
9.6 M/s Living Media India Limited was the original entity using the mark
‘Aaj Tak’ and the appellant has, at best, derived user rights through a later
arrangement. However, no such agreement or transfer document has been
placed on record in the present suit, raising serious doubts about the
maintainability of the suit as the appellant has no locus standi to file or
pursue the present proceedings.
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9.7 The respondent’s use of the mark ‘Saurashtra Aaj Tak’ since the year
2002 is prior, continuous, bona fide, and confined to a local area, and is
therefore protected under the doctrine of prior user under Section 34 of the
Trade Marks Act, against claims of passing off by a subsequent registrant or
user.
9.8 The respondent started a small regional newspaper titled as
‘Saurashtra Aaj Tak’, in Gujarati language, which is circulated exclusively
in the Saurashtra region of the State of Gujarat.
9.9 The said publication under the name of ‘Saurashtra Aaj Tak’ was
started in the year 2002, after obtaining approval and title verification from
the Registrar of Newspaper for India (‘RNI’) under the PRB Act. The said
approval was granted after verification of the title, which was not found to
be identical or deceptively similar to any existing publication name. The
appellant had never questioned or opposed the name of the respondent’s
newspaper at the time of RNI registration or during the early years of
publication.
9.10 The name ‘Saurashtra Aaj Tak’ was adopted by the respondent in good
faith, with a view to reflect its local character (‘Saurashtra’) and its editorial
nature as a daily publication (‘Aaj Tak’ meaning ‘up to today’ or ‘as of today’
in Hindi/Gujarati). The term ‘Aaj Tak’ has been used descriptively to signify
daily news coverage, and the addition of ‘Saurashtra’ provides a clear
regional qualifier that differentiates the mark in totality.
9.11 The respondent has not adopted any trade dress, logo, colour
combination, font style, or slogan associated with the appellant’s television
channel. The manner in which the name ‘Saurashtra Aaj Tak’ has been used
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alongside regional cultural symbols and Gujarati content makes it evident
that it is a localised, original, and self-contained brand identity.
9.12 Respondent’s newspaper is confined strictly to the print medium, has
no presence in television or digital broadcasting, and is targeted solely at the
vernacular, local readership of the Saurashtra region.
9.13 The appellant has neither pleaded nor placed on record any documents
or evidence to demonstrate that it has ever used the mark ‘Aaj Tak’ in relation
to newspaper or print media. The appellant is a national broadcasting
channel, which began operating ‘Aaj Tak’ as 24-hours news channel,
however, there is no evidence to demonstrate that the appellant has ever
launched or attempted to launch a newspaper under the name of ‘Aaj Tak’.
9.14 Thus, the respondent’s use of the name ‘Saurashtra Aaj Tak’ predates
any corresponding use by the appellant in print media in the said territory,
and is therefore shielded by Section 34 of the Trade Marks Act.
9.15 The absence of overlap in the class of consumers, the difference in
language, geography, and media platform, all contribute to establishing that
the respondent’s adoption and use of the name ‘Saurashtra Aaj Tak’ was not
only bona fide, but also unlikely to cause confusion or mislead any member
of the public or trade.
9.16 The adoption of the name was independent, without any knowledge of
the appellant’s use of the term ‘Aaj Tak’ in the television segment, and
without any intention to imitate, encash upon, or derive benefit from the
appellant’s alleged goodwill or reputation.
9.17 The absence of any prior challenge by the appellant, the lack of
confusion or customer complaints, and the fact that the respondent has
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always operated independently, are all indicators that the respondent’s use of
the mark ‘Saurashtra Aaj Tak’ was neither deceptive nor dishonest.
9.18 Thus, the impugned judgment correctly held that the factual averments
in the written statement reflected bona fide local use, and that the respondent
may have, over time, developed goodwill within its limited sphere. The Trial
Court found no indication of dishonest intent or bad faith on the part of the
respondent, and therefore declined to grant a blanket injunction. The
condition of disclaimer as imposed on the respondent’s use of the mark,
addresses the appellant’s apprehensions, while protecting the respondent’s
bona fide and independent use of the mark within a localised territory.
9.19 Appellant has failed to establish any of the legal ingredients of passing
off, and the mere existence of the phrase ‘Aaj Tak’ in both names, without
any actual evidence of confusion or deception, is insufficient to sustain the
claim.
9.20 The term ‘Aaj Tak’ is a common expression in Hindi, which translates
to ‘Till Today’ or ‘As of Today’ in English. It is a descriptive, generic, or
commonly used term and not fanciful, invented, or arbitrary in nature.
Therefore, it cannot be monopolised by any one entity. Further, the appellant
did not place any evidence on record to establish that the term ‘Aaj Tak’ had
acquired a secondary meaning, warranting exclusive rights across all
platforms, language, territories.
9.21 The RNI has approved multiple titles incorporating the phrase ‘Aaj
Tak’ across different regions and languages, which shows that the phrase is
not regarded as uniquely distinctive, but is treated as a descriptive expression
available for bona fide use with appropriate qualifiers. The respondent’s use
of the term ‘Saurashtra Aaj Tak’ was approved by the RNI after proper
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scrutiny, indicating that the title was not found to be deceptively similar to
any existing publication, including the appellant’s TV channel.
9.22 The appellant has also failed to demonstrate the existence of any actual
confusion or a reasonable likelihood thereof. The evidence on record does
not support the allegation that any segment of the public, advertisers, or
readers was misled into believing that the respondent’s publication was
associated with or emanating from the appellant. The names of such persons
have been not been disclosed, no affidavits from any advertiser or third party
have been filed, and no documentary evidence has been produced to support
the plea.
9.23 A visual comparison of the respective marks further reinforces the
absence of any likelihood of confusion. The appellant’s mark ‘Aaj Tak’ is in
Hindi Devanagari script, enclosed in a red trapezoidal shape. In contrast, the
respondent’s logo clearly features the phrase ‘Saurashtra Aaj Tak’ written in
Gujarati script, with no red background, no similarity in stylisation, and no
visual alignment with the appellant’s branding.
9.24 Even a character-wise analysis shows stark differences. These
distinctions, both in script and in trade dress, make it evident that the
respondent’s use is neither deceptive nor dishonest. The overall look, font,
and linguistic presentation of the respondent’s mark is unique and region-
specific.
9.25 Further, the respondent has always used the full name ‘Saurashtra Aaj
Tak’ as a composite title, and has never attempted to isolate or emphasise the
words ‘Aaj Tak’ independently in its masthead, promotional material, or
design, emphasizing the specific geographical region it serves.
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9.26 Thus, the Trial Court correctly examined all material placed on record
and found no evidence to establish that the term ‘Aaj Tak’ had acquired such
distinctiveness or recognition as to warrant a monopoly across unrelated
platforms.
9.27 Therefore, the Trial Court rightly refused to grant a blanket injunction.
The decree is, therefore, based on a sound appreciation of the record and
does not suffer from any legal or factual infirmity.
9.28 The Trial Court directed the respondent to carry a clear and prominent
disclaimer on every publication stating that there is no association with ‘Aaj
Tak’ of ‘T.V. Today Network’. The respondent has complied with this order
consistently since the date of the decree. The presence of such a disclaimer
further safeguards against any possibility of confusion and reinforces the
respondent’s independent identity.
9.29 The appellant has not filed any supporting material such as consumer
surveys, market data, or independent recognition studies to establish that the
mark of the appellant had become Well-Known at the time of adjudication.
While the appellant may claim Well-Known status today based on its
continued presence in the media space, such recognition, if any, is a post-
decree development and cannot be relied upon to invalidate or undermine
the impugned judgment passed in the year 2012.
9.30 The measured approach adopted by the Trial Court aligns with the
well-settled principle that injunctive relief is an equitable remedy, to be
granted on considerations of fairness, proportionality, and the overall
conduct of the parties.
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ANALYSIS AND FINDINGS:
10. This Court has heard the learned counsels for the parties, and has
perused the documents on record.
11. The present appeal impugns the judgment and decree dated 29 th
February, 2012, passed by the Trial Court in TM 08/2011, wherein, despite
holding the appellant to have established that the words ‘Aaj Tak’ used by
the appellant had acquired distinctive meaning and the appellant has
goodwill and reputation in the said mark, the Trial Court held that it could
not be ruled out that the respondent/defendant has also developed goodwill
and reputation in the mark ‘Saurashtra Aaj Tak’ and that the said use by the
respondent/defendant was not per-se dishonest. Thus, on the said basis, the
respondent/defendant has been allowed to continue the use of the mark
‘Saurashtra Aaj Tak’, however, with a disclaimer that it had no connection or
association with ‘Aaj Tak’ of ‘T.V. Today Network’.
12. The suit had been filed by the appellant/plaintiff seeking a decree of
permanent injunction restraining the defendant from using the name
‘Saurashtra Aaj Tak’ and/or publishing its newspaper under the said name.
The appellant/plaintiff also sought a decree of mandatory injunction
directing the defendant to change the name of its newspaper from ‘Saurashtra
Aaj Tak’ to any other name that is not deceptively similar to the name and
style of the plaintiff’s channel.
13. The Trial Court passed the decree of mandatory injunction, thereby,
directing the defendant to prominently publish a disclaimer with its name
wherever the word ‘Saurashtra Aaj Tak’ was published, either in its own
newspaper/magazine or in any promotional material, to the effect that
“‘Saurashtra Aaj Tak’ has no connection or association with ‘Aaj Tak’ of T.V.
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Today Network”. The disclaimer was directed to be published in font size of
not less than 12, and if it was published in a font size of less than 12, it should
not be less than the font size of defendant’s newspaper’s name as published.
Further, a decree of permanent injunction was also passed, thereby,
restraining the defendant, its agents, assigns, etc., from claiming any
association or connection with the plaintiff, either expressly or impliedly.
14. Accordingly, it is evident that the Trial Court while granting relief in
favour of the appellant, did not grant a decree of permanent injunction
restraining the respondent from using the mark ‘Saurashtra Aaj Tak’
altogether.
15. The Trial Court record reveals that the respondent/defendant was
proceeded ex-parte vide order dated 20th August, 2008. Although the
respondent had filed a written statement before the Trial Court, it did not lead
any evidence.
16. During the pendency of the suit, the appellant/plaintiff got the mark
‘Aaj Tak’ registered under Classes 38 and 41 in the name of M/s Living
Media India Limited. The Trial Court noted the testimony of the PW-1, i.e.,
Mr. Ashok Kumar Vermani, that the words ‘Aaj Tak’ were closely associated
with the appellant company in relation to its business of news dissemination,
media channel and allied businesses. Further, the Trial Court took note of the
testimony of PW-1 that they had established tremendous goodwill, and the
words ‘Aaj Tak’ were closely associated with the appellant/plaintiff in the
news industry for the last several years. It was held that the combination of
the words ‘Aaj Tak’ had become synonymous with the appellant/plaintiff
apart from being a household name.
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17. Furthermore, the Trial Court held that although the words ‘Aaj Tak’
literally mean ‘Till Today’ and are descriptive words, however, due to long
usage of the said words by the appellant/plaintiff in the context of news
dissemination, the words ‘Aaj Tak’ had attained secondary meaning in the
field of news dissemination by the appellant/plaintiff. Thus, the words ‘Aaj
Tak’ were held to have acquired distinctive meaning and reputation vis-Ã -vis
the appellant’s services of news dissemination.
18. The Trial Court further held that the appellant/plaintiff successfully
established that the use of ‘Saurashtra Aaj Tak’ by the respondent/defendant
was likely to create confusion in the minds of the general public and
consumers, and create a likelihood of association. It was held that the fields
and provision of services provided by the appellant/plaintiff and the
respondent/defendant are on parallel lines, i.e., dissemination of news and
media business. Likelihood of confusion was held by the Trial Court even
though the respondent/defendant only has a regional presence in print media,
while the appellant/plaintiff has a national presence.
19. The Trial Court further went on to hold that the appellant/plaintiff has
goodwill and reputation in the mark ‘Aaj Tak’ and that the apprehension of
the respondent/defendant riding on the goodwill of the appellant/plaintiff,
cannot be ruled out. It was further held that any act, omission or misfeasance
on the part of the respondent/defendant is likely to injure the goodwill and
reputation of the appellant/plaintiff.
20. The Trial Court held that due to the services provided by the
appellant/plaintiff during the course of time, the consumers might have
developed certain expectations and quality standards. In case, the provision
of services by the respondent/defendant falls short of that standard, the
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fallout of the same is likely to be suffered by the appellant/plaintiff on
account of the ostensible likelihood of association between the
appellant/plaintiff and the respondent/defendant, due to the similarity of
trade/service marks.
21. Despite holding in categorical terms that the appellant/plaintiff had
goodwill and reputation in the mark ‘Aaj Tak’, the Trial Court held that it
could not be ruled out that the respondent/defendant had also developed good
will and reputation in its trademark in the course of time. The Trial Court
further held that prima facie acts of the respondent/defendant did not appear
to be per-se dishonest.
22. The aforesaid findings of the Trial Court are erroneous, in the absence
of any evidence by the respondent/defendant in this regard. It is to be noted
that the respondent/defendant in its written statement claimed that it had
registered the words ‘Saurashtra Aaj Tak’ under the PRB Act. However, it
never claimed bona fide use of the words ‘Aaj Tak’. No case was pleaded by
the respondent/defendant under Section 35 of the Trade Marks Act, which
provides the defence of bona fide use. No evidence was led by the
respondent/defendant to show that its use of the words ‘Aaj Tak’ was honest
or bona fide in any manner.
23. As noted above, the respondent/defendant was proceeded ex-parte in
the trial proceedings and did not lead any evidence. Thus, an adverse
inference would be drawn against the respondent. The testimony of the
plaintiff’s witness, i.e., PW-1 being Mr. Ashok Kumar Vermani, has
remained uncontroverted.
24. The Trial Court has categorically held that the mark of the
appellant/plaintiff has acquired distinctiveness. It has also been held by the
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Trial Court that the use of the mark ‘Saurashtra Aaj Tak’ by the
respondent/defendant would lead to likelihood of confusion and association
and is likely to injure the reputation of the appellant/plaintiff. Since the
respondent/defendant has not filed any appeal or cross-objections against the
aforesaid findings, the said findings have attained finality. Thus, only the
issue of the Trial Court permitting the respondent/defendant to use the mark
‘Saurashtra Aaj Tak’ with a disclaimer is under challenge before this Court,
and shall form the subject matter of adjudication in the present appeal.
25. It is noted that during the pendency of the appeal, the mark ‘Aaj Tak’
has also been registered under Class 16, i.e., newspapers in the name of M/s
Living Media India Limited. Furthermore, the mark ‘Aaj Tak’ has been
declared a Well-Known trademark by the Registrar of Trademarks.
Whether The Appellant/Plaintiff Had The Locus Standi To File The Suit
For Passing Off?
26. The respondent herein has contended that the suit in question was not
maintainable, as the appellant/plaintiff company is not the registered
proprietor of the mark ‘Aaj Tak’ and has no locus to file the suit. It is the case
of the respondent/defendant that the mark ‘Aaj Tak’ was registered as a
trademark under Classes 38 and 41 in the name of M/s Living Media India
Limited, which is not a party to the present suit.
27. In this regard, it is to be noted that the suit in question had been filed
with respect to passing off, and not infringement of the mark ‘Aaj Tak’. The
relevant provisions, i.e., Section 27 and Section 28 of the Trade Marks Act,
that are invoked in a suit for passing off, are as follows:
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“xxx xxx xxx
27. No action for infringement of unregistered trade mark.– (1)
No person shall be entitled to institute any proceeding to prevent,
or to recover damages for, the infringement of an unregistered
trade mark.
(2) Nothing in this Act shall be deemed to affect rights of action
against any person for passing off goods or services as the goods
of another person or as services provided by another person, or
the remedies in respect thereof.
28. Rights conferred by registration.– (1) Subject to the other
provisions of this Act, the registration of a trade mark shall, if
valid, give to the registered proprietor of the trade mark the
exclusive right to the use of the trade mark in relation to the
goods or services in respect of which the trade mark is registered
and to obtain relief in respect of infringement of the trade mark
in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub-
section (1) shall be subject to any conditions and limitations to
which the registration is subject.
(3) Where two or more persons are registered proprietors of trade
marks, which are identical with or nearly resemble each other, the
exclusive right to the use of any of those trade marks shall not
(except so far as their respective rights are subject to any
conditions or limitations entered on the register) be deemed to
have been acquired by any one of those persons as against any
other of those persons merely by registration of the trade marks
but each of those persons has otherwise the same rights as against
other persons (not being registered users using by way of
permitted use) as he would have if he were the sole registered
proprietor.
xxx xxx xxx”
(Emphasis supplied)
28. Section 28 of the Trade Marks Act grants a registered proprietor of the
trademark, the exclusive right to obtain relief in respect of infringement of the
trademark. Section 27(1) of the Trade Marks Act provides that no person can
institute any proceedings with respect to infringement of an unregistered
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trademark. However, Section 27(2) is a Savings Clause, which states that
nothing in this Act shall be deemed to affect rights of action against any person
for passing off goods or services as the goods of another person or as services
provided by another person, or the remedies in respect thereof. Thus, a
combined reading of Sections 27 and 28 of the Trade Marks Act makes it clear
that though a suit for infringement of a registered trademark can be filed by
the registered proprietor, the same does not bar the common law remedy of
passing off, which can be availed even by a party which is a prior user of the
mark, even if not the registered proprietor of the mark.
29. At this stage, it would be fruitful to refer to the decision in the case of
S. Syed Mohideen Versus P. Sulochana Bai, (2016) 2 SCC 683, wherein, the
Supreme Court held that a collective reading of the Sections 27, 28, 29 and
34 of the Trade Marks Act shows that the rights conferred by registration are
subject to the rights of the prior user of the trademark. Section 27(2) of the
Trade Marks Act makes it clear that the rights in passing off emanate from the
common law and not from the statutory provisions and they are independent
from the rights conferred by the Trade Marks Act. Thus, as per the scheme of
the Trade Marks Act, even the registered proprietor cannot disturb/interfere
with the rights of the prior user. The action for passing off which is premised
on the rights of prior user generating a goodwill, shall be unaffected by any
registration provided under the Trade Marks Act. The use of the mark/carrying
on business under the name confers rights in favour of such party and
generates goodwill in the market. Accordingly, the latter user of the
mark/name in the business, cannot misrepresent its business as that of
business of the prior right holder. The prior user is essentially considered to
be superior than a party having any other rights. Consequently, the
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examination of rights in common law which are based on goodwill,
misrepresentation and damage are independent to that of registered rights.
Further, registration is merely a recognition of the rights pre-existing in
common law, and does not itself create any rights.
30. Thus, in the aforesaid case of S. Syed Mohideen Versus P. Sulochana
Bai (Supra), it was held as follows:
“xxx xxx xxx
30.Firstly, the answer to this proposition can be seen by carefully
looking at the provisions of the Trade Marks Act, 1999 (the Act).
Collective reading of the provisions especially Sections 27, 28,
29 and 34 of the Trade Marks Act, 1999 would show that the
rights conferred by registration are subject to the rights of the
prior user of the trade mark. We have already reproduced Section
27 and Section 29 of the Act.
30.1. From the reading of Section 27(2) of the Act, it is clear that
the right of action of any person for passing off the
goods/services of another person and remedies thereof are not
affected by the provisions of the Act. Thus, the rights in passing
off are emanating from the common law and not from the
provisions of the Act and they are independent from the rights
conferred by the Act. This is evident from the reading of the
opening words of Section 27(2) which are “Nothing in this Act
shall be deemed to affect rights….”
30.2. Likewise, the registration of the mark shall give exclusive
rights to the use of the trade mark subject to the other provisions
of this Act. Thus, the rights granted by the registration in the
form of exclusivity are not absolute but are subject to the
provisions of the Act.
30.3. Section 28(3) of the Act provides that the rights of two
registered proprietors of identical or nearly resembling trade
marks shall not be enforced against each other. However, they
shall be same against the third parties. Section 28(3) merely
provides that there shall be no rights of one registered proprietor
vis-Ã -vis another but only for the purpose of registration. The
said provision 28(3) nowhere comments about the rights of
passing off which shall remain unaffected due to overriding
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effect of Section 27(2) of the Act and thus the rights emanating
from the common law shall remain undisturbed by the
enactment of Section 28(3) which clearly states that the rights of
one registered proprietor shall not be enforced against the
another person.
30.4. Section 34 of the Trade Marks Act, 1999 provides that
nothing in this Act shall entitle the registered proprietor or
registered user to interfere with the rights of prior user. Conjoint
reading of Sections 34, 27 and 28 would show that the rights of
registration are subject to Section 34 which can be seen from the
opening words of Section 28 of the Act which states “Subject to
the other provisions of this Act, the registration of a trade mark
shall, if valid, give to the registered proprietor….” and also the
opening words of Section 34 which states “Nothing in this Act
shall entitle the proprietor or a registered user of registered trade
mark to interfere….” Thus, the scheme of the Act is such where
rights of prior user are recognised superior than that of the
registration and even the registered proprietor cannot
disturb/interfere with the rights of prior user. The overall effect
of collective reading of the provisions of the Act is that the action
for passing off which is premised on the rights of prior user
generating a goodwill shall be unaffected by any registration
provided under the Act. This proposition has been discussed in
extenso in N.R. Dongre v. Whirlpool Corpn. [N.R.
Dongre v. Whirlpool Corpn., 1995 SCC OnLine Del 310 : AIR
1995 Del 300] wherein the Division Bench of the Delhi High
Court recognised that the registration is not an indefeasible right
and the same is subject to rights of prior user. The said decision
of Whirlpool [N.R. Dongre v. Whirlpool Corpn., 1995 SCC
OnLine Del 310 : AIR 1995 Del 300] was further affirmed by the
Supreme Court of India in N.R. Dongre v. Whirlpool
Corpn. [N.R. Dongre v. Whirlpool Corpn., (1996) 5 SCC 714]
30.5. The above were the reasonings from the provisions arising
from the plain reading of the Act which gives clear indication that
the rights of prior user are superior than that of registration and
are unaffected by the registration rights under the Act.
31. Secondly, there are other additional reasonings as to why the
passing off rights are considered to be superior than that of
registration rights.
31.1. Traditionally, passing off in common law is considered to
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be a right for protection of goodwill in the business against
misrepresentation caused in the course of trade and for
prevention of resultant damage on account of the said
misrepresentation. The three ingredients of passing off are
goodwill, misrepresentation and damage. These ingredients are
considered to be classical trinity under the law of passing off as
per the speech of Lord Oliver laid down in Reckitt & Colman
Products Ltd. v. Borden Inc. [Reckitt & Colman Products
Ltd. v. Borden Inc., (1990) 1 WLR 491 : (1990) 1 All ER 873 (HL)]
which is more popularly known as “Jif Lemon” case wherein Lord
Oliver reduced the five guidelines laid out by Lord Diplock
in Erven Warnink Besloten Vennootschap v. J. Townend & Sons
(Hull) Ltd. [Erven Warnink Besloten Vennootschap v. J. Townend
& Sons (Hull) Ltd., 1979 AC 731 at p. 742 : (1979) 3 WLR 68 :
(1979) 2 All ER 927 (HL)] (“the Advocaat case”) to three
elements : (1) goodwill owned by a trader, (2) misrepresentation,
and (3) damage to goodwill. Thus, the passing off action is
essentially an action in deceit where the common law rule is that
no person is entitled to carry on his or her business on pretext
that the said business is of that of another. This Court has given
its imprimatur to the above principle in Laxmikant V.
Patel v. Chetanbhai Shah [Laxmikant V. Patel v. Chetanbhai
Shah, (2002) 3 SCC 65].
31.2. The applicability of the said principle can be seen as to
which proprietor has generated the goodwill by way of use of the
mark/name in the business. The use of the mark/carrying on
business under the name confers the rights in favour of the
person and generates goodwill in the market. Accordingly, the
latter user of the mark/name or in the business cannot
misrepresent his business as that of business of the prior right
holder. That is the reason why essentially the prior user is
considered to be superior than that of any other rights.
Consequently, the examination of rights in common law which
are based on goodwill, misrepresentation and damage are
independent to that of registered rights. The mere fact that both
prior user and subsequent user are registered proprietors are
irrelevant for the purposes of examining who generated the
goodwill first in the market and whether the latter user is
causing misrepresentation in the course of trade and damaging
the goodwill and reputation of the prior right holder/former
user. That is the additional reasoning that the statutory rights
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must pave the way for common law rights of passing off.
32.Thirdly, it is also recognised principle in common law
jurisdiction that passing off right is broader remedy than that of
infringement. This is due to the reason that the passing off
doctrine operates on the general principle that no person is
entitled to represent his or her business as business of other
person. The said action in deceit is maintainable for diverse
reasons other than that of registered rights which are allocated
rights under the Act. The authorities of other common law
jurisdictions like England more specifically Kerly’s Law of Trade
Marks and Trade Names, 14th Edn., Thomson, Sweet & Maxwell
South Asian Edition recognises the principle that where trade
mark action fails, passing off action may still succeed on the same
evidence. This has been explained by the learned author by
observing the following:
“15-033. A claimant may fail to make out a case of
infringement of a trade mark for various reasons and may
yet show that by imitating the mark claimed as a trade mark,
or otherwise, the defendant has done what is calculated to
pass off his goods as those of the claimant. A claim in
‘passing off’ has generally been added as a second string to
actions for infringement, and has on occasion succeeded
where the claim for infringement has failed.”
32.1. The same author also recognises the principle that the
Trade Marks Act affords no bar to the passing off action. This
has been explained by the learned author as under:
“15-034. Subject to possibly one qualification, nothing in
the Trade Marks Act, 1994 affects a trader’s right against
another in an action for passing off. It is, therefore, no bar
to an action for passing off that the trade name, get up or
any other of the badges identified with the claimant’s
business, which are alleged to have been copies or imitated
by the defendant, might have been, but are not registered as,
trade marks, even though the evidence is wholly addressed
to what may be a mark capable of registration. Again, it is
no defence to passing off that the defendant’s mark is
registered. The Act offers advantages to those who register
their trade marks, but imposes no penalty upon those who
do not. It is equally no bar to an action for passing off that
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trade mark that is incapable of registration. A passing off
action can even lie against a registered proprietor of the
mark sued upon. The fact that a claimant is using a mark
registered by another party (or even the defendant) does
not of itself prevent goodwill being generated by the use of
the mark, or prevent such a claimant from relying on such
goodwill in an action against the registered proprietor.
Such unregistered marks are frequently referred to as
‘common law trade marks’.”
32.2. From the reading of the aforementioned excerpts
from Kerly’s Law of Trade Marks and Trade Names, it can be said
that not merely it is recognised in India but in other jurisdictions
also including England/UK (Provisions of the UK Trade Marks
Act, 1994 are analogous to the Indian Trade Marks Act, 1999)
that the registration is no defence to a passing off action and nor
the Trade Marks Act, 1999 affords any bar to a passing off action.
In such an event, the rights conferred by the Act under the
provisions of Section 28 have to be subject to the provisions of
Section 27(2) of the Act and thus the passing off action has to be
considered independent “Iruttukadai Halwa” under the
provisions of the Trade Marks Act, 1999.
33.Fourthly, it is also a well-settled principle of law in the field
of the trade marks that the registration merely recognises the
rights which are already pre-existing in common law and does
not create any rights. This has been explained by the Division
Bench of the Delhi High Court in Century Traders v. Roshan Lal
Duggar & Co. [Century Traders v. Roshan Lal Duggar & Co.,
1977 SCC OnLine Del 50 : AIR 1978 Del 250] in the following
words : (SCC OnLine Del para 10)
“10. ’16. … First is the question of use of the trade mark.
Use plays an all-important part. A trader acquires a right
of property in a distinctive mark merely by using it upon or
in connection with his goods irrespective of the length of
such user and the extent of his trade. The trader who adopts
such a mark is entitled to protection directly the article
having assumed a vendible character is launched upon the
market. Registration under the statute does not confer any
new right to the mark claimed or any greater rights than
what already existed at common law and at equity without
registration. It does, however, facilitate a remedy which may
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be enforced and obtained throughout ‘the State and it
established the record of facts affecting the right to the mark.
Registration itself does not create a trade mark. The trade
mark exists independently of the registration which merely
affords further protection under the statute. Common law
rights are left wholly unaffected.’ [Ed. : As observed
in L.D. Malhotra Industries v. Ropi Industries, 1975 SCC
OnLine Del 172, para 16.]”
(emphasis supplied)
33.1. The same view is expressed by the Bombay High Court
in Sunder Parmanand Lalwani v. Caltex (India) Ltd. [Sunder
Parmanand Lalwani v. Caltex (India) Ltd., 1965 SCC OnLine
Bom 151 : AIR 1969 Bom 24] in which it has been held vide AIR
para 32 as follows : (SCC OnLine Bom paras 1 & 2)
“1. A proprietary right in a mark can be [‘Iruttukadai Halwa’]
obtained in a number of ways. The mark can be originated by
a person, or it can be subsequently acquired by him from
somebody else. Our Trade Marks law is based on the English
Trade Marks law and the English Acts. The first Trade Marks
Act in England was passed in 1875. Even prior thereto, it was
firmly established in England that a trader acquired a right of
property in a distinctive mark merely by using it upon or in
connection with goods irrespective of the length of such user
and the extent of his trade, and that he was entitled to protect
such right of property by appropriate proceedings by way of
injunction in a court of law. Then came the English Trade
Marks Act of 1875, which was substituted later by later Acts.
The English Acts enabled registration of a new mark not till
then used with the like consequences which a distinctive mark
had prior to the passing of the Acts. The effect of the relevant
provision of the English Acts was that registration of a trade
mark would be deemed to be equivalent to public user of such
mark. Prior to the Acts, one could become a proprietor of a
trade mark only by user, but after the passing of the Act of 1875,
one could become a proprietor either by user or by registering
the mark even prior to its user. He could do the latter after
complying with the other requirements of the Act, including the
filing of a declaration of his intention to use such mark. See
observations of Llyod Jacob, J. in Vitamins Ltd.’s Application,
In re [Vitamins Ltd.’s Application, In re, (1956) 1 WLR 1 :
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(1955) 3 All ER 827 : 1956 RPC 1] at RPC p. 12, and
particularly the following : (WLR p. 10)
‘… A proprietary right in a mark sought to be registered can
be obtained in a number of ways. The mark can be originated
by a person or can be acquired, but in all cases it is necessary
that the person putting forward the application should be in
possession of some proprietary right which, if questioned, can
be substantiated.’
2. Law in India under our present Act is similar.”
(emphasis supplied)
33.2. We uphold the said view which has been followed and relied
upon by the courts in India over a long time. The said views
emanating from the courts in India clearly speak in one voice,
which is, that the rights in common law can be acquired by way
of use and the registration rights were introduced later which
made the rights granted under the law equivalent to the public
user of such mark. Thus, we hold that registration is merely a
recognition of the rights pre-existing in common law and in case
of conflict between the two registered proprietors, the evaluation
of the better rights in common law is essential as the common
law rights would enable the court to determine whose rights
between the two registered proprietors are better and superior in
common law which have been recognised in the form of the
registration by the Act.
34. When we apply the aforesaid principle to the facts of the
present case, we find that the impugned judgment [S. Syed
Mohideen v. P. Sulochana Bai, 2013 SCC OnLine Mad 3885] of
the High Court, affirming that of the trial court is flawless and
does not call for any interference. From the plethora of evidence
produced by the respondent she has been able to establish that the
trade mark “Iruttukadai Halwa” has been used by her/her
predecessors since the year 1900. The business in that name is
carried on by her family. It has become a household name which
is associated with the respondent/her family. The Court has also
noted that the halwa sold by the respondent’s shop as “Iruttukadai
Halwa” is not only famous with the consumers living in
Tirunelveli, but is also famous with the consumers living in other
parts of India and outside. Reference is made to an article
published in Ananda Viketan, a weekly Tamil magazine dated 14-
9-2003, describing the high quality and the trade mark Iruttukadai
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halwa sold by the plaintiff, the findings and conclusions reached
by the court below are perfectly in order, hence, the same does
not call for interference, carries more merit, for, this name has
been further acknowledged in a Tamil song from the
movie Samy as follows:
“Tirunelveli Halwada, Tiruchy Malai Kottaida (Rock Fort)
Tirupathike Laddu thantha Samyda Iruttukadai Alwada, Idli
Kadai Ayada (grandma)”
xxx xxx xxx”
(Emphasis Supplied)
31. Reference at this stage, may also be made to the decision in the case of
Satyam Infoway Ltd. Versus Siffynet Solution (P) Ltd., (2004) 6 SCC 145,
wherein, the Supreme Court held that the action for passing off is available to
the owner of a distinctive trademark and the person who, if the word or name
is an invented one, invents and uses it. Thus, it was held as follows:
“xxx xxx xxx
13. The next question is, would the principles of trade mark law
and in particular those relating to passing off apply? An action
for passing off, as the phrase “passing off” itself suggests, is to
restrain the defendant from passing off its goods or services to
the public as that of the plaintiff’s. It is an action not only to
preserve the reputation of the plaintiff but also to safeguard the
public. The defendant must have sold its goods or offered its
services in a manner which has deceived or would be likely to
deceive the public into thinking that the defendant’s goods or
services are the plaintiff’s. The action is normally available to
the owner of a distinctive trade mark and the person who, if the
word or name is an invented one, invents and uses it. If two trade
rivals claim to have individually invented the same mark, then
the trader who is able to establish prior user will succeed. The
question is, as has been aptly put, who gets these first? It is not
essential for the plaintiff to prove long user to establish
reputation in a passing-off action. It would depend upon the
volume of sales and extent of advertisement.
xxx xxx xxx”
(Emphasis Supplied)
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32. As per the facts of the present case, the India Today Group was
established in the year 1975 with the launch of the magazine ‘India Today
magazine’. Appellant/plaintiff company is a part of the said group, and is
engaged in the business of dissemination of news in media. M/s Living Media
India Limited, which is the holding company of the appellant, started using
the mark ‘Aaj Tak’ since the year 1995 in respect to the news program ‘Aaj
Tak’, which was initially launched on Doordarshan Channel. The
appellant/plaintiff company, after its incorporation in the year 1999, began
running a dedicated 24-hour Hindi news channel under the mark ‘Aaj Tak’ in
the year 2000, and has a viewership of twenty million people.
33. This Court further takes note of the Magazine Article titled ‘The New
Face of New’ by Kaveree Bamzai, which records that the program ‘Aaj Tak’
was launched on 31st December, 2000 and is a market leader in delivering
Hindi news from the frontline of events.
34. The use of the mark ‘Aaj Tak’ by the appellant/plaintiff company since
the year 2000 has been admitted by the respondent/defendant and remains
undisputed. Per contra, it is the case of the respondent/defendant that it began
publication under the name ‘Saurashtra Aaj Tak’ only in the year 2002.
35. Thus, the facts on record make it evident that the appellant/plaintiff
company has been using the mark ‘Aaj Tak’ since the year 2000 and is a prior
user of the said mark, in comparison to the defendant/respondent, who began
use of the mark ‘Saurashtra Aaj Tak’ only in the year 2002.
36. Accordingly, it is apparent that the appellant/plaintiff retains the
common law remedy for filing a suit for passing off, being the prior user of
the mark in comparison to the respondent/defendant, in view of Sections 27
and 28 of the Trade Marks Act. Hence, this Court holds that the
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appellant/plaintiff had the locus to file the suit in question, and the same was
maintainable.
37. It is also to be noted that the respondent/defendant had not raised the
plea of maintainability of the suit and locus standi of the appellant/plaintiff in
filing the suit, at the time of the trial. At this juncture, such an objection, not
having formed part of the pleadings or issues before the Trial Court, cannot
be raised before this Court. Furthermore, since the respondent/defendant has
not raised this issue by way of any cross-appeal, the decree to that extent
cannot be interfered, set aside or modified to the advantage of the
respondent/defendant.
38. In this regard, reference can fruitfully be made to the judgment in the
case of A. Kanthamani Versus Narseen Ahmed, (2017) 4 SCC 654. In the
said case, it has been held that the plea regarding the maintainability of suit is
required to be raised in the first instance in the pleading (written statement)
and then only such pleading can be adjudicated by the Trial Court, on its
merits as a preliminary issue. Thus, it has been held as follows:
“xxx xxx xxx
30. Coming first to the submission of the learned counsel for the
appellant about the maintainability of the suit, in our considered
view, it has no merit for more than one reason:
30.1. First, as rightly argued by the learned counsel for the
respondent, the objection regarding the maintainability of the suit
was neither raised by the defendant in the written statement nor
in the first appeal before the High Court and nor in grounds of
appeal in this Court.
30.2. Second, since no plea was raised in the written statement,
a fortiori, no issue was framed and, in consequence, neither the
trial court nor the High Court could render any finding on the
plea.
30.3. Third, it is a well-settled principle of law that the plea
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regarding the maintainability of suit is required to be raised in
the first instance in the pleading (written statement) then only
such plea can be adjudicated by the trial court on its merits as a
preliminary issue under Order 14 Rule 2CPC. Once a finding is
rendered on the plea, the same can then be examined by the first
or/and second appellate court. It is only in appropriate cases,
where the court prima facie finds by mere perusal of plaint
allegations that the suit is barred by any express provision of law
or is not legally maintainable due to any legal provision; a
judicial notice can be taken to avoid abuse of judicial process in
prosecuting such suit. Such is, however, not the case here.
xxx xxx xxx”
(Emphasis Supplied)
39. Likewise, in the case of Bansari and Others Versus Ram Phal, (2003)
9 SCC 606, it was held that a respondent may defend himself without filing
any cross-objection to the extent to which decree is in his favour. However, if
he proposes to attack any part of the decree, he must take cross-objection. If
the respondent wishes to get rid of the findings to the extent to which the
decree is against the respondent, he should have either filed an appeal of his
own or taken cross-objection, failing which the decree to that extent cannot
be insisted on by the respondent for being interfered, set aside or modified to
his advantage. Accordingly, in the aforesaid judgment, it was held as follows:
“xxx xxx xxx
9. Any respondent though he may not have filed an appeal from
any part of the decree may still support the decree to the extent
to which it is already in his favour by laying challenge to
a finding recorded in the impugned judgment against him.
Where a plaintiff seeks a decree against the defendant on grounds
(A) and (B), any one of the two grounds being enough to entitle
the plaintiff to a decree and the court has passed a decree on
ground (A) deciding it for the plaintiff while ground (B) has been
decided against the plaintiff, in an appeal preferred by the
defendant, in spite of the finding on ground (A) being reversed the
plaintiff as a respondent can still seek to support the decree bySignature Not Verified
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challenging the finding on ground (B) and persuade the appellate
court to form an opinion that in spite of the finding on ground (A)
being reversed to the benefit of the defendant-appellant the decree
could still be sustained by reversing the finding on ground (B)
though the plaintiff-respondent has neither preferred an appeal of
his own nor taken any cross-objection. A right to file cross-
objection is the exercise of right to appeal though in a different
form. It was observed in Sahadu Gangaram Bhagade v. Special
Dy. Collector, Ahmednagar [(1970) 1 SCC 685 : (1971) 1 SCR
146] that the right given to a respondent in an appeal to file
cross-objection is a right given to the same extent as is a right of
appeal to lay challenge to the impugned decree if he can be said
to be aggrieved thereby. Taking any cross-objection is the
exercise of right of appeal and takes the place of cross-appeal
though the form differs. Thus it is clear that just as an appeal is
preferred by a person aggrieved by the decree so also a cross-
objection is preferred by one who can be said to be aggrieved by
the decree. A party who has fully succeeded in the suit can and
needs to neither prefer an appeal nor take any cross-objection
though certain finding may be against him. Appeal and cross-
objection — both are filed against decree and not
against judgment and certainly not against any finding recorded
in a judgment. This was the well-settled position of law under the
unamended CPC.
10. The CPC amendment of 1976 has not materially or
substantially altered the law except for a marginal difference.
Even under the amended Order 41 Rule 22 sub-rule (1) a party in
whose favour the decree stands in its entirety is neither entitled
nor obliged to prefer any cross-objection. However, the insertion
made in the text of sub-rule (1) makes it permissible to file a cross-
objection against a finding. The difference which has resulted we
will shortly state. A respondent may defend himself without
filing any cross-objection to the extent to which decree is in his
favour; however, if he proposes to attack any part of the decree
he must take cross-objection. The amendment inserted by the
1976 amendment is clarificatory and also enabling and this may
be made precise by analysing the provision. There may be three
situations:
(i) The impugned decree is partly in favour of the appellant
and partly in favour of the respondent.
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(ii) The decree is entirely in favour of the respondent though
an issue has been decided against the respondent.
(iii) The decree is entirely in favour of the respondent and
all the issues have also been answered in favour of the
respondent but there is a finding in the judgment which goes
against the respondent.
11. In the type of case (i) it was necessary for the respondent to
file an appeal or take cross-objection against that part of the
decree which is against him if he seeks to get rid of the same
though that part of the decree which is in his favour he is entitled
to support without taking any cross-objection. The law remains
so post-amendment too. In the type of cases (ii) and (iii) pre-
amendment CPC did not entitle nor permit the respondent to take
any cross-objection as he was not the person aggrieved by the
decree. Under the amended CPC, read in the light of the
explanation, though it is still not necessary for the respondent to
take any cross-objection laying challenge to any finding adverse
to him as the decree is entirely in his favour and he may support
the decree without cross-objection; the amendment made in the
text of sub-rule (1), read with the explanation newly inserted,
gives him a right to take cross-objection to a finding recorded
against him either while answering an issue or while dealing with
an issue. The advantage of preferring such cross-objection is
spelled out by sub-rule (4). In spite of the original appeal having
been withdrawn or dismissed for default the cross-objection taken
to any finding by the respondent shall still be available to be
adjudicated upon on merits which remedy was not available to the
respondent under the unamended CPC. In the pre-amendment
era, the withdrawal or dismissal for default of the original appeal
disabled the respondent to question the correctness or otherwise
of any finding recorded against the respondent.
12. The fact remains that to the extent to which the decree is
against the respondent and he wishes to get rid of it he should
have either filed an appeal of his own or taken cross-objection
failing which the decree to that extent cannot be insisted on by
the respondent for being interfered, set aside or modified to his
advantage. The law continues to remain so post-1976 amendment.
In a suit seeking specific performance of an agreement to sell
governed by the provisions of the Specific Relief Act, 1963 the
court has a discretion to decree specific performance of the
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agreement. The plaintiff may also claim compensation under
Section 21 or any other relief to which he may be entitled
including the refund of money or deposit paid or made by him in
case his claim for specific performance is refused. No
compensation or any other relief including the relief of refund
shall be granted by the court unless it has been specifically
claimed in the plaint by the plaintiff. Certainly the relief of specific
performance is a larger relief for the plaintiff and more onerous
to the defendant compared with the relief for compensation or
refund of money. The relief of compensation or refund of money
is a relief smaller than the relief of specific performance. A
plaintiff who files a suit for specific performance claiming
compensation in lieu of or in addition to the relief of specific
performance or any other relief including the refund of any money
has a right to file an appeal against the original decree if the relief
of specific performance is refused and other relief is granted. The
plaintiff would be a person aggrieved by the decree in spite of one
of the alternative reliefs having been allowed to him because what
has been allowed to him is the smaller relief and the larger relief
has been denied to him. A defendant against whom a suit for
specific performance has been decreed may file an appeal seeking
relief of specific performance being denied to the plaintiff and
instead a decree of smaller relief such as that of compensation or
refund of money or any other relief being granted to the plaintiff
for the former is larger relief and the latter is smaller relief. The
defendant would be the person aggrieved to that extent. It follows
as a necessary corollary from the abovesaid statement of law that
in an appeal filed by the defendant laying challenge to the relief
of compensation or refund of money or any other relief while
decree for specific performance was denied to the plaintiff, the
plaintiff as a respondent cannot seek the relief of specific
performance of contract or modification of the impugned decree
except by filing an appeal of his own or by taking cross-objection.
13. We are, therefore, of the opinion that in the absence of cross-
appeal preferred or cross-objection taken by the plaintiff-
respondent the first appellate court did not have jurisdiction to
modify the decree in the manner in which it has done. Within the
scope of appeals preferred by the appellants the first appellate
court could have either allowed the appeals and dismissed the suit
filed by the respondent in its entirety or could have deleted the
latter part of the decree which granted the decree for specific
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performance conditional upon failure of the defendant to deposit
the money in terms of the decree or could have maintained the
decree as it was passed by dismissing the appeals. What the first
appellate court has done is not only to set aside the decree to the
extent to which it was in favour of the appellants but also granted
an absolute and out-and-out decree for specific performance of
agreement to sell which is to the prejudice of the appellants and
to the advantage of the respondent who has neither filed an appeal
nor taken any cross-objection.
xxx xxx xxx”
(Emphasis Supplied)
40. Accordingly, it is held that the appellant/plaintiff, had the locus to file
the suit. Further, in the absence of any plea regarding maintainability of the
suit or locus of the appellant/plaintiff in the suit proceedings, the said plea
cannot be raised by the respondent/defendant for the first time in the present
proceedings.
Whether The Appellant/Plaintiff Has Satisfied The Elements Required To
Sustain A Plea For Passing Off ?
41. The three essential factors in a suit for passing off, i.e., goodwill and
reputation, misrepresentation/possibility of deception, and likelihood of
damage, have been laid down in the case of Britannia Industries Ltd. Versus
ITC Limited, 2017 SCC OnLine Del 7391, in the following manner:
“xxx xxx xxx
9. The present case, therefore, has to be considered as one of
passing off in relation to the trade dress/get-up. Passing off is a
common law tort and each case of passing off depends on its
own facts. The essential attributes which need to be established
for a successful passing off action have often been considered
as the classical trinity, which, in the words of Lord Oliver in
Reckitt & Colman Products Ltd. v. Borden : 1990 RPC 341 HL,
are as under: —
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“First, he must establish a goodwill or reputation
attached to the goods or services which he supplies
in the mind of the purchasing public by association
with the identifying ‘get-up’ (whether it consists
simply of a brand name or a trade description, or
the individual features of labelling or packaging)
under which his particular goods or services are
offered to the public, such that the get-up is
recognised by the public as distinctive specifically
of the plaintiff’s goods or services.
Secondly, he must demonstrate a
misrepresentation by the defendant to the public
(whether or not intentional) leading or likely to
lead the public to believe that goods or services
offered by him are the goods or services of the
plaintiff.
Thirdly, he must demonstrate that he suffers or, in
a quia timet action, that he is likely to suffer
damage by reason of the erroneous belief
engendered by the defendant’s misrepresentation
that the source of the defendant’s goods or services
is the same as the source of those offered by the
plaintiff.”
10. It is evident that a passing off action has to be examined from
the standpoint of three factors : (1) goodwill and reputation; (2)
misrepresentation/possibility of deception; and (3) likelihood of
damage. We must also note that goodwill and reputation do not
refer to the same thing though, there could be some degree of
overlap. There may be a reputation and yet there may not exist
any goodwill. As an example, a particular mark may have a
reputation worldwide. But, there may be no sales under that mark
in a particular territory, say, India. Thus, although the mark
would have a reputation worldwide, including India, it would not
have a goodwill attached to it in India. It is not just the reputation,
but the goodwill which constitutes property inasmuch as it
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represents a link between the business and the customer.
xxx xxx xxx”
(Emphasis Supplied)
42. The aforesaid three essential factors to establish a claim for passing off
in the context of the present case, are discussed hereinbelow.
Goodwill and Reputation
43. In the present appeal, the respondent/defendant has contended that the
words ‘Aaj Tak’ are generic words, meaning ‘Till Today’, and the
appellant/plaintiff cannot seek a monopoly on the use of such words.
44. In this regard, it is to be noted that the Trial Court considered the
testimony of PW-1 to the effect that the appellant has established tremendous
goodwill, and the words ‘Aaj Tak’ are closely associated with the
appellant/plaintiff in the news industry for the last seven years, i.e., from the
year 1995 till the year 2002. The combination of the words ‘Aaj Tak’ has
become synonymous with the appellant/plaintiff, apart from being a
household name. Further, the Trial Court noted that although the words ‘Aaj
Tak’ literally mean ‘Till Today’, and are descriptive words, however, due to
the long usage of the said words by the appellant/plaintiff in the context of
news dissemination, the words ‘Aaj Tak’ have attained secondary meaning in
the field of news dissemination by the appellant/plaintiff. Thus, the words
have acquired distinctive meaning and reputation vis-Ã -vis the plaintiff’s
services of news dissemination.
45. This Court notes that PW-1 has clearly deposed that the words ‘Aaj Tak’
are distinctive and closely associated with the appellant/plaintiff, having a
viewership of more than thirty million people, at the time. He further deposed
that the words ‘Aaj Tak’ have become synonymous with the appellant/plaintiffSignature Not Verified
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company, apart from being a household name. The evidence led by the
plaintiff and the testimony of PW-1 before the Trial Court, remains unrebutted
and uncontroverted.
46. Thus, this Court is of the considered opinion that the Trial Court rightly
held that the words ‘Aaj Tak’ have acquired good will and reputation, and
have also acquired a secondary meaning due to its long, continuous usage by
the appellant/plaintiff company in the field of news dissemination. The
respondent/defendant has failed to lead any evidence to show that the words
‘Aaj Tak’ were not distinctive in nature.
47. At this stage, it is apposite to refer to the decision in the case of Living
Media India Limited Versus Jitender V Jain & Anr., 2002 SCC OnLine Del
605, whereby the Court in a passing off suit, in the year 2001, although at an
interlocutory stage, held that the words ‘Aaj Tak’ had acquired secondary
meaning, in the following manner:
“xxx xxx xxx
21. It appears that whole gemut of the case of the defendant is on
the presumption that the word “AAJ TAK” is not only descriptive
in nature but also is a dictionary word and has even otherwise no
acquired secondary meaning and as such plaintiff has no
exclusive proprietorship or monopoly over it.
22. The broad principle on which the foundation of the right to
restrain the user of a similar name was enunciated in British
Vacuum Cleaner Co. Ltd. v. New Vacuum Cleaner Co. Ltd.,
(1907) 2 Ch. 312 referred to and relied upon in Office Cleaning
Services Limited v. Weiminster Office) like this:
“The foundation of the right to restrain the user of a
similar name is the principle that no one is entitled to
represent his business or goods as being the business or
goods of another by whatever means that result may beSignature Not Verified
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achieved, and it makes no difference whether the
representation be intentional or otherwise; but a
distinction has been and must always be drawn between
cases in which the trade name or the part of it in question
consists of word or words of ordinary use descriptive of
the business carried on or the article dealt in and cases
in which the word or words complained of is or are of
the character of a fancy word or words and primarily
have no relation to such business or article but only to
the person carrying on the business or dealing in the
article.”
23. It was in view of this principle that Their Lordships held that
“if it can be established that the descriptive word or words has
or have acquired among the public, or that class of the public
likely to deal with the business or goods in question, a subsidiary
or secondary meaning denoting or connoting the business or the
origin of the article, the person claiming to restrain the user of
that word or those words can obtain the relief he seeks.
24. Let us assume for the sake of argument that mark “AAJ
TAK” is descriptive in nature, has a dictionary meaning and has
hot acquired a secondary meaning. Can the plaintiff still seek
interlocutory injunction against the use of this word on account
of its having prior, long, continuous and regular user in relation
to news at Doordarshan?
25. The word ‘mark’ has been defined in the Trade Marks and
Merchandise Act of 1958 as under:
“2. Definitions and interpretation.–(1) In this Act,
unless the context otherwise requires–
(j) “mark” includes a device, brand, heading, label,
ticket, name, signature, word, letter or numeral or any
combination thereof;”
26. The word trademark has been defined as a registered
trademark or a mark used in relation to goods for the purpose
of indicating so as to indicate a connection in the course of trade
between the goods and some person having the right as
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proprietor to use the mark. If any mark is used in relation to
goods of the purpose of indicating or so as to indicate and some
person having the right as proprietor it is a trademark which
becomes the property of its prior user even if it happens to be
descriptive in nature but has been coined by it.
27. The mark is always used for the purpose of indicating either
a connection in the course of trade between the goods and it is
the prior user which provides the right of protection. Thus even
if the adjective “Khabrein” is pre-fixed it does not make the
trademark “Khabrein Aaj Tak” distinct or different from the
mark “AAJ TAK”.
28. The word “AAJ TAK” itself is so distinctive that it has
acquired such a meaning that any pre-fix of suffix would be of
no relevance so far as the action of passing off is concerned. The
only object and design of the defendant to adopt the word “AAJ
TAK” was to trade and encash upon the goodwill of the plaintiff
earned over the years through the advertisements and because
of its extensive popularity. The mark “AAJ TAK” has become
synonymous with the plaintiff so far as the news channel is
concerned.
29. The word “AAJ” and “TAK” may be individually descriptive
and dictionary word and may not be monopolised by any person
but their combination does provide a protection as a trademark
if it has been in long, prior and continuous user in relation to
particular goods manufactured, sold by a particular person and
by virtue of such user the mark gets identified with that person.
It is so irrespective of the fact whether such a combination is
descriptive in nature and has even a dictionary meaning. In such
a case any other person may choose any of the two
words viz. either “AAJ” or “TAK” as its trade name or mark but
it has to be prohibited from using the combination of these words
as such a user not only creates confusion as to its source or
origin but also bares the design or motive of its subsequent
adopter.
30. Any kind of prefix or suffix would not make any difference
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so far as the trade name or for that purpose the domain name
“AAJ TAK” is concerned. It is immaterial whether the
defendant has no clientele or publication in Delhi. Channel
“AAJ TAK” is a National Channel. It has widespread reputation
and goodwill. Adoption of similar or deceptively similar mark
amounts to passing off even if it has no local physical market,
goodwill or reputation of a product or person is all pervasive. It
is not confined in the four walls or to a particular territory. It
has to be protected wherever it is threatened or is sought to be
eroded or exploited. Merely because the product or mark
adopted by a rival has no circulation or sale in the territory of
the plaintiff’s mark or product is no defence against protection
of the mark. Protection of mark is in actuality protection of
reputation and goodwill. At every cost the reputation has to be
protected and preserved.
xxx xxx xxx”
(Emphasis Supplied)
48. From a reading of the aforesaid judgment, the following can be culled
out:
I. The words ‘Aaj’ and ‘Tak’ may be individually descriptive and
dictionary words, and may not be monopolised by any person, but their
combination provides a protection as a trademark if it has been in long,
prior and continuous user in relation to particular use by a particular
party, and by virtue of such user the mark gets identified with that party.
It is so irrespective of the fact whether such a combination is descriptive
in nature and has even a dictionary meaning. In such a case any other
party may choose any of the two words viz. either ‘Aaj’ or ‘Tak’ as its
trade name or mark, but it has to be prohibited from using the
combination of these words, as such a user would not only createSignature Not Verified
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confusion as to its source or origin, but would also reveal the design or
motive of the party adopting the said mark subsequently.
II. The words ‘Aaj Tak’ are itself so distinctive, that it has acquired such a
meaning that any prefix or suffix would be of no relevance so far as the
action of passing off is concerned. The mark ‘Aaj Tak’ has become
synonymous with the plaintiff therein so far as the news channel is
concerned.
III. It is immaterial whether the defendant therein has no clientele or
publication in Delhi, since the channel ‘Aaj Tak’ is a national channel,
having widespread reputation and goodwill. Adoption of similar or
deceptively similar mark amounts to passing off even if it has no local
physical market, as goodwill or reputation of a product or person is all
pervasive. Merely because the product or mark adopted by a rival has
no circulation or sale in the territory of the plaintiff’s mark or product
is no defence against protection of the mark.
49. It is also to be noted that although the present suit had been filed for
passing off, during the pendency of the suit, the mark ‘Aaj Tak’ was registered
under the Trade Marks Act, in Classes 41 and 38 in the name of M/s. Living
Media India Limited, the holding company of the appellant herein, with effect
from 13th October, 2003.
50. This Court also considers it imperative to note the observations made
in the judgment dated 16th November, 2017 in CS(COMM) 989/2016, titled
as Living Media India Limited & Anr. Versus P Kaushik, wherein, it was
held that the mark ‘Aaj Tak’ was being used since the year 1995. Since then,
the plaintiff therein had been actively engaged in the business of
dissemination of news, offering their allied services to the public under theSignature Not Verified
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aforesaid trade name, and were stated to have accumulated a viewership of
twenty million people.
51. Thus, this Court finds no infirmity in the findings of the Trial Court to
the effect that the mark ‘Aaj Tak’ had acquired significant goodwill and
reputation, and had attained a secondary meaning and distinctiveness with
respect to news dissemination by the appellant/plaintiff.
Misrepresentation/Possibility Of Confusion
52. The Trial Court has held unequivocally that the appellant/plaintiff
successfully established that the use of ‘Saurashtra Aaj Tak’ by the
respondent/defendant is likely to create confusion in the minds of the general
public and consumers, and create a likelihood of association. The fields and
provision of services provided by the appellant/plaintiff and the
respondent/defendant are on parallel lines, i.e., dissemination of news and
media business. This is so even though the defendant has a regional presence
only in print media, while the plaintiff has a national presence.
53. The contention of the respondent/defendant that since circulation of its
newspaper is in Gujarati language, limited to the Saurashtra region only, there
is no likelihood of confusion, is found to be meritless. Merely because the
circulation of the respondent’s newspaper is limited to Saurashtra would be of
no aid to the respondent/defendant, as the appellant/plaintiff company is
operating a nationwide television channel under the mark ‘Aaj Tak’, which is
accessible even in Saurashtra. Clearly, both the appellant/plaintiff and the
respondent/defendant are in the field of news dissemination, whether by
means of a news channel or a print media, being allied and cognate activities.
54. Thus, the adoption and use of the mark ‘Saurashtra Aaj Tak’ by the
respondent/defendant on its newspaper would undoubtedly cause confusionSignature Not Verified
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in the minds of the consumers, including, both the viewers and advertisers.
The consumers are likely to associate the newspaper of the
respondent/defendant as the regional division/wing of the news channel
operated by the appellant/plaintiff company. This is more so because the
respondent/defendant has incorporated the entirety of the appellant’s mark,
‘Aaj Tak’, and prefixed a geographical identifier in front of it. The result is a
mark in which the appellant’s mark forms the dominant part. The prefix
‘Saurashtra’ would not negate the association, if anything, it reinforces it by
suggesting a regional arm of the same business.
55. Pertinently, the respondent/defendant and the appellant/plaintiff
operate in the same business/field, i.e., news dissemination, which would
increase the likelihood of confusion and association in the minds of the
general public. A viewer who watches ‘Aaj Tak’ news bulletin on television
and subsequently encounters a newspaper called ‘Saurashtra Aaj Tak’ is likely
to believe the inevitable inference that the two are connected.
56. Thus, the Trial Court rightly held that the appellant/plaintiff
successfully established that the use of ‘Saurashtra Aaj Tak’ by the
respondent/defendant is likely to create confusion in the minds of the general
public and consumers and create a likelihood of association.
57. Thus, the contention of the respondent/defendant that the use of the
prefix ‘Saurashtra’ is sufficient to dispel any confusion or association in the
minds of the consumers, does not find much merit, as mere addition of a prefix
or suffix to a mark is not enough to distinguish the defendant’s mark from the
plaintiff’s mark, and the same is likely to cause confusion in identifying the
source/origin of the product.
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58. Reference may be made to the decision in the case of Playboy
Enterprises, Inc Versus Bharat Malik & Anr., 2001 SCC OnLine Del 406,
wherein, this Court held that close imitation or deceptive similarity by using
any part of the word either as prefix or suffix is likely to create confusion in
the minds of the customers as to the source of the goods/services, in the
following manner:
“xxx xxx xxx
33. Name of a magazine having unique distinctiveness attains
publicity and acquires unbelievable reputation because of its
identity, quality, title, the cover, its contents, theme,
sophistication, ideas, spectrum of issues it raises and deals with,
the articles or the information either as to entertainment or
information or intellectual aspect. Use of the same name or
uniquely distinctive prefix or suffix of the name is always with a
motive to exploit the goodwill and reputation by taking
illegitimate advantage of its publicity involving huge cost. It is
bound to create confusion as to its being an off-shot or sister
publication of the infringed magazine because of broad akinness
as to its features viz. title, get-up, colour scheme, display, market,
customers and area of circulation.
34. Again, the title of one is in capital letters and the other is in
small letters is not a determining distinction. Predominant prefix
or suffix of the title or mark or phonetic similarity as to the name
are few other factors that go to decide the piracy of and assault
on the name or trade mark. Comparison should show that they
are indeed one in heart, mind and purpose. And if it happens to
be cheap imitation it is bound to play havoc with the hard-earned
reputation of the assaulted publication.
xxx xxx xxx
39. The trademark PLAYBOY falls in the last category and thus
its close imitation or deceptive similarity by using any part of the
word either as prefix or suffix is likely to create confusion in the
minds of the customers as to its source. It also bares dubious
design and ill-motive to exploit and thrive upon the profound
publicity and mighty magnitude of its circulation projecting
popularity and the degree of distinction, quality andSignature Not Verified
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sophistication.
xxx xxx xxx”
(Emphasis Supplied)
59. In the case of M/s Living Media India Ltd. & Anr. Versus Asad Patel
& Ors, in CS (OS) 2678/2008, this Court by way of judgment dated 12th April,
2010 held that use of the mark ‘Aaj Tak’ prefixed with the word ‘Khabrein’
by the defendant therein, in the business of news broadcasting amounted to
passing off, in the following manner:
“xxx xxx xxx
12. It is also seen that the manner in which the defendants have
used AAJ TAK prefixed with “Khabrein”, is almost identical to
that of the plaintiffs. Also, the defendants are engaged in the
same business of news broadcasting. The words AAJ TAK form
a prominent part of the defendants’ logo, Khabrein is printed in
a very small font in comparison to the font used for printing AAJ
TAK, so much so that the word Khabrein can easily go
unnoticed. The defendants do not claim being unaware the
plaintiffs being engaged in the same business much prior to
them. Had they even claimed so, their contention should fail in
view of the plaintiffs’ widespread popularity and reach. It is
clear that the defendants’ have adopted the impugned mark,
with mala fide intentions to gain undue benefits and trade on the
plaintiffs well established and hard earned reputation. The act
of passing off also stands established against the defendants.
xxx xxx xxx”
(Emphasis Supplied)
60. The documents on record, i.e., the newspaper of the respondent
company dated 05th December, 2002 under the title ‘Saurashtra Aaj Tak’ in
Gujarati language, as well as the Advertisement Rate Card of the respondent
company showing deceptive similarity between the mark of the
appellant/plaintiff and respondent company, is reproduced as under:
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Signature Not Verified
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61. Perusal of the aforesaid newspaper shows that the words ‘Saurashtra
Aaj Tak’ in Gujarati Script have been published at the top of the newspaper,
with the words ‘Aaj Tak’ appearing in bold. A perusal of the Advertisement
Rate Card shows that the words ‘Aaj Tak’ appear in a larger font, with the
word ‘Saurashtra’ in smaller font. Thus, the manner of the use of the words
Signature Not Verified
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‘Saurashtra Aaj Tak’, with more emphasis on the words ‘Aaj Tak’, leaves no
doubt that the respondent/defendant is trying to pass off its newspaper on the
goodwill and reputation of the appellant/plaintiff.
62. The respondent/defendant has contended that since approval for the
title ‘Saurashtra Aaj Tak’ had been obtained after due title verification by the
RNI under the PRB Act, which did not find the words ‘Saurashtra Aaj Tak’ to
be identical or deceptively similar to any pre-existing publication name, it
cannot be said that there was any infringement or passing off under the Trade
Marks Act. The said contention of the respondent/defendant is entirely
misplaced.
63. The purpose of the two enactments, i.e., the PRB Act and the Trade
Marks Act, is completely different. The purpose of the Trade Marks Act is to
ensure registration and protection of trademarks, and prevention of misuse of
the marks. Whereas, the purpose of the PRB Act is regulation of printing
presses and newspapers, and the nature of inquiry therein is limited to the
purpose of approval of the name of a magazine or publication. Even if a
registration was granted by RNI under the PRB Act, the same would be of no
relevance in a suit for passing off/infringement to refute confusion.
64. In this regard, reliance is placed on the decision in the case of Playboy
Enterprises, Inc. (Supra), wherein, it was held as under:
“xxx xxx xxx
28. The registration of name of magazine, calendar or any
printed publication under the provisions of PRB Act is an
independent action and has no relevance or effect either over-
riding or over-stepping the provisions of TMM Act. The
preamble of the PRB Act itself demonstrates that this Act was
not made for the purpose of governing disputes relating to
names, titles and trade marks. Trade mark or mark registeredSignature Not Verified
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under the TMM Act or its prior, long and known existence
particularly the mark of arbitrary nature makes it so strong,
the infringement of which entitles the user to obtain injunction
against the infringer.
29. The nature of enquiry under the PRB Act is for the purpose
of approval of the name of a magazine or publication and as
such it cannot have precedence over the provisions of the TMM
Act which is a special enactment and was made for the purpose
of governing disputes relating to names, titles or trade marks.
This conclusion emanates from the comparison of the object of
the aforesaid two Acts. The preamble of PRB Act shows that it
was made for regulating printing presses and newspapers, for
preservation of copies of every book and registration of such
books and newspapers. Thus the main concern of the
Legislature was to enact a law which would help in
preservation of the copies of the books and newspapers.
xxx xxx xxx”
(Emphasis Supplied)
65. Thus, it is evident that the appellant is the prior user of the trademark
‘Aaj Tak’. The subsequent adoption of the mark ‘Saurashtra Aaj Tak’ by the
respondent, even in Gujarati language, would deceive and mislead the public
into believing that the newspaper of the respondent belongs to or is closely
associated to the appellant. Thus, use of the aforesaid mark by the respondent
is likely to create confusion in the minds of the general public and create a
likelihood of association.
Likelihood of Damage
66. The Trial Court has categorically held that the appellant/plaintiff has
goodwill and reputation in the mark ‘Aaj Tak’ and that the apprehension of
the respondent/defendant riding on the goodwill of the appellant/plaintiff
cannot be ruled out. Any act, omission or misfeasance on the part of the
respondent/defendant is likely to injure the goodwill and reputation of the
appellant/plaintiff. Due to the services provided by the appellant/plaintiff
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during the course of time, the consumers might have developed certain
expectations and quality standards. In case, the provision of services by the
respondent/defendant falls short of that standard, the fallout of the same is
likely to be suffered by the appellant/plaintiff on account of the ostensible
likelihood of association between the appellant/plaintiff and the
respondent/defendant, due to the similarity of trade/service marks.
67. The respondent/defendant has contended that the appellant/plaintiff has
failed to demonstrate the existence of any actual confusion as no evidence has
been placed on record to show that the public or the advertisers were confused.
However, this contention of the respondent/defendant is meritless.
68. In a suit for passing off, the plaintiff must demonstrate that the
misrepresentation has caused or is likely to cause damage to the plaintiff’s
goodwill. It is well established that a plaintiff need not show actual
damage/loss in order to sustain the action of passing off. Where
misrepresentation is established and the connection between
misrepresentation and potential injury to the plaintiff’s goodwill is
sufficiently clear, damage to goodwill will follow.
69. Reference in this regard is made to the judgment in the case of Pernod
Ricard India Private Limited and Another Versus Karanveer Singh
Chhabra, 2025 SCC OnLine SC 1701, wherein, it was held that while an
intent to deceive is not a necessary element in an action for infringement or
passing off, however, passing off requires proof of a likelihood of confusion
or deception. It was held that actual deception or damage need not be proved
– the test is whether confusion is probable in the mind of the average
consumer due to the similarity in the marks or the overall get-up of the goods.
Thus, it was held as follows:
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“xxx xxx xxx
29.1. A key distinction between the two lies in the requirements of
proof. In an infringement action, the plaintiff is not required to
establish the distinctiveness or goodwill of the mark – registration,
by itself, affords the right to seek protection. If the impugned mark
is shown to be identical or deceptively similar to the registered
mark, no further evidence of confusion or deception is necessary.
However, in a passing off action, the plaintiff must prove: (i) the
existence of goodwill or reputation in the mark, (ii) a
misrepresentation made by the defendant, and (iii) a likelihood
of damage to the plaintiff’s goodwill.
29.2. While an intent to deceive is not a necessary element in
either action, passing off requires proof of a likelihood of
confusion or deception. It is well settled that actual deception or
damage need not be proved – the test is whether confusion is
probable in the mind of the average consumer due to the
similarity in the marks or the overall get-up of the goods.
xxx xxx xxx”
(Emphasis Supplied)
70. Likewise, in the case of Honda Motors Co. Ltd. Versus Charanjit
Singh & Ors., 2002 SCC OnLine Del 1332, it was held that the plaintiff in
passing off action does not have to prove that he has actually suffered damage
by loss of business or in any other way. A probability of damage is enough,
but the actual or probable damage must be damage to him in his trade or
business, i.e., damage to his goodwill in respect of that trade or business.
Thus, it was held as follows:
“xxx xxx xxx
12. It is also well settled that the plaintiff in passing off action
does not have to prove that he has actually suffered damage by
loss of business or in any other way. A probability of damage is
enough but the actual or probable damage must be damage to
him in his trade or business i.e., damage to his goodwill in
respect of that trade or business. It was so observed
in Bulmer v. Bellinger, (1978) RPC 79 (CA).
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13. It has further been observed in Apple Computer v. Apple
Leasing, 1993 IPLR 63 [1992 (1) Arb. LR. 93 (Delhi)], that it is
not even necessary in the context of the present day
circumstances of free exchange of information and advertising
through newspapers, magazines, video, T.V. Movies, freedom of
travel between parts of the world to insist that a particular
plaintiff must carry on business in a jurisdiction where improper
use of its name or mark can be restrained by the Court. It was
also observed that in a case of passing off action, the main
consideration is the likelihood of confusion and consequential
injury to the plaintiff, and the need to protect the public from
deception, deliberate or otherwise.
14. In a nutshell, in an action for passing off, the plaintiff has
to establish that his business or goods has acquired the
reputation he is claiming, by showing that, his trade name has
become distinctive of his goods and the purchasing public at
large associates the plaintiff’s name with them. The plaintiff is,
however, not required to establish fraudulent intention on the
part of the defendant. Causing of actual confusion amongst the
customers is also not to be proved. What is required to be
established is the likelihood of deception or confusion in the
minds of the public at large. The likelihood or probability of
deception depends on a number of factors, which necessarily, is a
question of fact and varies in the circumstances of each case. The
plaintiff has also to establish that the defendant’s user of the
plaintiff’s marks, letters or other indicia with regard to his goods
is likely to lead to confusion in the minds of public, and such
confusion is likely to cause damage or injury to the reputation,
goodwill and fair name of the plaintiff. The plaintiff has also to
show his prior user of the trade mark, in point of time than the
defendant. The plaintiff, however, need not prove actual loss or
damage in an action of passing off. Also registration of the trade
mark is inconsequential in such an action.
xxx xxx xxx”
(Emphasis Supplied)
71. Accordingly, in the facts and circumstances of the present case, there is
a distinct likelihood of injury/damage to the goodwill of the appellant/plaintiff
by use of the impugned mark by the respondent/defendant.
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Whether The Relief Granted By The Trial Court Was Adequate?
72. By way of the impugned judgment, the Trial Court issued a mandatory
injunction against the respondent/defendant, permitting it to use the mark
‘Saurashtra Aaj Tak’ subject to display of a disclaimer, on the premise that the
respondent/defendant must have also acquired goodwill and reputation in the
name ‘Saurashtra Aaj Tak’ and prima facie its act does not appear to be per-
se dishonest. The observations of the Trial Court in this regard are reproduced
as under:
“xxx xxx xxx
16. The averments which the defendants have made in their
written statement are factual aspect but no evidence has been
led. However, it cannot be ruled out that the defendants have
also in the course of time might have developed goodwill and
reputation in their trade mark and prima-facie that acts of the
defendant do not appear to be per-se dishonest.
xxx xxx xxx”
(Emphasis Supplied)
73. However, it is evident from the record that no plea of bona fide use had
been taken by the respondent/defendant in its written statement.
74. Moreover, the respondent/defendant neither entered the witness box nor
placed anything on record to establish the goodwill or reputation of the mark
‘Saurashtra Aaj Tak’, or that the use of the said mark by it was bona fide, in
any manner whatsoever. Further, no plea was made nor any evidence was
placed on record by the respondent/defendant to show that it had registered the
mark ‘Saurashtra Aaj Tak’ under the Trade Marks Act.
75. It is a settled principle of law that intent to deceive/bona fide use is not
a necessary element in an action for passing off. In this regard, reliance is
placed on paragraph 29.2 in the case of Pernod Ricard (Supra), as reproduced
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hereinabove, wherein, the Court had held that intent to deceive is not a
necessary element in action for passing off. Further, actual deception need not
be proved.
76. Reference is also made to the decision in the case of Laxmikant V. Patel
Versus Chetanbhai Shah and Another, (2002) 3 SCC 65, wherein, the
Supreme Court held that absence of an intention to deceive is not a defense to
a passing off action, in the following manner:
“xxx xxx xxx
13. In an action for passing-off it is usual, rather essential, to
seek an injunction, temporary or ad interim. The principles for
the grant of such injunction are the same as in the case of any
other action against injury complained of. The plaintiff must
prove a prima facie case, availability of balance of convenience
in his favour and his suffering an irreparable injury in the
absence of grant of injunction. According to Kerly (ibid, para
16.16) passing-off cases are often cases of deliberate and
intentional misrepresentation, but it is well settled that fraud
is not a necessary element of the right of action, and the
absence of an intention to deceive is not a defence, though
proof of fraudulent intention may materially assist a plaintiff
in establishing probability of deception. Christopher Wadlow
in Law of Passing-Off (1995 Edn., at p. 3.06) states that the
plaintiff does not have to prove actual damage in order to
succeed in an action for passing-off. Likelihood of damage is
sufficient. The same learned author states that the defendant’s
state of mind is wholly irrelevant to the existence of the cause
of action for passing-off (ibid, paras 4.20 and 7.15). As to how
the injunction granted by the court would shape depends on the
facts and circumstances of each case. Where a defendant has
imitated or adopted the plaintiff’s distinctive trade mark or
business name, the order may be an absolute injunction that he
would not use or carry on business under that name
(Kerly, ibid, para 16.97).
xxx xxx xxx”
(Emphasis Supplied)
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Signing Date:30.07.2026
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77. In the present appeal, respondent company has contended that the use
of the mark ‘Saurashtra Aaj Tak’ by it, since the year 2002, is prior, continuous,
bona fide, and confined to the Saurashtra region of Gujarat, and is therefore
protected under the doctrine of prior user under Section 34 of the Trade Marks
Act.
78. In this regard, Section 34 of the Trade Marks Act reads as under:
“xxx xxx xxx
34. Saving for vested rights.– Nothing in this Act shall entitle the
proprietor or a registered user of registered trade mark to
interfere with or restrain the use by any person of a trade mark
identical with or nearly resembling it in relation to goods or
services in relation to which that person or a predecessor in title
of his has continuously used that trade mark from a date prior–
(a) to the use of the first-mentioned trade mark in relation to those
goods or services be the proprietor or a predecessor in title of his;
or
(b) to the date of registration of the first-mentioned trade mark in
respect of those goods or services in the name of the proprietor of
a predecessor in title of his;
whichever is the earlier, and the Registrar shall not refuse (on
such use being proved) to register the second mentioned trade
mark by reason only of the registration of the first-mentioned
trade mark.
xxx xxx xxx”
(Emphasis Supplied)
79. The aforesaid provision, i.e., Section 34 of the Trade Marks Act is with
respect to a registered trademark, and restrains the proprietor or registered user
of the registered trademark from restraining any person from using a mark
identical or nearly resembling to it, if such person, or his predecessor in title,
has been continuously using that mark from a ‘date prior’ to either (a) the use
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of the first mentioned trademark or (b) registration of the first mentioned
trademark, whichever is earlier.
80. As noted hereinabove, the appellant/plaintiff has admittedly been using
the mark ‘Aaj Tak’ atleast since the year 2000, while the respondent/defendant
has been using the mark ‘Saurashtra Aaj Tak’ only since the year 2002. Thus,
clearly, the use of the mark ‘Saurashtra Aaj Tak’ by the respondent is not from
a date prior to the use of the mark ‘Aaj Tak’ by the appellant/plaintiff. Thus,
Section 34 of the Trade Marks Act would be of no avail to the respondent
company, in the present facts and circumstances.
81. In view of the detailed discussion hereinabove, this Court is of the
considered view that the Trial Court erred in holding that the use of the mark
‘Saurashtra Aaj Tak’ was not per-se dishonest and that the said mark had
acquired its own goodwill and reputation. When the elements of passing off
have been established by the appellant/plaintiff, there was no occasion for the
Trial Court to not have granted a decree of permanent injunction restraining
the respondent/defendant from using the mark ‘Saurashtra Aaj Tak’. The
justification for granting a limited mandatory injunction to the respondent/
defendant to use the mark ‘Saurashtra Aaj Tak’ with a disclaimer is based on
erroneous findings, as discussed hereinabove, which cannot be sustained.
82. At this stage, the following judgments pertaining to the mark of the
appellant/plaintiff may be referred to, wherein, injunction was granted,
restraining third parties from using a mark which contained the words ‘Aaj
Tak’.
I. Asad Patel (Supra), which pertained to the use of the mark ‘Khabrein
Aaj Tak’ by a third party. Permanent injunction was granted in favour of
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the holding company of the appellant herein along with costs at Rs.
1,00,000/-. Thus, in the said case, it was held as follows:
“xxx xxx xxx
10. The plaintiffs place reliance on a previous order of this Court
made in a case instituted by the same plaintiffs against the
defendants therein, titled M/s Living Media India Ltd. V. Jitendra
V. Jain and Anr., 98 (2002) DLT 430 (IAs 10383 and 12189/1999
in Suit No. 2282/1999, dated 21.05.2002). The issue in that case
was identical with the case at hand, as even in that case the
defendants were using Khabrein as prefix to AAJ TAK. The
Court held as under:
“26. The mark is always used for the purpose of indicating
either a connection in the course of trade between the goods
and it is the prior user which provides the right of protection.
Thus even if the adjective “Khabrein” is pre-fixed it does
not make the trade mark “Khabrein Aaj Tak” distinct or
different from the mark “AAJ TAK”.
27. The word “AAJ TAK” itself is so distinctive that it has
acquired such a meaning that any pre-fix of suffix would
be of no relevance so far as the action of passing off is
concerned. The only object and design of the defendant to
adopt the word “AAJ TAK” was to trade and encash upon
the goodwill of the plaintiff earned over the years through
the advertisements and because of its extensive popularity.
The mark “AAJ TAK” has become synonymous with the
plaintiff so far as the news channel is concerned.
28. The word “AAJ” and “TAK” may be individually
descriptive and dictionary word and may not be
monopolised by any person but their combination does
provide a protection as a trademark if it has been in long,
prior and continuous user in relation to particular goods
manufactured, sold by a particular person and by virtue of
such user the mark gets identified with that person. It is so
irrespective of the fact whether such a combination is
descriptive in nature and has even a dictionary meaning. In
such a case any other person may choose any of the two
words viz. either “AAJ” or “TAK” as its trade name or mark
but it has to prohibited from using the combination of these
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words as such a user not only creates confusion as to its
source or origin but also bares the design or motive of its
subsequent adopter.
29. Any kind of prefix or suffix would not make any
difference so far as the trade name or for that purpose the
domain name “AAJ TAK” is concerned. It is immaterial
whether the defendant has no clientele or publication in
Delhi. Channel “AAJ TAK” is a National Channel. It has
widespread reputation and goodwill. Adoption of similar or
deceptively similar mark amounts to passing off even if it
has no local physical market, goodwill or reputation of a
product or person is all pervasive. It is not confined in the
four walls or to a particular territory. It has to be protected
wherever it is threatened or is sought to be eroded or
exploited. Merely because the product or mark adopted by a
rival has no circulation or sale in the territory of the
plaintiff’s mark or product is no defense against protection
of the mark. Protection of mark is in actuality protection of
reputation and goodwill. At every cost the reputation has to
be protected and preserved.”
11. The plaintiffs have clearly established that they hold a valid
trademark registration for the mark AAJ TAK. In absence of the
defendants’ written statement the plaint averments remain
uncontroverted. The defendants have stated in their Order XXXIX
Rule 4 application that their mark Khabrein AAJ TAK is
registered with the Indian Motion Picture Producers’ Association
since June, 2002. Such registration only secures the right to use
the title for the purpose for which it is registered, to the exclusion
of other producers. Grant of registration by a private body of
producers, in no manner, overrides or derogates the statutory
rights of a person conferred under the Trade Marks Act, 1999 or
the Copyright Act, 1957. In any case, the registration secured by
the defendants is much later (since 17.06.2002), as against the
plaintiffs’, who secured registration under the Trademarks Act on
20.09.1995. The only valid defence in a suit such as the present
one can be prior user of the impugned mark – which plea has not
been taken.
xxx xxx xxx
13. No doubt that the order in Jitendra V. Jain (supra) is an
interim one, yet one cannot lose sight of the fact that the
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controversy was identical in nature and the discussion on the issue
was detailed. The principles of law stated therein, in the
considered opinion of this Court, are sound and the Court finds
no reason to digress from the view upheld in that order.
xxx xxx xxx
15. In view of the above, the plaintiffs’ are held entitled to a
decree of permanent injunction in terms of paragraphs 23 (a),
(b), (c) and (d) along with costs at Rs. 1,00,000/- (Rs. One lakh).
The suit is decreed in such terms. All pending applications are
also disposed of.
xxx xxx xxx”
(Emphasis Supplied)
II. P Kaushik (Supra), wherein, a third party was injuncted from using the
mark ‘Nazar Aaj Tak’, in the following manner:
“xxx xxx xxx
17. In view of the averments made in the plaint and the un-
rebutted evidence filed by the Plaintiffs, the Plaintiffs have
established that they are the registered proprietor of the said
trade mark “AAJ TAK”, thus they have a statutory right to the
exclusive use of the same. The mark “Nazar AAJ TAK” used by
the Defendants is structurally, visually and phonetically
identical to the registered trade mark of the Plaintiffs “AAJ
TAK”. There is a clear violation of the rights of the Plaintiffs. It
is also clear that the plaintiffs have been using their mark since
1995. The act of the Defendants lacks bonafide. The goods and
services sold by the Defendants using the deceptively similar trade
mark will also lead to passing off the goods and services of
Defendants as that of the Plaintiffs.
18. Accordingly, a decree of permanent injunction is passed in
favour of the Plaintiffs and against the Defendants restraining
the Defendants, its heirs, representatives, directors, employees,
agents from using the trademark “Nazar AAJ TAK”; “AAJ
TAK”; “[email protected]” or any other trademark
deceptively or phonetically similar to the Plaintiffs’ registered
trademark “AAJ TAK” in relation to magazine, newspaper,
journal, news or any other media related services.
xxx xxx xxx”
(Emphasis Supplied)
Signature Not Verified
Digitally Signed RFA 320/2012 Page 63 of 68
By:HARIOM SHARMA
Signing Date:30.07.2026
18:40:32
III. Living Media India Limited & Anr. Versus Mandeep Kaur & Anr.,
2017 SCC OnLine Del 12763, which pertained to the mark ‘Aaj Tak
Aamne Saamne’. In the said case, permanent injunction was granted
along with damages of Rs. 1 Lac and interest @ 8% per annum from the
date of decree till receipt of payment. In the said case, it was held as
follows:
“xxx xxx xxx
17. In view of the averments made in the plaint and the un-
rebutted evidence filed by the Plaintiffs, the Plaintiffs have
established that they are the registered proprietor of the said
trade mark “AAJ TAK”, thus they have a statutory right to the
exclusive use of the same. The mark “AAJ TAK AAMNE
SAAMNE” used by the Defendants is structurally, visually and
phonetically identical to the registered trade mark of the
Plaintiffs “AAJ TAK”. There is a clear violation of the rights of
the Plaintiffs. It is also clear that the plaintiffs have been using
their mark since 1995. The act of the Defendants lacks bonafide.
The goods and services are sold under the deceptively similar
trade mark will also lead to passing off the goods and services of
Defendants as that of the Plaintiffs.
18. Accordingly, a decree of permanent injunction is passed in
favour of the Plaintiffs and against the Defendants restraining
the Defendants, its heirs, representatives, directors, employees,
agents from using the trademark “AAJ TAK AAMNE
SAAMNE”; “AAJ TAK”; “aajtakaamnesaamne com” or any
other trademark deceptively or phonetically similar to the
Plaintiffs’ registered trademark “AAJ TAK” in relation to
magazine, newspaper, journal, news or any other media related
services. Plaintiffs shall also be entitled to damages of Rs. 1 lac.
A decree for Rs. 1 lac is accordingly passed in favour of the
Plaintiffs and against the Defendants. The Plaintiffs shall also
be entitled to interest @ 8 per cent per annum simple from the
date of decree till payment is received.
xxx xxx xxx”
(Emphasis Supplied)
Signature Not Verified
Digitally Signed RFA 320/2012 Page 64 of 68
By:HARIOM SHARMA
Signing Date:30.07.2026
18:40:32
IV. Living Media India Ltd. & Anr. Versus M. Hussain & Ors., 2013 SCC
OnLine Del 2840, which pertain to the mark ‘Speed Aajtak’. In the said
case, permanent injunction along with a decree directing the defendants
therein to pay Rs. 10 Lakhs as damages, was passed. Accordingly, in the
said case, it was held as follows:
“xxx xxx xxx
16. In the present case it is seen that the Defendants have been
blatantly infringing the registered trademark and the copyright of
the Plaintiffs’ mark ‘AAJ TAK’ and commercially exploiting the
goodwill and reputation attached to such mark. The Defendants
are also involved in a fraud by issuing press membership cards
with the trademark and logo ‘AAJ TAK’ of the Plaintiffs and
thereby cheating the general public and authorities into thinking
that the holder of such pass is in fact a journalist associated with
the Plaintiffs. Therefore apart from the need to stop such
infringement on the ground that it causes irreparable damage to
the Plaintiffs’ reputation, it is also essential to do so in public
interest and to deter such a brazen infringement of the Plaintiffs’
trademark.
17. For the aforementioned reasons, the suit is decreed in terms
of prayers as set out in Para 25(a) to (e) of the plaint as under:
(i) a decree order of permanent injunction is passed restraining
the Defendants, their Directors, Partners or as the case may be,
employees, servants, agents, and/or any one claiming under or
through them, from, in any manner using the word ‘SPEED
AAJTAK’ and/or any other deceptive variant(s) thereof, in
respect of their online news service or any other news service
thereby amounting to infringement of Trade mark and/or
passing off;
(b) a decree order of permanent injunction is passed restraining
the Defendants, their Directors, Partners, or as the case may be,
employees, servants, agents and/or any one claiming under or
through them, from reproducing the work ‘SPEED AAJTAK’ in
any manner amounting to infringement of the copyright of the
Plaintiff, residing in the artistic representation of the words
‘AAJ TAK’;
Signature Not Verified
Digitally Signed RFA 320/2012 Page 65 of 68
By:HARIOM SHARMA
Signing Date:30.07.2026
18:40:32
(c) a decree is passed directing transfer of the domain
name/website located at the URL www.speedaajtak.com in favour
of the Plaintiffs;
(d) a decree is passed directing the Defendants to pay to the
Plaintiffs a sum of Rs. 10 lakhs as damages;
(e) a decree is passed against the Defendants for delivery up to
the Plaintiff of the infringing material in the possession and/or
custody of the Defendants.
xxx xxx xxx”
(Emphasis Supplied)
83. The aforesaid judgments clearly point out that the mark ‘Aaj Tak’ has
acquired distinctiveness and secondary meaning.
84. It is undisputed that the appellant/plaintiff is the prior user of the mark
‘Aaj Tak’. The subsequent adoption of the mark ‘Saurashtra Aaj Tak’ even in
Gujarati language would lead to the confusion of phonetic similarity. An aural
similarity is also a basis of determining the deceptive similarity between
marks. Thus, this Court in the case of Anshul Vaish, Partner Rohit Wrappers
Versus Hari Om and Co. and Another, 2025 SCC OnLine Del 664, while
dealing with a case of infringement of plaintiff’s mark therein, i.e.,and defendant’s mark therein, i.e., , held as
follows:
“xxx xxx xxx
22………The mere fact that the mark of the respondents is in a
different language, does not deter from the incidence of the
likelihood of confusion, in addition, the risk of association with
the petitioner’s trademark and goods. Confusion and deception
amongst the competing marks is inevitable on account of
identity of trademarks and commonality of goods, trade channel
and class of consumers. An unwary consumer of averageSignature Not Verified
Digitally Signed RFA 320/2012 Page 66 of 68
By:HARIOM SHARMA
Signing Date:30.07.2026
18:40:32
intelligence and imperfect recollection is bound to get confused
by the adoption of the identical mark by the respondent, who
would assume that the impugned mark is a variant of the
petitioner’s mark written in a different language. Further, the
adoption and use of the impugned mark by the respondent, in
the course of trade and in relation to similar goods, will certainly
lead to confusion and/or deception about a trade connection,
nexus or trade association between the petitioner and the
respondent.
xxx xxx xxx”
(Emphasis Supplied)
85. In the present case, the Trial Court has held in categorical terms that due
to long usage, the words ‘Aaj Tak’ had attained a secondary meaning having
reference to the dissemination of the news by the appellant/plaintiff through
its news channel, and thus, had acquired a distinctive meaning and reputation.
Further, the Trial Court also accepted that the mark ‘Saurashtra Aaj Tak’ was
likely to create confusion in the minds of the general public and consumers
that the respondent/defendant is associated with the appellant/plaintiff.
Furthermore, the Trial Court concluded that any deficiency in services of
‘Saurashtra Aaj Tak’ will be attributed to the appellant/plaintiff. Thus, the Trial
Court has come to a conclusion that the acts of the respondent/defendant are
likely to injure the goodwill and reputation of the appellant/plaintiff.
CONCLUSION:
86. Thus, in view of the said categorical findings, the ingredients of ‘passing
off’, i.e., goodwill, misrepresentation and likelihood of damage, are well
established. In view thereof, the Trial Court has erred in not granting
permanent injunction completely, thereby, restraining the
respondent/defendant from using the mark ‘Aaj Tak’ in any manner. The Trial
Court has erred in permitting the respondent/defendant to use the mark
Signature Not Verified
Digitally Signed RFA 320/2012 Page 67 of 68
By:HARIOM SHARMA
Signing Date:30.07.2026
18:40:32
‘Saurashtra Aaj Tak’ with a disclaimer. Consequently, the findings and
directions of the Trial Court in regard thereto, are set aside.
87. As a result, considering the detailed discussion hereinabove, a decree
of permanent and mandatory injunction is passed in favour of the
appellant/plaintiff thereby restraining the respondent/defendant, its directors,
employees, servants, agents, and/or anyone claiming under it, from using the
name ‘Saurashtra Aaj Tak’ in any manner. The respondent/defendant is
directed to change the name of its newspaper from ‘Saurashtra Aaj Tak’ to
any other name, style and title which is not similar, and/or deceptively similar
to the name, style and title of the appellant/plaintiff’s mark, ‘Aaj Tak’.
88. Let Decree Sheet be drawn in terms of the aforesaid.
89. The present appeal is accordingly allowed in the aforementioned
terms.
MINI PUSHKARNA
(JUDGE)
JULY 30, 2026
Au/Ak/Sk
Signature Not Verified
Digitally Signed RFA 320/2012 Page 68 of 68
By:HARIOM SHARMA
Signing Date:30.07.2026
18:40:32
