Summary
This post discusses a recent Delhi High Court decision involving India Today and Alpha Dealcom regarding the use of the term 'Today' in trademarks for news channels. The court considered prior submissions made by the Plaintiff during trademark prosecution, particularly their statements distinguishing 'India Today' from 'Punjab Today,' and held that such admissions could not later be refuted. The decision highlights that generic terms like 'Today' should not be monopolised within the news industry, aligning with the objectives of trademark law in India. The court ultimately dismissed the application for a temporary injunction, reinforcing the importance of consistency in trademark prosecution submissions.
A decision of the Delhi High Court arising from a dispute between the publisher of India Today and Alpha Dealcom has raised an important question in trademark law: whether submissions made by an applicant during trademark prosecution can later be used against that applicant in infringement proceedings.
Background
The publisher of India Today — a well-known weekly magazine — filed an application before the Delhi High Court seeking an interim injunction to restrain Alpha Dealcom from launching a news channel under the name “Nation Today”. The plaintiff contended that use of the word “Today” infringed its trademark and that, having registered the mark “India Today” across several publications and news channels, the term had acquired the status of a well-known trademark. It was further argued that “Today” had become synonymous with the plaintiff’s goods and services and had acquired a secondary meaning, making “Nation Today” deceptively similar to its own mark.
Arguments Before the Court
The defendant raised a significant argument rooted in the plaintiff’s own prosecution history. During the examination of the mark “India Today” before the Trade Marks Registry, the plaintiff had replied to the Examination Report stating that the conflicting mark “Punjab Today” was visually, structurally and phonetically dissimilar to “India Today”. The defendant argued that this admission during prosecution amounted to a concession that the mere use of the word “Today” did not make a competing mark similar to “India Today”.
The defendant further contended that “Today” was a common English word freely available to third parties; that the plaintiff could not monopolise such a word simply by registering numerous trademarks containing it; that the word was descriptive of the news business itself; and that “India Today” conferred rights only over the composite mark, not over the individual word “Today”.
The defendant also noted that many other third parties had adopted “Today” in connection with television news channels and that the plaintiff had not raised any objection against those users, arguing that the plaintiff’s failure to take action entitled the defendant to the same treatment. The plaintiff responded that no evidence of the extent of such third-party use had been placed on record and that, having not been seriously affected by those users, its failure to pursue every infringer did not entitle the defendant to infringe its well-known name.
A further issue arose from the prosecution history: during prosecution of the mark, the plaintiff had voluntarily stated before the Deputy Registrar that it was agreeable to Part B registration and had disclaimed “India” and “Today” separately. The final registration, however, disclaimed only “India”. The question before the court was whether these combined statements amounted to an admission of the generic and descriptive character of both words.
Decision
The Delhi High Court decided in favour of the defendant and dismissed the application for a temporary injunction. The court held that, prima facie, the use of the word “Today” by the two parties was not likely to cause confusion in the minds of consumers. The court found that the plaintiff was stopped by its own submissions: having previously asserted during prosecution that “Punjab Today” was dissimilar to “India Today”, the plaintiff could not, at the interlocutory stage, contend that there was a similarity between “India Today” and “Nation Today”.
Significance
The decision affirms that voluntary submissions made before the Trade Marks Registry during prosecution carry evidentiary weight in subsequent infringement proceedings. An applicant who characterises a competing mark as dissimilar in order to overcome an objection cannot conveniently reverse that position when seeking to restrain use of a mark with a comparable structure.
The case also reaffirms the principle that generic and descriptive terms closely associated with a trade or industry cannot ordinarily be monopolised through trademark registration. Granting exclusive rights over a word as common as “Today” in the news industry would confer an unfair competitive advantage contrary to the objectives of trademark law.
Disclaimer: This article is for general information and does not constitute legal advice. Readers should consult a qualified attorney before acting on any matter discussed here.