Are Applicants Allowed to Later Refute Their Own Submissions at TM Prosecution?
A recent decision from the Delhi High Court (HC) pertaining to the publisher of a weekly magazine, India Today, filing an application for an interim injunction at the Delhi HC so as to restrain Alpha Dealcom from launching a news channel with the name ‘Nation Today’, stresses the importance of submissions in response to an Examination Report made before the Trademarks Registry.
The publisher of India Today argued that the use of the word ‘Today’ infringed its Trademark. The Delhi HC held that, prima facie, there was no infringement because the use of the word ‘Today’ by the two parties was not likely to cause confusion in the minds of consumers. Plaintiff argued that since it owns the Trademark ‘India Today’ for several publications and news channels, the term has acquired the status of a well-known trademark.
Further, quite naturally, it was argued that the term ‘Today’ had become synonymous with the Plaintiff’s goods and services, thereby acquiring a secondary meaning and the trademark registered by Alpha Dealcom, ‘Nation today’ was deceptively similar to its own. In response, the Defendant argued that the Plaintiff, at the time of filing its reply to the Examination Report for the mark ‘India Today’ stated that it was dissimilar to the pre-existing trademark, ‘Punjab Today’.
Considering this argument of the Plaintiff in their Response, the Defendant argued that the Plaintiff had themselves conceded that merely using the term ‘Today’ would not cause confusion or cause the competing mark to be similar to its own. Additionally, the Defendant argued that the term ‘Today’ was a common English word that could be freely used by third parties and that the Plaintiff could not monopolize such a common word merely by registering a large number of trademarks.
The Defendant emphasized that such a monopoly would be detrimental to the news business since ‘Today’ was descriptive of the news business itself. Finally, they argued that the Plaintiff’s trademarks were the combination of the marks ‘India’ and ‘Today’, thereby conferring exclusive rights over the term ‘Today’ would be incorrect.
It was also submitted by the Defendant that there were numerous other third parties, who had adopted and were using the word ‘Today’ in relation to TV news channels, and that the Plaintiff had not raised an objection to them. In response to this objection the Plaintiff submitted that since there was no evidence brought on record by the Defendant regarding the extent of the use of the word ‘Today’ by those third parties and the Plaintiff having not felt seriously affected by those users, it could not be said that the failure of the Plaintiff to take action against every one of those infringers entitled the Defendant to infringe the Plaintiff’s well-known name for news.
The court decided in favor of the Defendant, noting that the Plaintiff’s admission earlier that ‘Punjab Today’ was dissimilar to ‘India Today’ worked against it. It was held that there was no prima facie likelihood of confusion. The application for temporary injunction was dismissed.
In the present case, the Plaintiff had, while replying to the Examination Report, in respect of the mark ‘India Today’, stated that the conflicting mark ‘Punjab Today’ is visually, structurally and phonetically dissimilar to the mark ‘India Today’. The question that arises is “does the explanation given by the Plaintiff in the Examination Response at the time of Prosecution of its trademark, amount to an admission that the mere use of the word ‘Today’ does not make the competing mark similar to its mark?”
Further, during the Prosecution of the mark, the Plaintiff had made voluntary submissions before the deputy registrar stating that it may be granted Part B registration and agreed to disclaim ‘India’ and ‘Today’ separately. However, the final registration for the mark disclaimed only ‘India’. The pertinent issue is whether this amounts to an admission of the generic and descriptive nature of the words ‘India’ and ‘Today’ by the Plaintiff.
The court held that the Plaintiff is stopped by its own submissions and that, even if the mark ‘Punjab Today’ has no similarity with the mark ‘India Today’, at this interlocutory stage it could not be permitted to contend that there was a similarity between ‘India Today’ and ‘Nation Today’.
This is a welcome decision since conferring monopoly over generic terms such as ‘Today’, which is so intricately tied to the news industry, would grant the trademark holder an unfair competitive advantage and the same would be antithetical to the objectives of Trademark Law.