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"The continued dishonest use of the Single Star by the defendants would cause irreparable loss and injury to the plaintiffs particularly, by diluting the unique use of the word "STAR‟ which is a created word and the "Star‟ logo, by common usage," Justice Asha Menon remarked
A bench of Justice Asha Menon, of the Delhi High Court, in a suit filed by Star TV Productions Pvt. Ltd. seeking a permanent injunction, granted an interim injunction, and restrained the use of the ‘EUROSPORT’ trademark, tradename or any other identical or deceptively similar mark.
The plaintiffs claimed that they were the first to use the Single Star logo, and the word STAR and Star India Pvt. Ltd. began broadcasting in India in 1991. And that its first television channel, Star TV, debuted in the country in 1992. It was also submitted that Star in ‘EUROSPORT’ was deceptively similar to the various registered STAR Marks in India as it was prominently juxtaposed with the letter "E."
On the contrary, the defendants claimed that they adopted a star logo in 1989 when it was created and EUROSPORT began its sports broadcasting business. It was submitted that the registered proprietor of the disputed trademarks and their variations is over 100 jurisdictions worldwide, including Hong Kong, South Korea, and Taiwan It is also submitted that they have been using the infringed marks globally since 2015, with no objections from anyone, including the plaintiffs.
Court noted that the use of similar trademarks may result in the possibility or likelihood of confusion and the defendants’ presence or absence in the same market where the plaintiffs were operating their channels would also determine the right to an injunction.
Therefore, Court opined that even if ‘EUROSPORT’ began operations in Europe in 1989, it would be important to know when it entered the Indian market.
Court further noted that according to the record, they appear to have done so only in 2017. As per various documents filed by the plaintiffs, from 1992 to 2017, the companies Star India Pvt. Ltd. and Star TV Production Ltd. expanded their broadcasting activities by introducing several channels that included entertainment and sports.
Court added that the names of these channels the word "Star," as well as a Single Star logo placed in a specific manner and its color and shading variations and that the Single Star logo has been identified with the plaintiffs as the originator of the content on these channels and the provider of entertainment and sports programs on television in India due to the reputation and popularity of these channels with the viewing public.
Furthermore, “A star to a common person would not connect to an entertainment and sports broadcasting channel. The use of a completely unconnected word and device to represent the broadcasting channels of the plaintiffs is a creative usage of the common word which requires to be protected. Thus, the plaintiffs have a right to protect the use of a common word in a novel manner”, the court stated.
Court also stated that the coexistence of both trademarks in different jurisdictions would not preclude the plaintiffs from seeking to protect their trademarks in India and if the impact on business in other jurisdictions were negligible, the plaintiffs would be justified in deciding whether to file a lawsuit or ignore the use.
It further stated that the plaintiffs' operations in India are massive, as evidenced by their annual reports, where millions of households watch their channel, including their sports channel, and the defendant's use of Single would prima-facie be on account of that popularity and reputation that the plaintiffs had built in India.
The court observed, “The balance of convenience lies in favor of the plaintiff as they have built up a strong reputation in India over a long period, whereas the defendants have just entered the market in 2017 as EUROSPORT. The defendants had run their sports channel as DSPORT with the Globe logo for about 18 months and had protected it before they had adopted the Single Star EUROSPORT name and device”.
Noting that the defendants' continued "deceptive use" of the Single Star would cause irreparable loss and injury to the plaintiffs, particularly by diluting the unique use of the word "STAR," which is a created word, and the "Star" logo through common usage, the Court granted an interim injunction in favor of plaintiffs.
Accordingly, disposed of the infringement suit.
Case Title: Star Television Productions Limited & Anr v. EuroSport & Anr.
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