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Synopsis

The Delhi High Court on Tuesday said that the term “Bhaiyaji” is a generic term of widespread use and News18 India cannot claim exclusive rights over the mark “Bhaiyaji”.

A Bench of Justice Amit Bansal was hearing a suit filed by News18 India seeking to restrain Times Now Navbharat show “Bhaiya Ji Superhit” from infringing its trademarks “Bhaiyaji Kahin”, for passing off and other ancillary reliefs.

News18 contended that it had adopted the device mark “BHAIYAJI KAHIN” with effect from 29th December, 2016 under classes 38 and 41. Under the trademark, “Bhaiyaji Kahin”, over 1,200 episodes have been broadcasted its channel, it said. 

Further, it claimed that “Bhaiyaji Kahin” marks have attained immense goodwill and reputation amongst the show’s audience and some of the episodes have garnered over 11 million views.

In January 2022, Times Now Navbharat launched a show titled “Bhaiya Ji Superhit”, which is also available on Youtube, where newsworthy issues were brought to light through humour and satire.

Owing to the similarity in the trademarks as well as the nature of the show, News18 India served a cease and desist notice calling upon Times Now Navbharat to stop using the impugned mark “Bhaiya Ji Superhit”.

The defendant responded that its show format was different and there was no likelihood of confusion between the two marks. 

Times Now Navbharat argued that the mark “Bhaiyaji Kahin” was registered with the condition that “Registration of this trade mark shall give no right to exclusive use of the word separately,” thereby meaning that the plaintiff has no right to claim exclusive use of the word “Bhaiyaji”.

“The term “Bhaiya”/ “Bhaiyaji” is a generic Hindi word that literally translates to “brother” and therefore, News18 India cannot claim exclusive use of the said term,” it contended. 

On the other hand, News18 India said that it is not claiming exclusive rights over the term “Bhaiyaji”, but the said term is the most dominant part of its registered trademark.

In its order, the Court noted that the term “Bhaiyaji” is a word of common use in certain states of India, including Uttar Pradesh and Bihar, and which literally translates into the word “brother” and is therefore, of a non-distinctive character. 

“The only similarity between the marks of the plaintiff and the defendant is the use of the term “Bhaiyaji”. There is no similarity between the term “Kahin”, used by the plaintiff and the term “Superhit” used by the defendant. In view of the disclaimer with regard to the term “Bhaiyaji” under class 41, the plaintiff cannot restrict the defendant from using the said term,” the High Court ruled while referring to Section 28(2) of the Trade Marks Act.

Also, the court said that as to whether the mark “Bhaiyaji Kahin” has acquired distinctiveness on account of long user can only be examined in trial and cannot be the basis for grant of an interim injunction.

The High Court said that the question as to whether the mark of the plaintiff has acquired distinctiveness on account of long user is subject matter of trial and cannot be decided at the prima facie stage. 

“As regards the case of the passing off, at this interlocutory stage, I am of the view that the formats of the respective shows of the plaintiff and the defendant are quite different,” it said while refusing to grant any interim injunction. 

The Court clarified that its observations shall not have a bearing on the final outcome of the suit between the parties.

Cause Title- TV 18 BROADCAST LIMITED v. BENNETT, COLEMAN AND COMPANY LIMITED