Court will decide who owns a catchphrase

By Manisha Singh and Simran Bhullar, LexOrbis
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The well-known catchphrase, Nation Wants To Know, of news anchor Arnab Goswami and the title of his former programme, The Newshour, came before Delhi High Court in the case of Bennett Coleman & Co Ltd v Arg Outlier Media Pvt Ltd & Ors. The plaintiffs, the owners and operators of the news channel Times Now, from which Goswami resigned in 2016, sought an interim injunction against him. The plaintiffs sought a permanent injunction against the defendant company ARG Outlier Media and its news channel, Republic TV, in respect of the trade- marks “Newshour” and “Nation Wants To Know”.

Manisha Singh,LexOrbis
Manisha Singh
Partner
LexOrbis

The title of the programme, along with the derivative word and label marks, was registered as a trademark in classes 16, 35 and 38 in 2014 with a user claim from 2006. Registration is pending in classes 9 and 41.

The plaintiffs claimed that their editorial and marketing teams created the catchphrase Nation Wants to Know, which popularized the programme and led viewers to associate them. Based on this, the plaintiffs had applied for trademark registration for the text and the logo of the tagline in classes 38 and 41 as proposed to be used from 2006. They asserted exclusive proprietary rights over the marks due to their acquired distinctiveness. They claimed that Goswami, formerly editor-in-chief of Times Now, was using the marks to gain from the popularity generated during his tenure at Times Now, which was inconsistent with the terms of his employment agreement. Goswami launched Republic TV in 2017. It had filed trademark applications, with a user claim since 2016, for such impugned marks as Nation Wants to Know, Arnab Goswami Newshour and Goswami Newshour Sunday, as proposed to be used in class 38 in the same year.

The plaintiffs have an ongoing case in the same court against Goswami for breach of an employment agreement and misappropriation of the plaintiffs’ confidential data and proprietary content. Evidence in that matter asserts that the defendant agreed to abide by the terms of that agreement, which stated that any intellectual property created during his tenure would belong to the plaintiffs.

Simran Bhullar,LexOrbis
Simran Bhullar
Associate
LexOrbis

The defendants argued that the plaintiffs knew that the defendants wanted to use the marks in their new venture. The term The Newshour was generic and various news channels used it for their shows. They challenged the validity of the trademark registration due to the lack of distinctiveness. Goswami so frequently used the phrase Nation Wants to Know on the programme that it became synonymous with him. The plaintiffs could claim no proprietary right. The plaintiffs were not the registered owner of the tagline and could not claim association with it.

The court differentiated the two cases, saying that the existing case related to the infringement of IP rights, whereas the present suit was based on the infringement of trademarks and sought relief against passing off. The court held that the plaintiffs were the undisputed proprietors of the trademark “Newshour”. The mark was not generic or common as the registration authority did not object to it. The fact that the defendants wanted to use it with prefixes and suffixes implied decep- tive similarity and an infringement of the plaintiffs’ registered mark.

The plaintiffs’ trademark application for the use of the tagline Nation Wants To Know suggested that it was proposed to be used, and though the application was later amended, this was relevant. Internet screenshots showing the defendants’ association with the tagline could not be accepted without scrutiny. Since the parties had not submitted evidence, it was unclear who was the first user of the tagline. The court could not therefore conclude that the defendants were deceiving viewers or causing losses to the plaintiffs.

The defendants’ argument that the tagline was used as common speech therefore succeeded. The plaintiffs also agreed to the defendants’ use of the tagline in common speech. However, the trademark registration is disputed and has yet to be decided.

Due to the lack of evidence, the court restrained the defendants from using the mark Newshour, but allowed them to use the phrase Nation Wants To Know in common speech. This case is an intriguing example of a catchphrase becoming the subject of an IP infringement suit. Only the final verdict will reveal who is the rightful owner of the tagline.

Manisha Singh is a partner and Simran Bhullar is an associate at LexOrbis

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