India: Radio Mirchi wins against Radio Nasha at the Delhi High Court

Source: www.delhihighcourt.nic.in

The Delhi High Court recently in the case of Entertainment Network (India) Ltd. v. HT Media Limited, held that the mark ‘RADIO NASHA’ of HT Media Limited was deceptively similar to that of Entertainment Network (India) Ltd’s Trademark ‘PEHLA NASHA’ which might lead to confusion among the consumers and they might accidentally access HT Media Limited’s service instead of the service of Entertainment Network (India) Ltd.

The Court held that the act of HT Media Ltd in adopting the name ‘RADIO NASHA’ is not bona fide as they did so while being aware of the fact that Entertainment Network Limited was the prior registered owner of the name ‘PEHLA NASHA’ and there is no distinction between the services of both the parties.

Brief Facts

• Entertainment Network (India) Ltd. trading as 'Radio Mirchi' (hereinafter referred to as the 'Plaintiff') operates in the radio broadcasting and experiential marketing segment under its trade mark ‘Radio Mirchi’ along with the Mirchi logo.
• The Plaintiff launched its 24 hours non-stop free radio channel under the Trademark ‘PEHLA NASHA’ in 2014.
• HT Media Ltd. trading as 'Fever' (hereinafter referred to as the 'Defendant') airs its radio channels through the radio station titled “Fever 104 FM”, which is a direct competitor of the Plaintiff’s Radio Mirchi.
• The Defendant launched a new FM radio channel under the name/mark ‘RADIO NASHA’ which was alleged to be identical/deceptively similar to the Plaintiff’s trademark.
• It was learnt by the Plaintiff that the Defendant had applied for registration of the mark ‘RADIO NASHA’.
• On February 22, 2016, the Plaintiff filed a complaint to the Ministry of Information and Broadcasting to not approve ‘NASHA’ as the brand name for any FM Broadcaster since the Plaintiff was the prior adopter thereof.
• The Plaintiff also filed the suit for permanent injunction before the Delhi High Court (hereinafter referred to as ‘the Court’) restraining the Defendant from using any Trademark that is identical or deceptively similar to the Plaintiff’s Trademark ‘PEHLA NASHA’.  

Issues

• Whether the Plaintiff’s Trademark ‘PEHLA NASHA’ is being infringed upon by the Defendant’s mark ‘RADIO NASHA’?

Plaintiff’s Contentions

• It submitted that that the online radio station of the Plaintiff was operated in the same manner as a full-fledged radio station and used the same hardware, software, equipment etc. as is required to run a regular FM radio station;
• It also submitted that the audio streams for the internet radio station ‘PEHLA NASHA’ of the Plaintiff were created in the studio and thereafter were broadcasted through servers on Gaana.com platform;
• It contended that it was the prior adopter of the mark ‘NASHA’, since it was operating from 2014.
• It contended that the services of the Plaintiff and the Defendant were identical and both play the same genre of songs.
• It also argued that there was no other radio service under the name ‘NASHA’.
• It was further argued that the Defendant had not given any reason whatsoever for adopting a mark with the word ‘NASHA’ which formed the predominant part of the mark of the Plaintiff.
• It was alleged that the Defendant was earlier using the mark “Radio Fever” and it was inexplicable as to why the Defendant had abandoned the mark with the word ‘Fever’.

Defendant’s Contentions    

•  I t contended that that the word ‘NASHA’ was a commonly used term in the field of music as well as internet music streaming websites and had been used prior to use by the Plaintiff, by many third parties and who till date continue to use the same. Therefore, the word ‘NASHA’ was not distinctive of the Plaintiff.
• It contended that there was a difference in the product of the Plaintiff and the Defendant.    
• It submitted that the service of the Plaintiff can be accessed through internet, all over the world, however the service of the Defendant was a FM Radio, which was available only within 20 kilometers.
• It argued that the number of ‘Likes’ on the social networking page ‘PEHLA NASHA’ of the Plaintiff were not such as to show any goodwill for the service of the Plaintiff, it cannot claim to have acquired a secondary meaning or even a reputation.

Court’s Decision

• The Court was of the view that both were catering to the needs of the patrons of free music to earn revenue from advertising. The Court held that ‘the differences pointed out by the Defendant were not such which can be distinctive of the services of the two’.  
• The Court further held that ‘it was immaterial that the music platform under the mark ‘PEHLA NASHA’ of the Plaintiff was accessible from use of medium of Wi-Fi/internet and the music platform of the Defendant under the mark ‘RADIO NASHA’ was accessible through the medium of radio/transistor and transmitted through frequency modulation airwaves’.
• The Court found merit in the Plaintiff’s contention that ‘radios were hardly used anymore and that people can easily access radio music through their smartphones. Thus, it cannot be said that the instrument, through which the music under the mark ‘PEHLA NASHA’ of the Plaintiff and music under the mark ‘RADIO NASHA’ of the Defendant can be accessed are different or that the same obliterates the similarity/deceptive similarity.’
• It was assumed by the Court that the Defendant hoped, either to cause loss or harm to the Plaintiff by incorporating the word ‘NASHA’ in its mark or to gain from the goodwill of the Plaintiff, as it admitted that the Plaintiff was the prior adopter of the mark ‘PEHLA NASHA’ and there was trade rivalry between them.
• It was further held that ‘the word ‘NASHA’ was a word of Hindi language which meant intoxication which need not always be of alcohol. The Plaintiff, by adopting the said word in its mark for music services, attempted to lure the patrons to get intoxicated and addicted to its music.’
• ‘NASHA’ was held to be the dominant part of the mark of the Plaintiff with the word ‘PEHLA’ therein being unlikely to be remembered.

‘The Defendant was therefore restrained from using the mark ‘RADIO NASHA’ or any other mark similar or deceptively similar to the mark ‘PEHLA NASHA’ of the Plaintiff in relation to broadcasting, re-broadcasting, radio broadcasting and internet broadcasting services.’