In a recent dispute between Bennett Coleman and Company Limited vs Timespro Consulting LLP & Ors [CS(COMM) 723/2022, I.A. 12370/2023 & I.A. 12371/2023], the single Judge Bench of the Delhi High Court on 5 February 2024 passed a permanent injunction order in favour of the plaintiff restating the defendants from using TIMES PRO" as a trademark, domain name, email and on social media platforms which is identical or deceptively similar to those of the plaintiff's marks, business and services.
The plaintiff inter alia submitted that Bennett Coleman and Company Limited belongs to 'The Times Group', which started 184 years ago and publishes newspapers, journals, magazines and books. The Times Group comprises various independent companies involved in various businesses, such as event management, financial services, outdoor advertising, educational services, real estate, etc., with a combined annual turnover of over USD 700 million. The plaintiff has been using the trademark TIMES PROPERTY for its real estate business and publishing a dedicated supplement in the plaintiff's newspapers since 2001. The plaintiff also obtained the domain name https://timesproperty.com to provide information on the sale, purchase, and renting of properties.
The plaintiff is the registered proprietor of 'TIMES', 'TIMES PRO', 'TIMES PROPERTY' and TIMES formative trademarks for various goods and services, where 'TIMES' is an essential and dominant feature. The plaintiff's mark TIMESPRO' along with device 'TIMESPRO' have been registered since 2013, with the user in the mark 'TIMES' since 1838. On account of long, continuous and extensive use, the trademark TIMES has acquired formidable goodwill and reputation, signifying the source and origin of goods to the plaintiff. Thus, any use of the trademark 'TIMES' with or without any additions would lead to an association with the plaintiff's business due to its sales and promotions. In addition, the plaintiff has been zealously protecting its intellectual property rights and has several injunction orders in its favour where the defendants in those cases have been restrained from using the word 'TIMES' with different suffixes. Therefore, the plaintiff claimed that the impugned mark "TIMESPRO", adopted by the defendants as a trade name, trademark and domain name on social media platforms, along with the word 'CONSULTING' in relation to real estate services, are identical to the plaintiff's business in real estate and the adoption of a deceptively similar mark for identical services is likely to confuse the consumers and members of the public.
Further, the plaintiff submitted that despite a legal notice and a cease and desist notice sent by the plaintiff calling upon the defendants not to use the impugned mark for real estate business, the defendants have continued with the company and have chosen not to respond to the notice. The use of the mark by the defendants aims to encash the formidable and stellar reputation of the plaintiff's trademarks. It is leading to irreparable harm and injury to its reputation as well as blurring of the trademarks. Therefore, the plaintiff applied to permanently restrain the defendants from using the mark "TIMESPRO CONSULTING" and its formative marks and pay legal costs to the plaintiff. The defendants failed to appear before the Court and file the written submissions.
On 4 November 2023, the Court, upon examining the evidence presented by the plaintiff, found merit in the plaintiff's claims and granted an ex-parte ad interim injunction against the defendants until the next hearing date. Accordingly, the defendants and all those acting on the defendant's behalf were restrained from using the mark 'TIMESPRO CONSULTING' as a trademark, trade name, domain name, email, social media identifier or in any other manner which was identical or deceptively similar to the plaintiff's trademarks TIMES, TIMESPRO, TIMES PROPERTY & TIMES formative mark in relation to business purposes which were identical or similar to those of the plaintiff.
The Order of the Delhi High Court
Pursuant to the order dated 4 November 2023, the plaintiff filed an application seeking the pronouncement of a judgment and decree. Upon examining the averments and submissions of the plaintiff and the absence of appearance and written submissions by the defendants, the single Judge bench of the Delhi High Cout passed the following order in favour of the plaintiff:
- The defendants, its partners, assignees in business, licensees, its franchisees and all persons claiming right through them are permanently injuncted from using the mark, trade name, domain name, email and on social media platforms in any manner or any other trade mark, tradename, domain name which is identical or similar to the plaintiff's trademarks "TIMES", "TIMESPRO", "TIMES PROPERTY" and TIMES formative marks in relation to any business, services, goods, domain name, email and all social media platforms or in any manner whatsoever amounting to infringement of plaintiff's registered trademarks.
- The defendants, its partners, assignees in business, licensees, franchisees and all persons claiming right through them are permanently injuncted from using 'TIMESPRO CONSULTING' as a mark, trade name, domain name, email and on all social media platforms, in any manner or any other trade mark, trade name, domain name which is identical and similar to the plaintiff's trademarks TIMES, TIMESPRO, TIMES PROPERTY and TIMES formative marks in relation to any business, services, goods, domain name, email and social media platforms or in any manner whatsoever amounting to passing off of the defendant's business and services as those of the plaintiff.
- Decree of mandatory injunction is also passed directing the defendants to surrender in favour of the plaintiff, the domain name "timesproconsulting.com" and email address "timesproconsulting@gmail.com" and/or any other domain name/email containing the mark which is identical or deceptively similar to plaintiff's marks and its formative marks; or in the alternative to deactivate such domain names and email addresses.
In conclusion, the Court observed that using the mark "TIMES PRO CONSULTING" by the defendants amounts to infringement of the plaintiff's registered trademarks, passing off the defendant's business and services. The domain names and emails adopted by the defendants are identical or deceptively similar to the plaintiff's marks and their formative marks. Consequently, the permanent injunction order was passed against the defendants, and the defendants have also been directed to pay legal costs of Rs. 1,50,000, to be deposited in favour of the plaintiff within a period of six weeks.
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