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Judgment
Manmohan Singh, J
The petitioner has filed a petition cancellation petition on die grounds of Bad-Faith adoption under section 57 of die Trade Marks Act, 1999 in April,
2014 against the impugned mark 'GNN' bearing No. 1907034 in Classes 38 & 41 and die impugned mark was wrongly registered. The applicant has
come to know about the Respondent's many subsequent other pending marks applications ""GNN GLOBAL NEWS NETWORK5 bearing No.
1846787 in Classes 9, 16, 25, 35, 36, 38, 41 & 42 are being shown as ""Abandoned"" and 'GLOBAL NEWS NETWORK' bearing no, 1846786 in
Classes 9, 25, 35, 36, 38, 41 & 42, are presently pending, in the name of die Respondent.
That Respondent in this case was served on the Respondent herein vide notice dated August 12, 2014, the Appellate Board listed matter on December
19, 2016 none appeared for the Respondent and again Appellate Board listed matter before Deputy Registrar Court on February 10, 2017, wherein die
Counsel for the Respondent appeared and was directed to file in reply despite of direction, die Respondent chose to not to file reply to this application
till now.
The applicant 'CNN' Cable News Network television channel- 'CNN', die leading 24 hour news and information cable television network and die
flagship of all 'CNN' news brands, invented 24-hour television news. The 'CNN'/U.S. is providing live coverage and analysis as well as of breaking
news, further a full range of business, weather, sports, entertainment, health and science news programs and topical in-depth interviews. The
Applicant has many registered Trademark in the name of applicant
The Respondent has adopted the impugned mark 'GNN' which is confusingly and deceptively similar to the Applicant's trade mark 'CNN' obviously
with bad faith intention. From an overall comparison of die marks, it is apparent that the rival marks are extremely similar as such it will lead to a
likelihood of association with the Applicant's brand 'CNN' for services being bio micas ting and telecommunications, which are virtually identical,
clearly displays the Respondent's; unlawful intent to trade upon the goodwill and reputation associated with die Applicant's trade mark 'CNN'. Hence,
the registration of die impugned mark is contrary to Section. 9(2)(a) of the Act, as the Respondent's mark has been adopted with an intention to
deceive and cause confusion in the minds of die public.
The impugned mark is deceptively and confusingly similar to the trademark of the Applicant and that die adoption and use, it any, of the
Respondent's mark would take unfair advantage of, and be detrimental to, the distinctive character and reputation of the earlier mark of the Applicant.
Any use of die Respondent's mark amounts to passing off its services as and for the services of die Applicant. In light of the similarities explained in
the preceding paragraph, the registration of the Respondent's mark is contrary to the provisions of Sections 11(1), 11(2), 11(3), 11(4) and 11(10) of the
Act.
The Respondent has adopted its mark with mala fide intention of riding upon die fame, goodwill and reputation of the Applicant. The adoption of its
mark by the Respondent is not honest and it is evident from the fact that the Respondent has adopted its mark under bad faith, as much as the
Applicant being the proprietor of die earlier trademarks had not consented to die registration of the Respondent's impugned mark. Therefore, the
registration of the impugned trade mark is contrary to the provisions of Section 18(1) of the Act.
The Respondent has cleverly structured the impugned mark 'GNN' with a view to come dose to the Applicant's trade mark 'CNN"". By virtue of the
registrations and the provisions of the Trade Marks Act, 1999 wherein solely the Applicant and its licensees have the exclusive right to use the mark
'CNN', The Respondent's use of the impugned mark 'GNN' which is virtually identical and confusingly and deceptively similar to 'CNN', for identical
services, constitutes infringement of the Applicant's registered trademarks. The Applicant's well known earlier 'CNN' mark has enormous reputation
and goodwill worldwide, including MI India.
The Applicant submits that die impugned mark has been adopted dishonestly by the Respondent and in bad faith; the Applicant earlier mark was
registered and was being extensively used across the world including India. While adopting the mark 'GNN' in 2010, the Respondent ought to have
been aware or"" die prior trade mark of the Applicant, it is abundantly clear that the Applicant is die prior adopter and user of the earlier trade mark
'CNN' in respect of services at least falling in Classes 38 and 41. The Applicant was die owner of the earlier trade mark 'CNN' on the date of
application of the mark by the Respondent and therefore the adoption of die said mark by die Respondent cannot be termed as honest and/or in good
faith.
The adoption of trade mark 'GNN' is clearly indicative of die Respondent's intentions to mislead members of trade and public a ad to unlawfully
trade upon the extensive fame, goodwill and reputation enjoyed by die Applicant in its well known earlier mark 'CNN'. Therefore, the impugned mark
'GNN' in die name of the Respondent is wrongly remaining on the Register of Trade Marks. The mark 'GNN' bearing registration number 1907034 is
liable to be expunged from the Register of Trade Marks under the provisions of Section 57(2) of die Trade Marks Act, 1999 so as to maintain the
purity of the Register of Trade Marks.
As per registry record the Respondent did not file any counter statement with supported document no he had appeared on listed dates thus the
Respondent has failed to show his inclination to set up his case, by bringing; my materials/documents to justify the adoption of a label mark that is
identical to the applicant trademark and similar as of the Applicant. The Registered proprietor has not been aisle to justify as to how it hit upon an
identical markas an imitation of the trademark of the Applicant.
After going through extensively the documents submitted by the applicant, in our considerable opinion the Respondent registered the said
trademark in bad faith with the intention to enjoy its worldwide reputation of die applicant, in our opinion, the applicant is person aggrieved as it is
engaged for services being broadcasting and telecommunications and is prior adopter, prior user of the said trademark. The services for which the
respondent has registered the impugned trademark are of die same description and are used for the same purposes and further the respondent counsel
has failed to submit the counter.
As Judgment of Bombay High Court in the matter of Ciba Ltd. v. M. Raimlingam And S. Subramaniara AIR 1958 Bom 56 The Hon'ble Court
clearly said that ""Now, in considering both Section 46 and Section 10 it has got to be remembered that the primary duty of the Court is towards the
public and the maintenance of the purity of the register. When a case is sought to be made out that a particular trade mark is likely to deceive or cause
confusion, the contest is not so much between the parties to the litigation as it is a contest between the party defending his right to a particular trade
mark and the public, and the duty of the Court must always be to protect the public irrespective of what hardship or inconvenient it may cause to a
particular party whose trade mark is likely to deceive or cause confusion. The object of maintaining a trade mark register is that the public should
know whose goods they are buying and will) whom particular goods are associated. It is therefore essential that the register should not contain
trademarks which an identical or which so closely resemble each other that an unwary purchaser may be likely to be deceived by thinking that be is
buying the goods of a particular person or a particular firm or a particular industry, whereas he is buying the goods at another person or firm or
industry
So keeping in view of the principle laid down in the above judgment that the clear onus lies more on the shoulder of the Registrar Trademarks as
the Registrar Trademarks is being public authority, die Registrar Trademarks primary duty is towards the public and for the maintenance of die purity
of the register the duty of the Registrar Trademarks must always be to protect the public irrespective of what hardship or inconvenience it may cause
to a particular party whose trade mark is likely to deceive or cause confusion. The object of maintaining a trade mark Register is that die public should
know whose goods they are buying and with whom particular goods are associated. It is therefore essential that the register should not contain
Trademarks which are identical or which so closely resemble each other.
It is admitted fact the applicant trademark CNN was declared a well-known mark as per the Judgment Cable News Network, Inc. v. Anshu Jain
and Ors. Decided on November 16, 2017 by the Delhi High Court during the pendency of the present proceedings,
On perusal of the plaint and documents on record, it reveals that the plaintiff is the registered user of the mark ""CNN"". The plaintiff has place on
record number of documents showing that plaintiff has been running its well-known news channel with presence in several countries and territories
worldwide. Various printouts show that the defendants have been using the domain name www.cnndigital.com. This Court is of the mew that the
plaintiffs trademark. 'CNN' is a well-known trademark as defined under Section 2(1)(zg) and other provision of the Trade Marks Act, 1999.
In our opinion, it is evidently clear from the submission made by the counsel for die applicant that the Respondent has adopted the impugned mark
'GNN' which is confusingly and deceptively similar to die Applicant's trade mark 'CNN' obviously with bad faith intention. From an overall comparison
of die marks, it is apparent that the rival marks are extremely similar as such it will lead to a likelihood of association with the Applicant's brand 'CNN'
for services being broadcasting and telecommunications, which ate virtually identical, clearly displays the intent of die Respondent's mark, as the same
has been adopted unlawful intent to trade upon the goodwill and reputation associated with the Applicant's trade mark 'CNN' and to deceive, cause
confusion in die minds of the public. Hence, die registration of the impugned mark is contrary to Section 9(2)(a), section Hand section 18 of the Act.
Keeping in view of facts and circumstances, we are of the considered opinion dial die registration of the impugned trademark 'GNN' having registered
trademark No. 1907034 in Classes 38 & 41 is granted contrary to the provisions of Sections 9, 11, 12, 18, 47 & 57 under the Trade Marks Act, 1999
and Rules thereto, as such the present original rectification application deserves to be allowed thereby directing the Registrar of Trademarks to rectify
die registered trademark No. 1907034 in Classes 38 & 41 from the Trademark Register in order to maintain die purity of die Trademark Register.
The copy of the order is sent to die Registrar of Trademarks in order initiate necessary Steps for removal of die trademark 'GNN' having registered
trademark No. 1907034 in Classes 38 & 41 within 15 days of die receipt of this order.
Order as no cost.