HTC Corporation v. L.V. Degao, 2022 SCC OnLine Del 953 has held, where there are two registered trademarks, registration of the later trade mark may be refused or cancelled: (i) when deception or confusion results, (ii) there is a dishonest user, (iii) subsequent use is without due cause, (iv) there is bad faith, or (v) dilution of distinctiveness of a prior registered trade mark may occur.
It would be incorrect to claim, Plaintiffs could claim no monopoly over the name ‘Star’. Plaintiffs can claim exclusivity in their own specific representation and have a right to protect use of a common word in a novel manner.
Even if Eurosport had commenced business in 1989 in Europe, it would be relevant to determine as to when they had entered the Indian market. It is apparent, they seem to have done so only in 2017. Since 1992 till 2017, Star India Pvt. Ltd. and Star TV Production Ltd. had expanded their broadcasting activities by introducing several channels, names of which included the Single Star logo and the word ‘Star’. Use of a Single Star logo by Defendants would prima facie be on account of popularity and reputation Plaintiffs had built. There is not a shred of evidence to support, Plaintiffs had acquiesced to use of the Single Star logo by Defendants.
The adoption of the Single Star logo by Defendants did not reflect honest practice and by no stretch can be considered to be a bona fide adoption. Defendants, by going against terms of a Settlement Agreement which had once and for all settled the trademark disputes, have chosen to rake it up again.
Plaintiffs are entitled to interim injunction as prayed for.
– Hon’ble Justice Asha Menon of Hon’ble High Court of Delhi, Star Television Productions Limited & Anr v. Eurosport & Ors., [I.A. 7682/2020 in CS(COMM) 359/2020].