TIME WARNER ENTERTAINMENT COMPANY Vs. A K DAS

JUDGEMENT

(1.) THE plaintiff, Time Warner Entertainment Company, L.P. instituted the present suit seeking for permanent injunction against the defendants restraining them from conducting their television services under the name, mark or logo CBO/CABLE BOX OFFICE or under any name or style which is deceptively similar to the name or mark or logo of the plaintiff called HBO/HOME BOX OFFICE. THE petitioner has a division - HOME BOX OFFICE for its premium television programming with the logo called HBO. HBO operates the world's oldest and largest cable television channel under the trade mark HBO/HOME BOX OFFICE, in use since September, 1972. According to the plaintiff the said HBO/HOME BOX OFFICE played a pioneering role in the cable television business and operates in 96 countries. THE said trade mark HBO/HOME BOX OFFICE have been used separately or in conjunction with each other in several countries of the world as early as 1972 and the said trade mark is or are registered and/or pending registration in over 140 countries. THEse marks of the plaintiff have been extensively advertised and promoted since the year 1972 as a result of which they have come to be identified with the television programmes of the plaintiff company exclusively worldwide and evokes an image of high quality subscription television programming. THE plaintiff is present in India from the year 1994 when it applied for registration of its trade mark HBO. THE said application is dated 8.11.1994 and registration applied for is for motion pictures, television films and video cassettes. THE said application of the plaintiff is pending final decision.

(2.) AFTER the plaintiff applied for the aforesaid registration with the intention of entering into the Indian Market a large number of representatives of the trade have been writing to the plaintiff seeking to collaborate or do business with the plaintiff thereby clearly acknowledging the reputation of the plaintiff as being the world leader in the Cable TV Market. The representatives of the plaintiff company also visited India on several occasions and held discussions with different representatives of the trade including the defendants. Wide spread publicity was given in the Indian media about the various discussions held by the plaintiff company with the defendants to finalise the modalities and terms of the joint venture sought to be entered into between them. Draft Memorandum of Under-standings were also exchanged between the plaintiff and the defendants. The said MOU has been placed on record showing joint venture agreement between the plaintiff and the defendants and lays down the principles of the joint venture agreement. Subsequently however, the said joint venture project could not take off and failed to materialise as the defendants failed to come up with any concrete business plan. In March, 1996 the plaintiff company came to learn that defendant No. 2 proposed to launch a Cable Television Service using the name CBO and/or CABLE BOX OFFICE in relation to its proposed programming service. The defendants in its reply letter dated 15.4.1996 declined to refrain from using the marks CBO and/or CABLE BOX OFFICE. In view of the aforesaid stand taken by the defendants the plaintiff instituted the present suit with a further application under Order 39 Rules 1 and 2 seeking for grant of temporary injunction restraining the defendants from advertising, representing or conducting their television service in the name, make or logo CBO or CABLE BOX OFFICE together or separately or from using the component BOX OFFICE in conjunction with any prefix or suffix or from using any other name, mark or logo which is deceptively similar to the plaintiff's trade mark HBO/HOME BOX OFFICE.

(3.) IN Home Box Office INc. Vs. Channel 5 Home Box Office Ltd. and others, Fleet Street Reports (1982) page 449 (Supra) placed before me initially by the learned counsel for the defendants and later on also relied upon by the learned counsel for the plaintiff, it was held that the plaintiff has a substantial goodwill and reputation in the United States. That the plaintiff desired to enter the INdian market in or about the year 1994 cannot be disputed in view of the fact that the plaintiff applied for registration under the trade mark HBO in the month of November, 1994. It is also not disputed before me that the defendants entered into a memorandum of understanding with the plaintiff in relation to TV channel and at that point of time there were extensive media reports on the proposed joint venture between the plaintiff and the defendants to create Hindi and English Language TV channel with the plaintiff. All these factors individually as also conjunctively establish that the business of the plaintiff was not only known only in U.S.A where it started its TV channel network but also has registration in over 90 countries of the world but also in INdia with the defendants themselves proposing to tie up with the plaintiffs by means of the joint venture projects. The very action of the defendants in seeking to enter into a joint venture project with the plaintiff's business is implicit of the fact that the defendants were aware of the status and reputation of the marks HBO/HOME BOX OFFICE and since HBO/HOME BOX OFFICE is quite well known in U.S.A. and has registered office in as many as 90 countries, it definitely has an international reputation as a well known trade mark and such reputation could have spilled over to INdia due to tourist travel and international circulation of magazines in INdia like TIME Magazine. IN my considered opinion the ratio of the decisions of N.R. Dongre (Supra), Calvin Klein INc. (supra), Hitachi Ltd. (Supra), Apple Computer inc. (supra) and William Grant and Sons (supra) are applicable to the facts of the present case, I accordingly hold that the trade mark of the plaintiff under the name and style of HOME BOX OFFICE/HBO with the logo HBO attained a trans-border reputation spilling over to INdia.