'Duniyadari' Trademark Row | Delhi HC Orally Asks Zee To Reconsider Its News Show Logo; India Today Group Says 'Open To Talks'

After hearing both sides for about an hour, Justice Tejas Karia granted Zee Media time to file its reply and, in an oral observation, suggested that its counsel take instructions on making changes to the logo if they wished to "come out" of the suit.

The bench, however, clarified that it has not made up its mind on the issue and will consider the case after a reply is filed in the matter.

At the outset, Senior Advocate Asheesh Jain, assisted by Advocate Shahrukh Ejaz, appearing for the plaintiff (Living Media India Limited/India Today Group), argued that the defendant (Zee Media) is "not ready to give up the word" which is infringing their trademark 'Duniyadari'.

For context, yesterday as well, Jain had objected to the use of the word 'Duniyadari' and the 'globe' object, claiming both formed part of the India Today Group's artistic work. When Zee's counsel responded today that the logo had been substantially altered and the 'globe' removed, Jain maintained his objection to the continued use of the word 'Duniyadari'.

He contended that Zee Media is "passing off their show (in Gurumukhi script) as the plaintiff's programme", adding that the plaintiff had been using the mark long before the defendant.

Jain submitted that since 2020, the programme has received large viewership, one episode garnering as many as 85 lakh views, reflecting the reputation built over time.

"They just want to use my success...I have built this programme over a certain period of time...When you search on Interenet, my prigramme comes, but their programme shows too", he argued.

He further questioned as to why the defendant had chosen the same word "in respect of the same population, in respect of the same belt" when his programme also receives views from Punjabi-speaking audiences.

Counsel for the defendant, Advocate Rahul Vidhani, submitted that all similarities in design had been removed, retaining only the word 'Duniyadari' alongside the channel's own logo.

"I have 30 channels. 'Duniyadari' is also used generally", he said, adding that the plaintiff's viewership figures [5 lakh, 2 lakh, 6 lakh in the last five years] were insufficient to establish reputation. He also said that the word 'Duniyadari' had not been registered as a word mark by the plaintiff.

He further submitted that the term 'Duniyadari' is a common Hindi expression meaning 'worldly matters' and is descriptive when used in connection with news broadcasting of global events. As such, no single entity can claim a monopoly over a term that is generic and directly descriptive of the nature of news content.

Furthermore, he submitted that Living Media's registration pertains only to a label mark, not the exclusive rights over the standalone word 'Duniyadari'. Granting exclusivity over such a term would unfairly restrict the use of a widely understood expression within the news industry. 

However, at this stage,Justice Karia observed, "Assume that a person can read both (Hindi and Gurumukhi), will he not get confused? You use the same word… as a whole, if you see, it is prima facie deceptively similar".

The court noted that the object 'globe' in the logos cannot be registered separately. However, Vidhani counsel argued that it could be registered if it was artistic and likened the word's use to the Ramayana, where multiple creators produce distinct content.

To this, Justice Karia retorted, "But do you have any scripture for 'Duniyadari'?"

The defendant's counsel maintained that the word is common, citing a 2013 movie of the same name, and argued that the plaintiff began using it only in 2020.

The Court, however, remarked, "There is no law allowing a deceptively similar trademark to continue". He then orally suggested changes to Zee's logo.

When Jain said he had no objection to one week's time if they were directed not to upload any new videos with the mark, Justice Karia declined to dictate creative specifics: "I am not the creative director".

Jain added that the plaintiff was open to sitting down with the defendants to discuss a resolution, indicating a willingness to settle the matter. However, he categorically stated that the India Today Group would not agree to the defendant's continued use of 'Duniyadari' for its news show.

Consequently, the Court then directed the defendant to file its reply by August 22 and posted the matter for further hearing on September 2, asking the defendant to take instructions “if you want to come out of this.”

Advocate Vidhani was assisted by Advocates Neha Vidhani, Dhruv Sikka, Saurabh Kumar and Lakshya Gupta.

Case Background

It is the case of the Plaintiff (Living Media India Limited/India Today Group), which hosts various shows/programmes on its digital platform 'The Lallantop'. One such programme is a news segment titled 'DUNIYADARI', which focuses on global affairs with a trademark registered in 2020.

It has been claimed by the petitioner that the Defendant (Zee Media Corporation Limited) has launched a news segment under the identical name albeit in Gurumukhi script ('ਦੁਨੀਆਂਦਾਰੀ') on its regional channel 'ZEE Punjab Haryana Himachal'.

The petitioner claims that the alleged infringing Mark adopted by the Defendant is identical to the Plaintiff's Trade Mark, and its use in respect of identical services and identical viewership as the Plaintiff is "likely to cause confusion and deception amongst the public at large" who may be misled into believing that the Defendant's programme is associated with or is an extension of the Plaintiff's programme/news segment.

"The Defendant's use of the identical mark in respect of identical trade segment is a clear case of Infringement and Passing Off aimed at capitalizing on the Plaintiffs goodwill and reputation", the suit argues.

The suit further argues that deception and confusíon prima facíe in the present case occurs on account of:-

a. Imperfect recollection of the Plaintiff's Trade Mark due to phonetic similarity;

b. During the verbal pronouncement or hearing, it is not possible to identify whose Trademark is being referred to, as both are pronounced as "DUNIYADARI."

c. First-time viewers who have only heard about Plaintiff's Trade Mark and 7 IX its reputation but not seen Plaintiff's program are likely to associate the Defendant's show with Plaintiff's show;

d. A viewer dissatisfied with the Defendant's show would refer to the Defendant's show as 'DUNIYADARI' which would certainly hamper the goodwill enjoyed by the Plaintiff's Trade Mark, as viewers may impute those negative comments to the Plaintiff;

e. The confusion or deception may be about the program or about the source. The Defendant's program may be associated with the source originating from the Plaintiff, as Defendant's show "DUNIYADARI" projected in Gurumukhi script can be assumed to be an extension of Plaintiff's programme; and

f. The Defendant's program may be perceived franchised program of the Plaintiff.

The suit argues that the two Marks are identical in look and sound and are being used for online news broadcasts covering global and world affairs. Both marks target the same consumer segment, namely North Indians.