Delhi High Court Grants Interim Injunction In Favour Of Star TV Productions, Restrains Use Of Deceptively Similar 'EUROSPORT' Trademark

Granting interim injunction in favour of Star Television Productions Limited, the Delhi High Court has restrained the use of 'EUROSPORT' trademark as being identical or deceptively similar to 'STAR' marks including the Star device. Justice Asha Menon restrained Eurosport, a global sports channel formerly known as Dsport, Discovery Communications LLC and Discovery Communications India from using the EUROSPORT trademark till the final disposal of a trademark infringement suit filed by Star Television Productions seeking protection of its trademark 'STAR'. It was the plaintiffs' case that the use of Single Star by Eurosport, which also contained Star device, in its entirety was deceptively similar to its registered trademark STAR. It was also submitted that the Star was positioned prominently in juxtaposition with the letter E which was why the "Star" in "EUROSPORT" and was deceptively similar to various registered STAR Marks in India. On the other hand, the defendants argued that the suit was a malicious attempt to wrongly obtain a commercial advantage over them and that Eurosport was the registered proprietor of the impugned trademarks and their variations, not only in India but over 100 jurisdictions around the world. It was further argued that the impugned marks were used globally by the defendants since 2015 without objections including from the plaintiffs.The Court noted that while the plaintiffs claimed to be the prior use of the Single Star logo and the word STAR, Star India Pvt. Ltd. had commenced its broadcasting in India way back in 1991 and launched its first television channel Star TV in India in the year 1992. It also noted that the defendants claimed that they had adopted a star logo in 1989 when it had come into being and when EUROSPORT had commenced its business of broadcasting in sports. It was thus observed that even if EUROSPORT had commenced business in 1989 in Europe, it would also be relevant to determine as to when they had entered the Indian market. "It is apparent from the record that they seem to have done so only in 2017. The various documents filed by the plaintiffs would indicate that since 1992 till 2017, the company Star India Pvt. Ltd. and Star TV Production Ltd. had expanded their broadcasting activities by introducing several channels which included entertainment and sports," the Court said. It added,"The name of these channels included the word "Star" as also a Single Star logo placed in a particular manner and its variations in color and shading. The reputation that these channels and the popularity of these channels with the viewing public has resulted in the Single Star logo being identified with the plaintiffs as the originator of the content on these channels and the provider of entertainment and sports programs on television in India."While it was the plaintiffs‟ case that they had coined the word STAR as an acronym for Satellite Television in Asia Region, the Court said that the defendants had no explanation for choosing the Single Star logo, though they had one for the Ring of Stars, that is to reflect the European Union. "Thus, the plaintiffs have a right to protect the use of a common word in a novel manner," the Court said. "A star to a common person would not connect to an entertainment and sports broadcasting channel. The use of a completely unconnected word and device to represent the broadcasting channels of the plaintiffs is a creative usage of the common word which requires to be protected," it added. The Court also said that the co-existence of both the trademarks in various jurisdictions would not act as an estoppel against the plaintiffs from seeking to protect their trademarks in India. "If the impact on the business in other jurisdiction was negligible, the plaintiffs would be justified in taking a call as to initiate legal action or to ignore the use," it said. It added, "The scale of operation of the plaintiffs in India being huge as reflected in their annual reports, where millions of households watch the channels of the plaintiffs including their sports channel, the use of a Single Star logo by the defendants would prima-facie be on account of that popularity and reputation that the plaintiffs had built in India."The Court therefore granted interim injunction in favour of the plaintiffs observing that the continued dishonest use of the Single Star by the defendants would cause irreparable loss and injury to the them, particularly by diluting the unique use of the word STAR and the Star logo."The balance of convenience lies in favour of the plaintiff as they have built up a strong reputation in India over a long period of time, whereas the defendants have just entered the market in 2017 as EUROSPORT. The defendants had in fact run their sports channel as DSPORT with the Globe logo for about 18 months and had protected it, before they had adopted the Single Star EUROSPORT name and device," the Court observed. Case Title: STAR TELEVISION PRODUCTIONS...

Delhi High Court Grants Interim Injunction In Favour Of Star TV Productions, Restrains Use Of Deceptively Similar 'EUROSPORT' Trademark

Nupur Thapliyal

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