Delhi High Court Holds Prior User’s Goodwill Prevails; Restrains Regional Newspaper from Using ‘Saurashtra Aaj Tak’
Facts
TV Today Network, the operator of the nationally renowned news channel ‘Aaj Tak’, filed a suit seeking a permanent injunction against the respondents from publishing a Gujarati newspaper under the name ‘Saurashtra Aaj Tak’. The appellant contended that it had continuously used the mark ‘Aaj Tak’ since 1995, launched India’s first 24-hour Hindi news channel under that name in 2000, and had acquired immense goodwill and reputation.
The respondents launched the newspaper ‘Saurashtra Aaj Tak’ in 2002 from Rajkot, Gujarat. Despite receiving a legal notice, they continued using the title. The Trial Court found likelihood of confusion but merely directed the respondents to publish a disclaimer stating that they had no association with TV Today Network, instead of restraining use of the mark altogether. Aggrieved by the limited relief, TV Today Network preferred the present appeal. During the pendency of the appeal, ‘Aaj Tak’ was also registered in multiple trademark classes and declared a Well-Known Trademark by the Registrar of Trade Marks.
Issues
- Whether the respondents’ use of ‘Saurashtra Aaj Tak’ amounted to passing off.
- Whether a disclaimer sufficiently protected the appellant’s goodwill.
- Whether the appellant, though not the registered proprietor at the time of filing, could maintain a passing off action as the prior user.
- Whether registration under the Press and Registration of Books Act protected the respondents from passing off liability.
- Whether the Trial Court erred in refusing to completely restrain use of the impugned mark.
Petitioner’s Arguments
The appellant submitted that:
- ‘Aaj Tak’ had acquired enormous goodwill through continuous use since 1995.
- The respondents deliberately adopted ‘Saurashtra Aaj Tak’ to exploit that goodwill.
- Merely adding the geographical prefix ‘Saurashtra’ did not eliminate deceptive similarity.
- The respondents never led evidence to establish bona fide adoption or independent goodwill.
- Registration under the Press Act did not override rights under the Trade Marks Act.
- The Trial Court itself found likelihood of confusion yet wrongly permitted continued use through a disclaimer.
- During the appeal, ‘Aaj Tak’ had also become a Well-Known Trademark, strengthening protection.
Respondent’s Arguments
The respondents argued that:
- The suit itself was not maintainable as the registered proprietor was Living Media India Ltd.
- Their newspaper was a small regional Gujarati publication confined to Saurashtra.
- The words ‘Aaj Tak’ were descriptive and incapable of monopoly.
- Their title had been approved by the Registrar of Newspapers for India.
- There was no actual confusion among readers.
- Their newspaper differed in script, logo, trade dress, language and geographical reach.
- The disclaimer adequately addressed any possible confusion.
Analysis of the Law
The Court examined the law governing:
- Passing off under Sections 27 and 28 of the Trade Marks Act.
- Prior user rights.
- Distinctiveness and secondary meaning.
- Well-known trademarks.
- Common law protection independent of statutory registration.
The Court emphasized that passing off protects goodwill acquired through use and that prior user rights prevail even over registered rights. It also held that registration under the Press laws cannot override trademark and passing off principles.
Precedent Analysis
The Court extensively relied upon:
- S. Syed Mohideen v. P. Sulochana Bai — Prior user rights prevail over registration; passing off is an independent common law remedy.
- Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd. — Passing off protects goodwill and prior user of a distinctive mark.
- Century Traders v. Roshan Lal Duggar & Co. — Registration recognises existing rights; it does not create them.
- N.R. Dongre v. Whirlpool Corporation — Prior user enjoys superior protection.
- A. Kanthamani v. Nazeema Ahmed — Maintainability objections must be raised at the trial stage.
- Bansari v. Ram Phal — Respondent cannot challenge adverse findings without cross-objections.
Court’s Reasoning
The Court found that:
- The Trial Court had already conclusively held that ‘Aaj Tak’ had acquired distinctiveness and goodwill.
- It had also found likelihood of confusion, association and potential injury to the appellant’s reputation.
- The respondents never produced evidence proving bona fide adoption or independent goodwill.
- Since they chose not to contest the proceedings by leading evidence, an adverse inference had to be drawn.
- Once passing off was established, permitting continued use with a disclaimer was legally inconsistent.
- The respondents’ addition of the word ‘Saurashtra’ did not sufficiently distinguish the mark.
- The appellant was clearly the prior user and therefore entitled to common law protection irrespective of subsequent registration.
- The later declaration of ‘Aaj Tak’ as a Well-Known Trademark further reinforced the need for complete protection.
Conclusion
The Delhi High Court allowed the appeal.
It held that the Trial Court erred in permitting continued use of ‘Saurashtra Aaj Tak’ with a disclaimer after recording findings of passing off and likelihood of confusion. The Court held that the appellant’s prior user rights, goodwill and reputation deserved complete protection. Consequently, the respondents were permanently restrained from using the mark ‘Saurashtra Aaj Tak’ or any deceptively similar mark.
Case Details
Case: TV Today Network v. Saurashtra Aaj Tak & Another
Court: Delhi High Court
Case Number: RFA 320/2012
Judge: Hon’ble Ms. Justice Mini Pushkarna
Date: 30 July 2026
Result: Appeal allowed. Trial Court’s limited relief modified. Respondents permanently restrained from using the mark ‘Saurashtra Aaj Tak’; disclaimer held insufficient to protect the appellant’s prior user and passing off rights
