The Bombay High Court refused to restrain Tata Play from using the mark “Tata Play Astro Duniya” for its astrology channel and dismissed a plea seeking an interim injunction against the company. The Court held that the plaintiff had failed to establish a prima facie case of trademark infringement or passing off against Tata Play. The order was passed by Justice Sharmila U. Deshmukh while hearing a suit filed by astrologer Rajeev Prakash Agarwal.
The dispute arose after Agarwal approached the Court alleging that Tata Play’s use of the expression “Astro Duniya” for its astrology channel infringed his trademark. Agarwal claimed that he had been providing astrological and spiritual services since 2005 under the registered mark “Astro Dunia.” He asserted that he had exclusive rights over the mark and that the use of the phrase “Astro Duniya” by Tata Play was deceptively similar to his trademark. According to him, the difference between the spellings “Dunia” and “Duniya” was insignificant and did not alter the visual, phonetic or structural similarity between the two marks.
The plaintiff sought an interim injunction to restrain Tata Play from using the expression “Astro Duniya” or any other mark that was deceptively similar to his registered trademark. He contended that the use of the phrase by Tata Play was likely to cause confusion among consumers and could lead the public to believe that the services offered by the company were associated with or connected to his business.
The Court examined the nature of the trademark registration held by the plaintiff and noted that the mark registered in his favour was a composite label mark. The registration included not only the words “Astro Dunia” but also a device of a star forming part of the label. The Court further observed that the registration had been granted by the trademark registry subject to a disclaimer stating that the registration did not grant exclusive rights over the descriptive components of the mark and that the label as a whole was required to be used together.
During the proceedings, the Court also took note of the plaintiff’s own submissions regarding the distinctiveness of his mark. Agarwal had argued that the uniqueness of his trademark lay in the combination of the English word “Astro” with the Hindi word “Dunia” along with the star device. According to him, the distinctiveness arose from the overall combination of these elements rather than from the individual words alone.
Based on this submission, the Court observed that the plaintiff could not subsequently claim exclusive rights over the words “Astro Dunia” taken independently. The Court held that the plaintiff was effectively estopped from asserting distinctiveness in those words alone, since he himself had argued that the distinctive character of the mark arose from the combined features of the label.
The Court also examined whether the expression “Astro Dunia” could be considered inherently distinctive. It noted that the term combined a shortened version of the English word “Astro,” referring to astrology, with the Hindi word “Dunia,” meaning world. When used together, the phrase effectively conveyed the meaning “world of astrology,” which the Court found to be descriptive of the services offered.
The Court further observed that in India there is a common tendency to blend Hindi and English words in everyday language. Because of this linguistic practice, the combination of such words does not automatically make a mark inherently distinctive. The Court therefore concluded that the phrase “Astro Dunia” was descriptive in nature and not inherently capable of exclusive appropriation.
In addition, the Court considered documentary material produced by the plaintiff, including invoices bearing the phrase “Astro Dunia – Your World of Astrology.” The Court observed that these documents themselves indicated that the phrase had been used by the plaintiff in a descriptive sense to denote the nature of the services offered.
The Court also compared the marks used by the two parties. Tata Play used the expression “TATA PLAY Astro Duniya,” where the house mark “TATA PLAY” was prominently displayed above the words “Astro Duniya.” In contrast, the plaintiff’s mark depicted “AstroDunia” written horizontally along with a star device. The Court held that the presence of the well-known house mark “TATA PLAY” was sufficient to distinguish the two marks.
Another factor considered by the Court was the nature of the services offered by the respective parties. Tata Play used the mark in connection with a television and digital astrology channel available through its platform, while the plaintiff provided personalized astrology advisory services. The Court observed that these services were different in character and catered to different kinds of consumer engagement.
The Court also examined the plaintiff’s claim that he had been continuously using the mark since 2005 and had acquired distinctiveness through long use. However, the Court expressed doubts about the evidence placed on record in support of this claim. It noted that much of the material relied upon by the plaintiff consisted of self-attested documents and sales figures linked to his own business entities. These materials were not considered sufficient to establish that the mark had acquired a strong secondary meaning in the market.
Taking all these factors into account, the Court concluded that the plaintiff had not been able to establish a prima facie case of trademark infringement or passing off against Tata Play. Since the basic requirements for granting an interim injunction were not satisfied, the Court rejected the plaintiff’s application seeking a restraint on the use of the mark by the company.
As a result, the Bombay High Court permitted Tata Play to continue using the mark “Tata Play Astro Duniya” for its astrology channel while the suit remains pending. The Court’s decision was based on the finding that the words forming the disputed phrase were descriptive in nature, that the plaintiff’s trademark registration was limited to a composite label mark, and that the rival marks were sufficiently distinguishable due to the prominent use of the “TATA PLAY” house mark.
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