Hinglish Word Blend Not Inherently Distinctive: Bombay High Court Refuses Injunction Against Tata Play's Astro Duniya Mark

Observing that the blending of Hindi and English is common in India's linguistic landscape, the Bombay High Court has held that a combination of a clipped English word with a Hindi word does not, prima facie, make a trademark inherently distinctive.

“The combination of the clipped version of the English word with the Hindi word prima facie does not make it inherently distinctive in our country where there is tendency of blending Hindi and English and spoken as such,” Justice Sharmila U. Deshmukh observed.

The court made the observation while dismissing an interim application filed by astrologer Rajeev Prakash Agarwal, trading as Astro Dunia, who sought to restrain Tata Play Limited from using the mark “Astro Duniya” for its DTH astrology channel.

Agarwal claimed use of the mark since August 2005 and contended that “Astro Dunia” was a “coined and arbitrary mark” because it uniquely combined two languages. He further argued that the words “Astro Dunia” constituted the “prominent and essential feature” of his registered label mark.

Tata Play opposed the plea, arguing that the expression was descriptive and that the combination was a Hinglish expression denoting the “world of astrology.” The company also submitted that its services consist of passive television content broadcast to subscribers and that the prominent use of its house mark “TATA PLAY” alongside the expression distinguishes the source of the services.

Examining the plaintiff's mark, the court found that “the words 'Astro Dunia' with the device of a star above the words is purely descriptive of the services offered to the public, i.e. astrology.” The court noted that the plaintiff's own invoices used the mark along with the tagline “Your World of Astrology,” reflecting the descriptive nature of the expression.

Justice Deshmukh further emphasised that the plaintiff's rights were limited by the statutory disclaimer imposed while granting registration of the label mark, which stated that “the registration of the trade mark shall give no right to the exclusive use of all descriptive matters and that labels shall be used together.”

The court observed that if a proprietor were permitted to claim a disclaimed portion as an essential feature to establish infringement, the disclaimer would be rendered meaningless.

On the issue of passing off, the court applied the classic trinity test requiring proof of goodwill and reputation, misrepresentation, and resulting damage. It found the rival marks visually and structurally dissimilar, noting that the defendant's use of the expression together with its prominent house mark “TATA PLAY” was prima facie sufficient to distinguish the rival marks.

The court also held that the services offered by the parties were fundamentally different. While Tata Play broadcasts astrology-related television content to subscribers through its DTH platform, the plaintiff offers personalised one-to-one astrological consultancy services.

“It is necessary for prima facie case to be made out of false representation even if unintended which would lead the public to believe that the goods offered by the Defendants are that of the Plaintiff. The manner in which the Defendant's services are made available to the general public rules out possibility of misrepresentation,” the court said.

Finding no prima facie case of trademark infringement or passing off, the court dismissed the interim application.