Recently, a controversy erupted regarding an article shared by many of the prominent leaders of the Bharatiya Janata Party (‘BJP’), praising the hard work of the Prime Minister Narendra Modi and criticising the “opposition’s barbs”. This article was published on a website called ‘The Daily Guardian’. This led many to criticize it as a fake website trying to portray itself as associated with the prominent news agency, ‘The Guardian’. Some have criticised the concerned article to be misinformation (see here). Without going into the merits of the claim, it must be noted that if a misinformation platform is established with a name similar to a renowned news agency, the scope of the possible harm that could be caused if the readers believe the statements to be true based on the trust in the news agency would be enormous. This is particularly so in light of the fact that people are more likely to believe false information if the same is shared by a politician (see here). In this context, in this post, I shall analyse whether the adoption of names similar to internationally renowned news agencies could amount to passing off, using the example of the context of the ‘Daily Guardian’.
Background to the ‘Daily Guardian’
‘The Daily Guardian’ is owned by the iTV Network which owns several news channels including NewsX. It is the daily version of the weekly newspaper, ‘The Sunday Guardian’ that was founded by politician M.J. Akbar in 2010, targeting high end affluent readers, and was subsequently bought by iTV Network in 2012. The domain for the Daily Guardian has been registered in Uttar Pradesh, interestingly in 2007 (indicating that it possibly belonged to someone else earlier as the group was founded much later than that). While AltNews states that the website appears to have posts from April 2020 (see here) which is when its social media handles were also set up, its launch seems to have taken place only on February 8, 2021. (Readers do correct me with the facts in case I have missed something)
The Guardian does not seem to have its mark registered in India, based on a search for the same in the public search portal. Hence, only a passing off suit is available to them and not a trademark infringement case. In the instant case, there is no doubt that the Guardian is the prior and consistent user of its mark and hence is not ineligible from bringing forth a passing off suit. In order for a passing off claim to be successful, three elements need to be satisfied: “reputation of goods, possibility of deception and likelihood of damages to the plaintiff” (see here). Here, the reputation of the mark is that of the Guardian newspaper. While, per my knowledge, the newspaper does not have its offices in India, it regularly carries news related to developments in India.It is the second most-read online newspaper in the UK (see here) and one of the leading newspapers in the world (see here). It has also seen a considerable growth in its subscription base from India over the past 5 years. While exact determination of reputation is difficult in the absence of specific readership numbers from India, it still appears to be much more known than the Daily Guardian which many even termed as a fake website initially.
The possibility of deception by the consumers in terms depends on an analysis of the factors laid down by the Supreme Court in Cadila Healthcare. The nature of both the marks here is the same as they are both word marks. They are phonetically similar and rather identical apart from the use of the term ‘Daily’ which is missing in the original newspaper’s name. They are both used for the same nature and character of services, news reporting, and have similar consumption models, access by way of their websites. Notably, there appears to be considerable difference in the performance of the two services as the Guardian has a well-defined editorial code insisting on requirements such as specific identification of sources of information, while a clearly established editorial policy could not be found on the website of the Daily Guardian. The next element of a deception determination is the class of purchasers who access these services. In the absence of clear readership data, it is difficult to assess the class of purchasers. However, early statistics indicate that The Guardian targets an affluent, well-educated reader base (see here and here). While not directly in context of the Daily Guardian, a similar target audience was also envisaged by its parent entity, the Sunday Guardian. The degree of care spent on this type of material, by an educated, affluent class of users is arguably high, leading to a possible reduction in chances of confusion.
This is, however, where the final factor becomes pertinent which requires analysis of surrounding circumstances. Interestingly, several of the posts from the Daily Guardian have recently been shared by many politicians of a leading political party (for instance, see here, here, here, here, here, and here). This substantially increases the possibility of users being confused about the newspaper and deeming it to be associated with the Guardian given the possible assumption that a prominent party would share information from world-renowned news agencies as against a relatively obscure platform. These facts make it rather difficult to determine how a court might rule on the possibility of deception and it might depend on the nature of evidence produced. Notably, while it has been reported that the Guardian itself had to clarify that it is not associated with the ‘Daily Guardian’ based on the screenshots of a tweet, the screenshot indicates that it is a satire and I was also unable to find the tweet from the official handle of the agency upon a search so I have not factored that in my arguments.
The final element of a passing off suit is probably the toughest to be proved in the instant case, that of a likelihood of damage. It is difficult to argue that publication of articles on the Daily Guardian has a tangible impact on the immediate reputation of the ‘Guardian’. Admittedly, it might be stated that there might be certain individuals who being deceived in believing the ‘Daily Guardian’ to be associated with the ‘Guardian’ might perceive it as a reduction or a mere difference in its quality and editorial standards. This might even lose it some subscriber base. But it is still difficult to substantiate that any significant loss is suffered by the Guardian, either reputationally or monetarily.
An interesting argument to be considered is whether the subsequent users in such circumstances can claim acquiescence as a defence to a passing off claim. This implies a scenario where the rights holder, despite being aware of the subsequent use, ignores the same for a long period. As explained by the Supreme Court in Power Control Appliances v. Sumeet Machines Pvt. Ltd., “Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark, trade name etc. It implies positive acts; not merely silence or inaction such as is involved in laches.” In this case, while the newspaper has been in existence for at least a few months, if not around a year, there has been no objection yet by the Guardian regarding the name used by the same. At the same time, however, there has not been any ‘positive acts’ on the part of the Guardian either that might indicate acceptance of such use. Moreover, as the Daily Guardian is new, it can also not be stated that the silence has been for a delayed period, it rather is even within the limitation period as of now. Hence, it looks improbable for a plea of acquiescence to be sustained.
While it remains unclear whether a passing off action is a viable option in the circumstances discussed specifically in this post, it could be a particularly effective tool against deceptively set up misinformation platforms. Hence, it possibly makes it pertinent for news agencies to be more active and thorough with their market assessments so that unscrupulous portals could be weeded out in time. As a parting aside, it is interesting to note that a trademark registration application was filed in May 2020 for the registration of the mark ‘THE DAILY GUARDIAN’ on a ‘proposed to be used’ basis. This, however, has yet not been granted as it has been objected to in Examination Report dated June 27, 2020, on the ground that a similar mark already exists in Class 16, being the mark of the ‘GUARDIANS REAL ESTATE ADVISORY LLP’. The reply to the Examination Report has not been filed till date.