For those of you who are planning to catch Salman starrer
Dabangg this weekend, here’s a little info to make it spicy. As ToI
reports, Zandu Pharmaceuticals, makers of Zandu Balm have served a legal notice on Arbaaz Khan for copyright infringement of the product. Readers will recall that Dabangg features a song called
Munni badnam which uses the word
zandu balm.The ToI report suggests that Zandu Pharmaceuticals is claiming that it’s the sole copyright holder of “not only the product, but also the name Zandu Balm”and asked the producers to withdraw the song or delete the name of the product from it, failing which it might take action against them.
Surprisingly, no issue of trademark infringement was brought in since the legal notice says so. In certain strange and old cases of the past, copyright protection has been however granted to a string of words.
However, this seems to be a case of nominative use of trademark where the use of zandu balm does not suggest that it is from the movie Dabangg so as to amount to any endorsement.
Zandu’s lawyer Ashok M Saraogi sent legal notice to Arbaaz Khan, his partner and wife Malaika Arora (Munni in the movie), Shri Ashtavinayak Cinemas Ltd, and director Abhinav Kashyap.
The notice points out, “My clients are in the business of producing and marketing various ayurvedic and other medicines including a popular product known as Zandu balm, which is a very common word used by the people, since it is commonly used for pain and related complaints.” The notice adds, “In the song, the name Zandu balm has been used continuously at various places. By using the brand name in the song, you have not only violated the copyright of my clients, but you have also made an attempt to defame the reputation of my clients and the product manufactured by them.”
Very surprisingly, the objection comes in a stage when Dabangg has scored big at the box office and the music album is the highest selling currently. Reports have also suggested that the sales of Zandu Balm have actually shot up after the release of the movie. However, Zandu claims that they also launched a new ad-campaign around that time and thus the sales figure could be a consequence of that.
Recently, Lalit Pandit, who is the composer of the song Munni badnam credited the word Zandu to Madhur Bhandarkar of Fashion fame, who apparently uses the word in his everyday language.
Seems like this pain-reliever is going to be a pain in the neck for many!
Isn’t this an issue over unauthorized use of trademark?
Can single words or phrases have copyright in it? If not (which is the case in many jurisdictions) then then why is the blogger not mentioning that?
@Anirudh: I think so too. But as you can see from the post, the report mentioned it as a copyright infringement since that is what the legal notice states.
Till we get more info on this, I wouldn’t be able to tell you why did Zandu bring a case of copyright infringement and not TM infringement.
@ Anon : There are certain cases in which copyright protection has been granted to words and phrases. Even nonsensical words.
As per the newspaper report, Zandu’s legal notice has taken it up as copyright infringement issue and not TM issue. There are no leads regarding the notice. I tried to dig out some more info but I didn’t manage that.
I will try to clear this query as soon as possible. As you can see, this is a tidbit and not any analysis- I will clarify your doubts in a next post. Thanks.
@ Readers above:
“Zandu’s lawyer Ashok M Saraogi sent legal notice to Arbaaz Khan, his partner and wife Malaika Arora (Munni in the movie), Shri Ashtavinayak Cinemas Ltd, and director Abhinav Kashyap.
The notice points out, “My clients are in the business of producing and marketing various ayurvedic and other medicines including a popular product known as Zandu balm, which is a very common word used by the people, since it is commonly used for pain and related complaints.” The notice adds, “In the song, the name Zandu balm has been used continuously at various places. By using the brand name in the song, you have not only violated the copyright of my clients, but you have also made an attempt to defame the reputation of my clients and the product manufactured by them.” “
http://today24news.com/entertainment/emami-ltds-lawsuits-on-dabangg-for-using-zandu-balm-184486
This is a clear case of nominative (fair) use of the trademark in question. the mark has been used only to describe the product and not to pass off the song as emanating from the TM owner or to suggest an endorsement. Any attempt to quell such free speech raises serious constitutional law issues as well.
In any case, such nominative/descriptive use defences are internalised as defences within our TM Act. The judge should impose costs on the zandu guys for bringing such a frivolous suit!
My guess is that it is a publicity stunt to boost zandu sales. if so, they should certainly be hit with costs!
And as for whether two words (zandu balm) used to brand a product are susceptible to copyright protection, the less said, the better!
if the lawyers have actually raised a claim of copyright violation in their legal notice, they should be sued by their client for professional negligence! and the judge ought to impose costs on the lawyers’ personally 🙂
@Shamnad: Forgive me if I sound ignorant, but is it possible that the company has a copyright on the words of their ad jingle, which contains the name zandu balm and it is of that it is claiming violation?
Dear Anon:
As I understand, Emami (manufacturers of Zandu Balm) have claimed exclusive rights to “Zandu Balm” and objected to the use of these two words in the song. By themselves, these words, as you will appreciate cannot be subject to copyright protection.
What is this ad jingle you speak about?
In complete agreement with Shamnad, I would like to add that this case, I believe, falls under the purview of acquiescence and latches as the legal notice is issue quite after the movie has done well at the Box Office. The company should have asserted their rights, if any, before the release of the movie when the advertisements of the movie were on print and TV media.
Moreover, the use of Zandu Balm is not used to divert or hinder sales of the popular pain reliever.
I would also like to emphasize the below mentioned quote which may throw some light upon the case in hand as the name of the product and the use of the same in song pertains to entirely two different businesses.
“On the one hand, well-known mark owners say that people should not reap where they have not sown, that bad faith should be punished, that people who sidle up to their well-known marks are guilty of dishonest commercial practice.
These vituperations lead nowhere. One might as well say that the well-known mark owner is reaping where it has not sown when it stops a trader in a geographic or market field remote from the owner‘s fields from using the same
or a similar mark uncompetitively. (D. Vaver, ―Unconventional and Well-known Trade Marks‖, [2005] Sing. J.L.S. 1, at p. 16)”
Zandu Balm, Zandu Balm, Peedahari Balm…
sardi, sardard, peeda ko pal mein dur kare..
Zandu Balm..Zandu Balm.’
(Gives you relief from cold, headache and pain within moments). This simple melody and refrain is today part of the advertising firmament of India and went a long way in not just establishing the product’s properties but also the brand.
In a category where positioning platforms and communication have been transient, Zandu Balm has remained consistent in its communication. Where leading MNC brands offer unidimensional benefits, Zandu Balm has remained steadfast in offering an all-purpose pain relief solution.
The brand positioning ‘Peedahaari Balm’ is a property that has endured for nearly two decades. And like its positioning, the jingle, too, is an inseparable part of the brand.
Over the years, while the promise of quick relief from pain has remained constant the communication is today, more sharply focussed. So, while Zandu is still the ‘Peedahaari Balm’, it now offers the promise of ‘Ek balm, teen kaam’ (one balm, three effects) – each advertised separately.
and how precisely is this fabulous jingle connected with the legal issue in question here. Namely that of trademark infringement or copyright infringement?
Zandu may be well advised to hoard up loads of this balm…for such frivolous legal claims are certain to work up the most reasonable of judges….who may just decide to impose very painful costs….
I agree with Shamnad Basheer; the notice is wrongly issued for infringement of copyright as there cannot be exclusive claim of copyright in words two words “ZANDU BALM”. The notice should have been issued for infringement of trade mark since there are provisions for claiming infringement of the trade mark (i.e. ZANDU BALM) for use in advertisement (in form of songs) for promotion of movie DABANG.
The word ZANDU BALM may be used in descriptive form to convey an idea “of being pain reliever” in the song. Such use without the permission of Emami (manufacturers of Zandu Balm)will amount to an infringement u/s. 29(8) and 29(9). Such use is detrimental to the brand image and reputation. The consumers may start associating ZANDU BALM as medicinal cream having something to do with sex appeal. Adversely, the company may have to face consumer litigation for not meeting such false claim. The trade mark warrants the character and quality of the goods by making such false claims in any advertisement by any one without the consent of the original owner is certainly unauthorised act amounting to infringement.
Certainly, it is not copyright infringement of any lyrics or ad jingle.
it appears the notice is issued wrongly under copyright violations. There is copyright issue in this since there is no reproduction of the lyrics of the “ad line” nor there is any similarity in the musical composition of the song.
If the word ZANDU BALM is used by Shri Ashtavinayak Cinemas Ltd in song lyrics without the consent of registered proprietor i.e. Emami then it is violation of trade mark ZANDU BALM. The same song with unauthorised trade mark is being published for advertising the Movie (i.e. product) to provides entertainment service. Such advertisement and use of trade mark as words is prohibited under section 29(8) and 29(9) of Trade Mark Act 1999.
ZANDU BALM is well-known trade mark known for decades as “Peedahari Balm/ Pain Reliever”. Such unwarranted use is detrimental to the distinctive character and repute of the trade mark. Though the word ZANDU BALM is used to describe MUNNI as “Pain Reliever” in the song it is tarnishing and diluting the image of the brand / trade mark in the market. The trade mark warrants that the good sold are genuine with certain character and quality. Due to such misleading and false association of ZANDU BALM with MUNNI (the Pain Reliever) the character in the song, consumers may perceive the characteristics of the product for different purpose and may complain that it does not satisfy their purpose. Who is to blame? Is it the producer Movie maker. …
In my views; Emami should file suit for infringement of trade mark and claim relief of injunction and damages.
However use of few words in this notice like “Zandu balm, which is a very common word used by the people, since it is commonly used for pain and related complaints.” will effect Emami’s claim — as ZANDU BALM is not common to the trade…