Warning : Long Post
Readers will remember that we have been following the TATA v. Turtle story. We now present to you a review of the recent judgment of the Delhi High Court (IA 9089/2010 in CS(OS) 1407/2010). The major issues raised before the Court pertained to defamation by Greenpeace against TATA and the trademark infringement. For the sake of brevity, I will focus on the observations made by Justice Bhat with regards to the trademark infringement issue.
Before Hon’ble Justice Bhat, TATA claimed the proprietorship of the TATA trademark due to prior adoption,long continuous and extensive use and advertising and the consequent reputation accruing to it. TATA has also registered several TATA formative trademarks in relation to various goods across various classes as per the Trademarks Rules, 2002 and thus has the exclusive right to use the trademark in relation to the goods covered. TATA contended that it was also the proprietor of the TATA logo “T within the circle” device as well as the copyright owner of the various pictorial representations of the “T within the circle” device. The long association with this trademark has resulted in the status of a “well-known” trademark.
TATA then contended that regarding Dhamra Port, the bone of the contention, Greenpeace India raised false concerns regarding the nesting of the Olive Ridley turtles based on frivolous and misleading facts. In furtherance of this campaign, Greenpeace even devised a computer game titled “Turtle v. TATA” and unauthorizedly made use of the trademark TATA and the logo “T within a circle”.This has also resulted in maligning the reputation of the plaintiff since“The aim of the colorful and noisy video game is to help the yellow turtles eat as many little white dots as possible without running into Ratty (presumably referring to Ratan Tata, chairman of the Tata Group), Matty, Natty or Tinku…”
The prayer of the plaintiff before the Hon’ble judge was to seek ad interim injunction against the defendant to prevent any further harm. TATA’s repeatedly contended that Greenpeace had intentionally and deliberately singled out TATAs for the defamatory remarks and had now gone to the extent of launching a game and misusing their trademark and logos. The plaintiffs contended that Greenpeace could have resorted to other means of expressing discontent with the proposed project.Furthermore, the use of internet as a medium to express its discontent resulted in greater and lasting damage. Finally, the plaintiffs contended that the use of “T within a circle” device even though not used in the course of trade would still amount to trademark infringement as per section 29(4) of the Trademarks Act.Plaintiffs contended that use is not confined merely to the defendant engaging itself in a trade or commercial activity but even other forms of speech representation which results in tarnishing the plaintiffs mark.
Greenpeace, on the other hand, contended that in order to raise concern about various environmental issues, it undertakes participatory campaigning and the pac-man inspired video game was launched with the objective of garnering public support. It also contended that the concerns raised regarding the threat posed to the Olive Ridley turtles was genuine and that the plaintiffs had suppressed the fact that the project had not obtained all relevant clearances from the concerned ministries.Interestingly, Greenpeace argued that the suit filed was for defamation and not for trademark infringement and that TATA had no locus standi to file a suit for the defamation of the Dhamra Port Company Ltd.
With regards to the issue of trademark infringement, Greenpeace contended that the use of “T” device didn’t amount to any infringement as a bare perusal of section 29(4) of the TM Act shows that it envisages the use of a registered trademark for the purpose of fair comment and criticism and that such use does not amount to an infringement. Moreover, the use of the trademark was not in due course of trade and instead was nominative in nature. The objective of the game is to garner public support and attention for the potential environmental dangers posed by the proposed project.
Greenpeace further submitted that the use of the word “demon” in the context of the game was to merely drive home the point that development through the project poses a serious threat to the survival of the Olive Ridley turtles. The juxtaposition of the word demon with the name of TATA should be seen in the context of fair comment and criticism. The use of internet was with the objective of garnering larger public interest and support and that there was no malice on the part of Greenpeace.
Observations of the Court:
Justice Bhat opined that the use of “T within circle” device of TATA by Greenpeace was merely denominative in nature. Here the intention of the user was to use the mark of the registered trademark owners to draw the focus to some other activity of the owners of the trademark. He also opined that use of a trademark as an object of critical comment or even attack does not result in an infringement. In such cases, the defendants gets the benefit of “due cause” under Section 29(4) TM Act. In reaching this conclusion, Justice Bhat relied on several foreign precedents which are noteworthy.
Firstly, relying on Boehringer v. VetPlus Ltd. EWCA Civ 583, Justice Bhat held that an interim injunction could be only awarded in such cases where the plaintiff was absolutely certain that at a full trial his claim for a permanent injunction against the defendant for having used plaintiff’s logo in bad light would be successful. Unless that could be proved, the defendant is free to indulge in such comparative advertising in his own commercial interest and the interest of the public.
Secondly, the Court also agreed with the submission of the defendants who stated that the use of the trademark was parodic. Placing reliance on Laugh it Off Promotions v. Freedom of Expression Institute  ZAC 7, a SA Constitutional Court decision, Justice Bhat observed that while examining a claim of trademark infringement, the parodic effect of the trademark cannot be decontextualized. Further, in such claims there needs to be a balancing of rights of free speech v. property protection objectives of trademark law. Such matters would require a context-specific and character-specific analysis as opposed to the application of any rule laid down in black and white.
The other relevant factor in this regard would be the medium used. The South African decision made an interesting observation regarding the fact that the message could be conveyed by other means other than the use of a parody and held this to be an insignificant and indecisive factor (TATA also had a similar allegation against Greenpeace). Otherwise, there would be no scope for trademark parody at all because the message could always be conveyed through other means.
The Delhi High Court also placed reliance on Esso Francaise v. Association Greenpeace France 2003 ETMR 66, where Greenpeace had been sued for the use of plaintiff’s trademark as E$$0 on its website.The European Court had rejected the claim, holding that the use of ESSO and E$$O on the website in the context of criticising the environmental policies of ESSO was a denominative use of the mark and did not amount to an infringement.
The Court also did not agree with the submissions made by TATA with regards to the claims of defamation and declined to grant an injunction against Greenpeace stating that doing so would freeze the entire public debate on the effect of the project on the Olive Ridley turtles which would serve no public interest.
PS Image from here.