Movie makers threatened for trademark dilution, Karan Johar’s movie temporarily restrained


Image from here
Times of India yesterday carried a news report of an order passed by the Delhi High Court restraining home video release of producer Karan Johar’s latest movie, ‘Yeh Jawaani Hai Deewani’. The suit was filed by Hamdard National Foundation over certain ‘objectionable’ references to ‘Rooh Afza’, a traditional Unani squash made of fruits, vegetables and herb. Hamdard National Foundation, a fully funded charitable organization of Hamdard (Wakf) Laboratories which manufactures the Unani beverage, holds registration for the word mark ‘ROOHAFZA’ (No. 266280) for syrups included in Class 32. Hamdard claimed that their product is a household name and that “the dialogues in the movie… definitely damage the goodwill and reputation of the plaintiffs and is an actionable wrong in common law as well as statute.” Justice Manmohan Singh while passing the order clarified that the injunction will not affect theatre exhibition of movie, as per a report on Firstpost. The matter has been posted for July 16, 2013. 
To the best of my recollection, the beverage is referred only twice in the movie. In both instances, actor Ranbir Kapoor’s step mother offers him Rooh Afza in a plain glass (without any labeling). The actor after taking a sip says that it’s not good (and that’s it!). The dialogue is a mere expression of taste and a claim of loss of reputation and goodwill is a huge stretch. And surely, Hamdard is not the only manufacturer of the drink and claims of any association with plaintiff or its product in the movie is unfounded. 
Times of India today reported another instance of ludicrous threat of trademark infringement against a movie producer. A well-known biscuit manufacturer issued a legal notice to Vikram Bhatt for showing their product in poor light in a trailer of their soon to be released movie, ‘Ankur Arora Murder Case’. The trailer is available here (0:55). The biscuit manufacturer claimed 1 crore rupees as damages and an unconditional apology for loss of reputation and unauthorized visual representation of their mark. Bhatt’s ASA Production stated that allegation of tarnishment made by the manufacturer was ill-founded and denied all charges of infringement. The trailer shows a biscuit packet on a table next to a kid lying on a hospital bed admitted for treatment for appendicitis. The doctor neglecting the standard procedure conducts the surgery on empty stomach of the patient and in the course the kid dies for allegedly consuming biscuits before the surgery. There is nothing in the trailer which links the cause of death to biscuits let alone its manufacturer. Nonetheless, the production house agreed to blur the wrapper to avoid unnecessary trouble. 
Last year too, UK based Murphy Radio sued UTV over its production, Barfi, for depicting their mark ‘Murphy’ in poor light. In 2010, Zandu Balm sued makers of Dabangg for use of their trade name in a hit song without their permission. The parties eventually settled out of court. (Do drop a comment if you know of other similar claims of trademark dilution against filmmakers.)
Where is the ‘use’ of the mark? 
Though the actual claims of alleged by Hamdard or the biscuit manufacturer is unclear, I presume it is either trademark infringement or defamation or both. To constitute trademark infringement, the infringer should have used the registered mark in the manner specified in Section 29 of the Trade Marks Act, 1999. The representation or use of the registered mark could take any form, including spoken words or visual representation of the mark [Section 29(9)]. Furthermore, the use of the mark by the alleged infringer should be in the ‘course of trade’. Section 29(6) gives an indicative list of circumstances of deemed use of mark; namely: 
  1. affixing of the registered mark on goods or packaging;
  2. offer to sale or stock goods under the registered mark or offer or supply services under the registered mark;
  3. imports or exports goods under the registered mark; 
  4. use the registered trade mark on business papers or in advertising.
These circumstances suggest an ‘active’ use of the trademark in conducting business operations. In other words, the use of the mark has an effect on result, i.e. consumption of the infringing product. The reference to trademarks in both these movies is inconsequential and at best coincidental to the narrative. Such coincidental reference to trade name does not constitute use of the mark ‘in the course of trade’, in my opinion. Defamation would be more appropriate. 
Tarnishment or bullying?
Dilution by ‘tarnishment’ is a well-recognized concept in trademark law. As the name suggests, ‘tarishment’ occurs when a mark is portrayed in a poor light which results in lowering the commercial value or reputation of products or services in public eye. To illustrate, the US District Court of New York in 2009 found the image of two models posing to ride on missile prototype, titled ‘Viagra’, was found to be tarnishing Pfizer Inc.’s reputation. Unlike the US and few others which have separate statutes which define and regulate dilution claims, Section 29 is the only substantive provision in India. Courts in India too have hardly dealt with the issue to give any guidance in deciding claims on tarnishment. 
Claim on dilution rely on Section 29(4)(c). As per the provision, the use of similar or identical mark for dissimilar goods or services can be said to be infringing if the following is satisfied: 
  1. the registered mark has reputation in India; 
  2. the use of the mark is without due cause; and
  3. use of the mark results in unfair advantage to the infringer or detrimental to the distinctive character or reputation of the registered mark.
Again, there is limited guidance on scope of ‘due cause’ in Section 29(4)(c). Nonetheless, one has to examine the ‘due cause’ with respect to use of the mark in ‘the course of trade’. Be that as it maybe, what is definitive though is the chilling effect on free expression of filmmaker because of such frivolous dilution claims.  However, Article 19(1)(a) of the Indian Constitution guarantees a wider right of free speech and expression. Any expression will be protected as long as it falls outside any of the reasonable restrictions mentioned in Art. 19(2). Tata Sons Ltd. v. Greenpeace International (2011) is a rare instance where the defense of free speech was raised against trademark infringement. The Delhi High Court refused to grant an injunction against Pac-Man style ‘Turtle v. Tata’ game created by Greenpeace India to raise awareness on environmental hazards caused by construction of certain port by Tata Steel. The court allowed parody on Tata’s trademark. A categorical pronouncement recognizing free speech as a defense for trademark infringement India is long overdue in India. 
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6 comments.

  1. Avataranushree rauta

    HT Media had filed a suit against Sony Entertainment, Balaji, etc with respect to a particular episode of the serial “Bade Acche Lagte Hai” wherein a particular scene suggested that the newspaper published false and defamatory news.
    The order can be accessed on the following link:
    http://www.indiankanoon.org/doc/178971609/

    Also Bata India Ltd had filed a suit against AM Turaz, Prakash Jha & Ors with respect to use of their trademark “Bata” in the song “Mehangai” of the film Chakravyuh.

    Reply
  2. Avataranushree rauta

    The injunction has been passed restraining the defendants from releasing the home video version of the film Yeh Jawaani Hain Deewani containing the objectionable content, which according to the judge can be removed by editing the film.
    Justice Manmohan Singh while holding that a prima facie case is made out by the plaintiffs for infringement of trade mark and also of passing off which may injure the reputation of the plaintiffs before the public, observed that infringement of trade mark can be caused by spoken words and visual depiction of the same in the form of presentation in the movie.

    Reply
  3. AvatarSai Vinod

    Thanks a lot Anushree,

    Interesting, the Judge talks about dilution by tarnishment but doesn’t refer to Sec. 29(4)at all.

    He merely concludes the spoken words in the movie as ‘use’ of the mark as per Sec. 29(9). The question on whether the use of the mark is in the ‘course of trade’ or without any ‘due cause’ hasn’t been addressed at all.

    Reply
  4. Avataranushree rauta

    You are absolutely right. There is no observation on the use of the mark being in the course of trade. However Mr. Anand appears to have taken the argument of commercial disparagement as Ranbir Kapoor endorses Pepsi which is a competitive product.
    Justice Singh has further gone to distinguish this case from the Chakravyuh case which was on rhetoric hyperbole. Maybe in the instant case a disclaimer scroll would have acted to the detriment of the Plaintiff and would not have served the purpose.
    It is however surprising that the producers/ right holders have not yet gone in appeal. It’s a good case on law. One possible reason could be that the editing would merely require beeping the word Rooh Afza.

    Reply
  5. AvatarAnonymous

    “Such coincidental reference to trade name does not constitute use of the mark ‘in the course of trade’, in my opinion. Defamation would be more appropriate”.

    You are right, but then when presented with options to open fire on multiple fronts, Trademark dilution/tarnishment also gets called in to the party !

    So frivolous trademark threats are not uncommon. An example: A Trademark C&D notice catalogued by the Chilling Effects Database

    Penalties should be applicable to frivolous use of Trademark claims against free speech, for its use as a form of SLAPP. Again, the Tata vs Greenpeace case you have cited is an example of that happening.

    Reply

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