Protection over common expressions

Lai BhaariRecently, the Bombay High Court came out with a brief and well-reasoned judgment on the issue of IPR protection for common expressions. The subject matter in dispute, in this case of Techlegal Solutions v. Genelia Ritesh Deshmukh & 7 Ors, is with respect to the Marathi phrase ‘Lai Bhaari’ which is not only the title of the new Ritesh Deshmukh starrer (which incidentally, appears to have  opened to more or less good reviews) but also a major part of the domain name of a Marathi social networking site launched by the plaintiffs, namely,

The plaintiffs essentially claimed a complete monopoly over the expression ‘lai bhaari’ on account of their having obtained a trademark registration for the same as well as owing to their popularity as a social media website. Justice Patel noted rightly that the trademark registration was for the phrase ‘’ in the Devangari script for the narrow range of services stipulated in Class 38. Justice Patel clearly states that obtaining registration for ‘lai bhaari’ and ‘’ are two very different things and even noted that when the plaintiffs had attempted to obtain registration for the phrase ‘lai bhaari’, they had encountered opposition from the Registry. On the second aspect, the Court pointed out that there was in fact no evidence on the record to substantiate the plaintiff’s “self proclaimed popularity“. There has been no evidence of any independent audit of usage, traffic, page use or any other metrics used to  gauge the success of any web page. The evidence that was in fact submitted was that of Wikipedia entries, which were inherently unreliable owing to Wikipedia’s service model, as the Court rightly noted. The Court distinguished the case of Mahendra and Mahendra Paper Mills v. Mahindra and Mahindra, which was a case of passing off on the ground that while the respondents in that case, Mahindra and Mahindra had “over a considerable period of time acquired proprietary rights in common law over its corporate name“, there were no facts to suggest the same for the plaintiffs in the instant case.

Moreover, the defendants in the instant case were not using the phrase ‘laibhaari’ to promote a rival website or service but as a title of a Marathi motion picture. This observation of the Court gains importance when viewed from the perspective of the purpose of a trademark. The primary purpose of trademark is to ensure that competitors do not tap into the goodwill of a product by using its name and thereby draw undue advantage from the consumers’ confusion. In the instant case, there was no possibility of the consumers’ getting confused between the Marathi social networking site and a motion picture, especially considering the commonness of the expression in the Marathi language.

This very factor of the commonness of the expression in question, was a major contributor towards tilting the balance in favour of the defendants. The Court noted that if the protection of IPR was extended to give persons proprietary rights over common expressions/ phrases across products and services, this would in effect result in choking the entirety of a language. The Court in a very interesting and well-reasoned paragraph notes as follows: “ Every title of every work of literature, theater or cinema, every piece of dialogue in a film would, conceivably, be hit with claims of trade mark (or copyright) infringement. What Mr. Dewani’s [counsel for the plaintiff] submissions postulate, in the context of this claim, is the beginning of the end [emphasis added]: a form of censorship and the gagging of speech and expression. If this claim is allowed, there is absolutely no limit to what will then be prohibited. Every language occupies its own universe. Each has its integrity, its special grace, power, style, cadences, variations, dialects and patois. The language of our state is no exception. It is part of our culture and our tradition. Trademark infringement claims cannot be allowed to still the tongue of an entire populace, even in the slightest. One of the tests postulated in assessing such claims is to balance the private and personal rights claimed against a larger public interest. On this test, too, the Plaintiff must fail.

Moreover, the fact that the plaintiff had not objected when other entities had used the same phrase as titles of music CD’s, names of reality shows and restaurants in Pune and Kohlapur indicated that the Plaintiff did not in fact want to claim a monopoly and injunct all use of this particular phrase. The Plaintiff then claimed that it would now move against all these other uses to which Justice Patel remarks that “that particular horse has long since bolted.”  Therefore, the Court refused to grant an injunction to the plaintiff on the ground that the requirement of prima facie case was not satisfied here.

Thus, this case states the proposition that the mandate of intellectual property rights should not be unnecessarily extended to cover all uses of common expressions. This can be particularly seen as the Court distinguished this case from that Satyam Infoway v. Sifynet Solutions, where protection was given over a domain name as the term in question was ‘Sify’, an artificially coined word and not an expression commonly in use by a large populace.

Therefore, the Court reaches this conclusion not only by examining the utilitarian justifications of intellectual property rights but also by attempting a balance against the private rights claimed between two parties against a larger public interest. This, according to the author is the correct way of interpreting intellectual property rights especially considering the immense ramifications involved in granting proprietary rights under an IPR regime.

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