Trademark

Trademark Protection amidst the Jolly LLB 2/Bata Controversy


 

The State v. Jolly LLB 2 (“Jolly LLB 2”) isn’t having an entrance as cheerful as one would expect from its title, as it seems to have found itself in the middle of several legal issues. While their run in with the censor board was recently resolved, I will be focusing on the question of trademark disparagement, infringement and dilution with regards to their spat with Bata.

Background

Although the Central Board of Film Certification (“CBFC”) had cleared Jolly LLB 2 for broadcast, the Bombay High Court ordered for the deletion of four scenes of the film. The Court held that the impugned scenes were “defamatory to the lawyers’ profession” and amounted to contempt of court.

In a separate issue, Bata protested the use of their brand name ‘Bata’ in the film. The subtitles of the dialogue “varna kya…Bata ka joota pehan kar, tuchhi si terricot ki shirt pehan kar, sala hum se zabaan lada rahe hain” in the trailer replaced ‘Bata’ with ‘cheap shoes. (Picture to the left).

Bata then issued a legal notice to the producers of the film, claiming that the trailer made an “objectional and derogatory remark about the brand. It was additionally claimed that the dialogue “intended to convey that the brand is adorned only by the lower strata of society”, and one should feel “humiliated” by wearing Bata footwear. Further, Akshay Kumar (the actor to whom this statement was made), responded by slapping the actor making the dialogue. This was seen to be a “deliberate attempt to tarnish the brand image of Bata”. The legal notice reportedly even claimed that this was perhaps done at the instance of Bata’s competitors, few of whose products are promoted by Akshay Kumar.

In an order dated January 24, 2017, the Delhi High Court recorded that both parties had agreed to remove references to ‘Bata’ from the film, but issued summons to determine the extent of damages. As per news reports, Bata is claiming damages worth INR 3 crores.

This however isn’t the end of their worries, as Bata had additionally filed a criminal complaint in the Court of the Additional Chief Metropolitan Magistrate of Saket South District, alleging defamation. On February 8, 2017, the Court held that there was a prima facie case of defamation to be made out from the facts of the case. Bata had argued that millions of people had already viewed the trailer, which contained the “defamatory dialogue” and had hurt the brand image of the company.

This isn’t the first time that film producers have faced trouble from trademark owners, and a notable example of the same is Yeh Jawaani Hai Deewani’s run in with Hamdard National Foundation for the in-film references of ‘Rooh Afza’ that was said to portray the beverage in bad light. Perhaps that instance can be differentiated from the present matter, as Sai notes – the remarks made in the movie were an expression of taste, and would not lead to a loss of reputation and goodwill.  There have been similar instances of allegations against movie producers for trademark dilution – read here and here.

Trademark Disparagement

Disparagement with regard to trademarks is essentially the dishonest use of a trademark in advertisements. Section 29(8) of the Trademark Act (“Act”) provides for an action of infringement to lie in case an advertisement: (a) takes unfair advantage of, and is contrary to honest practices in industrial and commercial matters; or (b) is detrimental to its distinctive character; or (c) is against the reputation of the mark. While the film cannot be said to constitute an ‘advertisement’, perhaps the principles elucidated in cases of commercial advertising and disparagement are relevant:

In Hindustan Unilever Limited v. Reckitt Benckiser India Limited, the Delhi High Court in 2014 granted an injunction to stop the telecast of an advertisement that disparaged Dettol’s reputation and brand name in a commercial for Lifebouy soap. The Court held that in order to determine whether a statement disparages or defames, the question must be considered from the viewpoint of the general public, and not with regard to a special class of people. Additionally, the advertisement is to be looked at as a viewer would ordinarily view it, and not specifically to catch ‘infringement’.

Colgate Palmolive Ltd. v. Hindustan Unilever Ltd. was a 2013 decision of the Delhi High Court inter alia  observed that the advertisement had to be viewed as a whole, and not anayzed like the provisions of a statute. The Court additionally recognised that the advertisement was to be seen from the viewpoint of an average reasonable person. Additionally, if there were multiple acceptable views of a single advertisement, all the reasonable views must be adjudged for disparagement.

Trademark Infringement

In order to constitute trademark infringement, the infringer should have used the mark in violation of the requisites in Section 29 of the Act. Not only should the use of the mark have been in the course of trade, the Act provides that the representation or use of the registered mark could take any form, including spoken words or visual representation.

Section 29(6) provides that the following constitute the ‘use’ of the mark:

  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.

In my opinion, the incidental use of ‘Bata’ in the trailer would not satisfy the above criteria, even though it is ’representation by spoken word’.

Trademark Dilution/Tarnishment

Trademark dilution is said to encompass two types of trademark protection – blurring and tarnishment. While blurring is the use of the mark by a third party that diminishes the ability of the mark to uniquely identify its owner’s goods and services, tarnishment erodes the positive characteristics that the public associates with the mark. As was held in Hormel Foods Corp. v. Jim Henson Prods., the sine qua non of tarnishment is a finding that the Plaintiffs mark will suffer negative associations through the Defendant’s use.

While the Act does not specifically refer to dilution or tarnishment as a form of infringement, Section 29(4) envisages the use of the mark that inter alia is detrimental to its repute. However, for Bata to claim damages under this section, they would still have to satisfy the requisites of ‘use’ of the mark as mentioned above.

Nominative Fair Use

This doctrine evolved in News Kids on the Block v. News America Publishing and provides that the incidental use of a mark, merely as a reference would not qualify as trademark infringement. Three conditions are to be satisfied in order to constitute nominative fair use are as follows: the product must be one not readily identifiable without the use of the trademark, only so much of the mark may be used as to reasonably identify the product, and the user must do nothing that would suggest sponsorship or endorsement by the trademark holder. The Delhi High Court, in the 2011 case of Tata Sons Limited v. Greenpeace International held that Greenpeace’s online ‘Turtle v. TATA’ game did not infringe Tata’s trademark, as the use was purely nominative in character.

While this doctrine might be relevant in the context of the use of Bata’s name in the trailer, the defamation charges need to be looked at independent of the defences under trademark law.

Conclusion

Since it will be difficult to seek protection under Section 29 of the Act due to the ‘use’ of the mark, perhaps defamation is a more viable option for Bata to pursue – as they are currently doing. There is also a pending case at the Supreme Court to determine whether corporations have the right to initiate criminal defamation proceedings. Any orders passed in this suit filed by Greenpeace India against Essar Power MP Ltd. would be relevant for the present case as well.

Both suits – one pending at the Delhi High Court, and one in the Saket District Court are yet to be concluded. We will keep you updated with any developments in the matter!

Image from here.

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Inika Charles

Inika is a fifth year student at National Law University, Jodhpur, and is on the founding Board of Editors of the Journal of Intellectual Property Studies. She has a strong interest in Intellectual Property, and is fascinated with the intersection of IP with Technology and Media law. You can contact her at [email protected], or on Twitter: @inikacharles

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