Readers may recall that we had blogged about the Delhi High Court’s grant of an interim injunction to Seven Towns last year in a passing off action founded upon the use of the trade dress of the Rubik’s Cube puzzle by the defendant in that case.
In an interesting turn of events, the Rubik’s Cube found itself embroiled in another legal controversy recently, resulting in the grant of an interim injunction against its use as the title of a feature film by Justice Gautam Patel of the Bombay High Court.
This suit was instituted by Rubiks Brand, which has the exclusive right to market and distribute the Rubik’s cube. In their plaint, the plaintiffs set forth, to use Justice Patel’s expression, ‘copious detail’ as to how they have exclusive rights over the use of the Rubik’s cube and have obtained trademark registration for the same in multiple jurisdictions.
Defendant no. 1, Mahesh Vamen Manjrekar, decided to name his Marathi feature film ‘Rubik’s Cube’. Consequently, the plaintiffs filed a suit for passing off to restrain the defendants from using this title.
Characterizing this case as an open-and-shut case of passing off, the court noted in the very first paragraph that defendant no. 1 has to be disabused of the notion that it can misappropriate a term that has acquired legendary status without facing any legal consequences.
Noting that intention of the defendant is immaterial in a case of passing off, the court reiterated the well settled principle that a case of passing off has to be decided in accordance with the classic trinity articulated by the House of Lords in the case of Reckitt and Colman versus Bordan: (1) acquisition of goodwill and reputation by the plaintiff; (2) misrepresentation by the defendant, whether intentional or not; and (3) consequent causation of damage to the plaintiff or existence of likelihood of such damage.
Applying the three factors to the case at hand, the court held that there was no plausible way in which the defendants could argue that the plaintiffs had not acquired goodwill and reputation over the Rubik’s Cube, given its unparalleled popularity.
Holding that a critical mass of the viewing public was likely to form a connection between the plaintiffs’ puzzle and the defendants’ film, the court arrived at the conclusion that the plaintiffs had successfully established that the conduct of the defendants amounted to misrepresentation. Finally, the court recognized that the conclusion that the plaintiffs had suffered damage because of the defendants’ conduct was a natural corollary of the aforementioned findings. It buttressed its conclusion by adverting to the fact that the defendants had used 4 of the 6 colours present in the puzzle in their promotional posters and had extensively publicized their feature film which contained the name of the plaintiffs’ puzzle.
Since the plaintiffs had established a strong prima facie case and would suffer incalculable harm if an injunction were not granted, the court restrained the defendants from using the Rubik’s Cube in any shape or form in addition to injuncting the release of their film.
This order largely applies well settled legal principles to the fact situation obtaining in this case and can be said to be unexceptionable. While some may argue that courts should not grant their imprimatur to the monopolization of terms that are a key part of popular culture and that such use would fall within the four squares of the nominative fair use doctrine, I don’t think this argument would hold good unless the use of such terms is indispensable to the defendant’s enterprise.
More specifically, as Inika has noted, a defendant can successfully raise the nominative fair use defence only if it is able to establish that: (1) its product cannot be readily identified without the use of the plaintiff’s mark; (2) it has used the mark only to the extent that it helps in the identification of its product; and (3) its use does not, in any way, suggest the endorsement/sponsorship of its product by the plaintiff.
Since nothing in the order indicates that the defendants’ film was about the Rubik’s Cube, I don’t think it can be argued that they were compelled to use the term ‘Rubik’s Cube’ as the title of their film.
Further, since no time limit is statutorily prescribed within which actions for passing off can be instituted by plaintiffs after the formulation/acquisition of the mark, it also cannot be argued that the term was in the public domain and hence could have been freely used by the defendants.
Therefore, in conclusion, this order appears to rest on firm legal moorings and marks yet another victory for plaintiffs seeking to injunct the unauthorized use of the name and get-up of this popular puzzle.
Image from here