THE HONOURABLE MR.JUSTICE C.V.KARTHIKEYAN C.S.No.73 of 2010 Godrej Sara Lee Ltd. Rep.by its Senior Officer Administration Mr.A.s.Ramanujam ... Plaintiff .v.
1. AVM Production Pvt.Ltd., No.38, Arcot Road, Vadapalani, Chennai-600 026.
2. Sun Network Limited, Sun Pictures, (A Division of Sun Network Limited) No.4, Norton Road, Mandaveli,Chennai-28. ... Defendants PRAYER : The Civil Suit filed Under Order VII Rule 1 of Civil Procedure Code read with Order V rule 1 O.S.Rules and Sections 134 and 135 of the Trade Marks Act, 1999, for
a) A Permanent Injunction restraining the Defendants its servants, agents, distributors, dealers and anybody associated with the Defendants from exhibiting, publishing, screening etc. of the movie 'Vettaikaran' with the scenes disparaging Plaintiffs registered trademark “Hit” by featuring a deceptively similar trademark 'TIT in theaters, VCD's, cable television or in any other formats, and for costs.
For Plaintiff : Mr.A.K.Balaji for Mr.P.Ramesh For D-1 : Mrs. Sneha for for Mr.A.Paraneedharan For D-2 : Mr.B.K.Girish Neelakantan
J U D G M E N T
The suit has been filed for a Permanent Injunction restraining the defendants or any one associated with them from exhibiting, publishing or screening of the movie “Vettaikaran” with the scenes disparaging Plaintiffs registered trademark “Hit” by featuring a deceptively similar trademark “TIT” in theaters, VCD's, cable television or in any other formats.
2. The plaintiff is a Company registered under the Companies Act 1956 and it is a joint venture between Godrej Group India and Sara Lee Corporation, USA.
3. The 1st defendant is a Company registered under the Companies Act 1956, and is a producer of cinematographic films.
4. The 2nd defendant is a division of Sun Network Limited, a Company registered under the Companies Act 1956, and is also a producer and distributor of cinematographic films.
5. The plaintiff is the manufacturer of a mosquito/cockroach repellent with the Trade Mark “HIT. It has been stated that this product has acquired an unique reputation and exclusive goodwill throughout India. It has been accepted by the general public. It has identified with the plaintiff. In the plaint, the plaintiff has given the details of Trade mark Registration as follows:
6. The plaintiff has given the sales of the product “HIT” for the last 8 years before institution of the suit in the plaint which is as follows:
7. The plaintiff has also spent money for advertisement and sales promotion, the details had been given in the plaint which is as follows:
It has been therefore stated that the plaintiff has a substantial goodwill for the product “HIT”. It is also stated that the design for their container has also been registered under the Designs Act 2000.
8. The 1st defendant had produced and released a movie called “Vettaikaren” on 18.12.2009, and assigned the rights to the 2nd defendant.
9. The plaintiff stated that they have received several phone calls stating that their product “HIT” has been shown in a disparaging manner in the said movie “Vettaikaren”. The officers of the plaint Company watched the movie and found that the product “HIT” has been disparagingly exhibited. It had been stated that in one particular scene in the movie, the defendants use a similar mark “TIT” with similar design, shape and colour of the plaintiff's product, and in the scene, the Villain was given a knife to take away the life of a Police Inspector, but the Villain refused to use the knife and instead caused one of his men to get a similar product “TIT” from a shop called 'Tulsi Poochikoli Marunthu Kadai (in tamil)'. This product “TIT” is sprayed by the Villan in the eyes of the Police Inspector and he gave the following dialogue “You have stated in a TV interview that “you cannot tolerate injustice, hereafter you will not see the injustice, you cannot see injustice and you need not see injustice. (In Tamil the same dialogue “unnala aniyathai ellam pathukettu summa irukka mudiyadunnu TV batela sonna, inimay nee aniyathai pakkamata, aniyathai pakka mudiyadu, aniyathai pakka vendam”.
It has been stated that the above dialogue and depiction of the plaintiff product had affected the goodwill of the plaintiff and as harmed its business. It has been stated the scene was highly defamatory and slanderous.
10. The plaintiff further stated that the scene shows that if the public sprayed the product “HIT” in the eyes it would damaged eye sight. It had been stated that this would send a wrong message that the product “HIT” would cause damage to human beings and therefore, the sales will drop. The plaintiff's stated that the product “HIT” had been registered under the Insecticides Act and the Central Insecticides Board (CIB) had also issued registration certificate. It had been further stated that the Indian Institute of Toxicology has confirmed the standards and safety of the product “HIT”. The World Health Organization (WHO) had also confirmed the use of household insecticide products like “HIT”. It had been stated that the act of the defendants had caused mental agony to the officers of the plaintiff and had passed a wrong message to the public. In such circumstances, this suit had been filed seeking permanent Injunction.
11. The first defendant did not their written statement. However, learned counsel for the 1st defendant argued the case of the 1st defendant.
12. In the written statement of 2nd defendant, it had been stated that the relief sought for in the plaint under Section 134 and 135 of the Trade Mark Act 1999, are not applicable to the facts pleaded in the plaint. It had been stated that the claim that there are disparaging scenes in the movie “Vettaikaren” with regard to the plaintiff's registered Trade Mark “HIT” is unfounded. It has been stated that there was no deception or disparagement in the scenes. It had been further stated that the film was released after obtaining certificate from appropriate authorities. The 2nd defendant specifically stated that there was no motive on the part of the defendants to tarnish the image of the plaintiff. There was no infringement under the meaning of Section 29 of the Trade Mark Act 1999. The 2nd defendant specifically stated that the allegations regarding the scene and dialogues are imaginations by the plaintiff. There was no malicious intent in the use of the product “TIT”. It had been stated that the plaintiff has themselves mentioned about incorrect use and consequently the plaintiff cannot seek any order from this Court. The allegations in the plaint have been denied. It had been specifically stated that more than 200 prints of the movie “Vettaikaran” had been taken and released all over India in theaters and in VCDs and DVDs. Consequently, it had been stated that the plaintiff is not entitled to grant of any interim injunction.
13. On perusal of the pleadings and other materials, the following issues had been framed for consideration:
1. Whether the plaintiff's product 'HIT' has been imitated its getup, design, shape and colour by the defendants in their film “Veittaikaran”?
2. Whether the plaintiff's product 'HIT' has been shown in a disparaging manner by the defendants in their film “Vettaikaran”?
3. Whether the plaintiff's trademark “HIT” has been infringed by the defendants?
4. Whether the suit is maintainable in law?
5. Whether there is cause of action in filing the suit?
6. Whether the product “HIT” used in the film is different in set up, design, shape and colour from that of the product of the plaintiff “HIT”?
7. Whether there is malafidenss in using the product “HIT” in defendant's film?
8. Whether the relief sought for by the plaintiff could be granted in view of the appropriate authorities issuing certificate for screening of the said film?
9. Whether the using of “HIT” is deceptive or disparaging in the scene of the movie?
10. to what relief the plaintiff is entitled to?
14. The plaintiff had examined one Ramajujam as PW-1. He was a Senior Officer and Executive Officer of the Plaintiff Company. The Board resolution authorising him to give evidence was marked as Ex.P-1. The samples of the containers of the product “HIT” were produced as M.O.1 & M.O.2. The registered certificate of the Trade Mark of the plaintiff's product with the name “HIT” had been marked as Exs.P-2,3,4, and Exs.P-6,7,8 & 9. The renewal of the registration certificate had been marked as Ex.P-5. The plaintiff had also filed as Ex.P-12, the certificate issued by the Central Insecticide Board, as Ex.P-13, a copy of report issued by Indian Institute of Technology and as Ex.P-14- a copy of Literature published by World Health Organisation. The plaintiff further filed as Ex.P-15, a copy of sales invoice dated 21.01.2010, to show that the product is sold in India. During his chief examination, the witness for the plaintiff stated that the design of the product of the container “HIT” has been registered under the Designs Act, the name “HIT” has been registered under the Trade Mark Act and the actual content had been certified by the Central Institute of Insecticide and also accepted by the Indian Institute of Technology and World Health Organisation.
15. The witness further stated that the plaintiff Company had spent several crores for advertisement expenses. The witness further stated about the scene in which the villain character: “ The scene is depicted in such a way that the villain was first offered a knife to take away the life of the police inspector but the villain refuses to use the knife instead directs one of his crew member to get the deceptively similar product “TIT” from a chemist shop named as 'Tulsi Chemist Shop/Tulsi Poochikoli Marunthu Kadai 9in tamil)'. The similar product “TIT” is sprayed by the villain in the police inspector's eye and inspector becomes blind. While spraying the deceptively similar product “TIT” the villain delivers the following dialogue “You have stated in a TV interview that “you can tolerate injustice, hereafter you will not see the injustice, you cannot see injustice and you need not see injustice. (In Tamil the same dialogue “unnala aniyathai ellam pathukettu summa irukka mudiyadunnu TV batela sonna, inimay nee aniyathai pakkamata, aniyathai pakka mudiyadu, aniyathai pakka vendam”.
16. It had been stated that in the movie, when the villan sprayed the similar product “TIT” on the eye of the Police Inspector, he became blind in both the eyes. The witness further stated that the design shape and colour of the product was the same. The only difference was the use of the letter “T” instead of “H”.
17. During subsequent examination, the witness also marked as Ex.P-16 which is the original of the Ex.P-1, Ex.P-17 which is the original of Ex.P-2, Ex.P-18 which is the original of Ex.P-6, Ex.-19 which is the original of Ex.P-10 and Ex.P-20 which is the original of Ex.P-11.
18. The defendants examined as DW-1, Jothibasu who was the authorised signatory of the 2nd defendant Company. The authorisation letter was marked as Ex.D-1. He also filed as Ex.D-2, the photo image of “TIT” in the movie “Vettaikatan” as Ex.D-3,Video clipping of the movie, and Ex.D-4 which is the certificate given by the Central Board of Film Certificate. He also filed proof of affidavit reiterating the suit of the plaintiff must be dismissed.
ISSUE NO.1 & 6 :-
19. The plaintiff is a Joint Venture Company registered under the Companies Act 1956. Among many products manufactured by the plaintiff Company, the product involved in this suit is the product commonly used in several households as repellant against mosquitoes and cockroach in the name “HIT”. M.O.1 and M.O.2 are the containers containing the product “HIT”. They are cylindrical in shape. One is red in colour. The other one is black in colour. This is a commonly used product. This design according to the plaintiff has been registered under the Designs Act 2000, with design Registration No.187624 dated 24.12.2001 and Registration No.204731 dt.20.06.2006 for “container for aerosol” . The registration certificate for the said container had been marked as Ex.P-10 and Ex.P-11. Ex.P- 10 and Ex.P-11 have been issued by the patent office. They have both been issued in favour of the plaintiff Company. Ex.P-10 is for Registration No.187624 dated 24.12.2001, and Ex.P11 is for Registration No.204731 dated 20.06.2006. The plaintiff also filed the originals of Ex.P-10 and Ex.P-11 as Ex.P-19 and Ex.P-20. Consequently, there can be no doubt that the design of the container with the product “HIT” has been registered by the plaintiff. The said container is cylindrical in shape. In the film “Vettaikaran”, the image of the product which has been taken from the Shop Tulsi Poochikoli Marunthu Kadai (in tamil) and which has been objected by the plaintiff has been filed as Ex.D-2. The products in Ex.D-2 containing the word “TIT” are not exactly cylindrical shape. They have a wider circumference at the top and slowly tapper down to the bottom. On the other hand, M.O.1 and M.O.2 are cylindrical objects. It is to be mentioned that the objectionable scene was also witnessed by the Court in the presence of the counsels for both the plaintiff and the defendants. Each part of the scene for paused and both the learned counsels also pointed out that the similarities and dis-similarities between M.O.1 and M.O.2 and the container shown in the movie. The photographic image of the product shown in the movie has been produced before Court as Ex.D-2 and even though the name is given as “TIT”, the shape of the container is not exactly the same. It is a fact that the plaintiff has registered the design under the Designs Act. But the product shown in Ex.D-2, is Red and Yellow in colour. M.O.1 is entirely Red in Colour and M.O.2 is entirely Block in colour. I therefore hold that the product shown in the movie “Vettaikaran” is visually different from the get up, design, shape and colour of the container of the product “Hit”. Issue nos. 1 & 6 are answered accordingly against the contention of the plaintiff.
ISSUE No.2, 7 & 9:-
20. In the movie “Vettaikkaran”, according to the plaintiff in the plaint, the product “HIT” has been projected in a disparaging manner In the plaint which has been stated as follows: “The scene is depicted in such a way that the villain was first offered a knife to take away the life of the police inspector but the villain refuses to use the knife instead directs one of his crew member to get the deceptively similar product “TIT” from a chemist shop named as 'Tulsi Chemist Shop/Tulsi Poochikoli Marunthu Kadai 9 in tamil)'. The similar product “TIT” is sprayed by the villain in the police inspector's eye and inspector becomes blind. While spraying the deceptively similar product “TIT” the villain delivers the following dialogue “You have stated in a TV interview that “you can tolerate injustice, hereafter you will not see the injustice, you cannot see injustice and you need not see injustice. (In Tamil the same dialogue “unnala aniyathai ellam pathukettu summa irukka mudiyadunnu TV batela sonna, inimay nee aniyathai pakkamata, aniyathai pakka mudiyadu, aniyathai pakka vendam”. As stated, the scene was witnessed in open Court along with the counsels for the plaintiff and the defendants. The learned counsel for the defendants strongly objected to the contention that this scene was disparaging the product of the defendants. In this connection, the learned counsel also pointed out that the Section 29 of the Trade Mark Act. Under Section 29 which relates to infringement of Trade Mark, in Section 29(6)(d) it had been given as follows:
“29.Infringement of registered trade marks-(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
6.For the purposes of this section, a person uses a registered mark if, in particular, he-
(d)uses the registered trade mark on business papers or in advertising.”
In this connection, sub Section (7) also becomes relevant. Section 29(7) of the Trame Mark Act is as follows:-
“(7). A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.”
21. Pointing out the above, the learned counsels for the defendants stated that the defendant had not used the product for labeling or packaging or for advertisement. In this connection the attention of the Court was drawn to the plaint, wherein, in the statements relating to the profits of the plaintiff Company, it is seen that there has been an increase in the profit. Consequently, it was the stand of the defendants that the said scene never affected the sales of the product of the plaintiff. The defendants also relied on Ex.P-12. In Ex.P-12, which is the certificate of registration of insecticide given to the plaintiff Company for the product “HIT”, it had been very clearly stated that the product should not be used on eyes.
22. The learned counsel for the defendants relying on this aspect and stated that it is an admitted fact that the product “HIT”, if it is sprayed on the eyes of a human, it would cause damage.
Consequently, it had been stated that the scene objected by the plaintiff does not disparage the product of the plaintiff. A perusal of Ex.P-14 which is the literature published by the World Health Organisation also shows that one of the symptoms of the spraying of the product is “blurred vision”.
23. The learned counsels for the defendants further stated that consequently there cannot be any motive for the defendant to disparage the product “HIT” of the plaintiff. It has been further pointed out by the learned counsels for the defendants that there must be comparison to two separate advertisements to establish disparagement and that was not so in this case. It had been further stated that the Censor Board had given a certificate after watching the entire movie and this must be understood to mean that all the scenes in the movie had been approved by the Statutory Authorities.
24. The learned counsel for the plaintiff had stated that the scene shown in the movie, would give a wrong image to the average consumer about the product of the plaintiff. The learned counsel for the plaintiff had relied on 2 judgments on this aspect. Cadila Health Care Ltd .vs. Cadila Pharmaceuticals Ltd [2001][21] PTC 300 SC:
“31. Trade Mark is essentially adopted to advertise one's product and to make it known to the purchaser. It attempts to portray the nature and, if possible, the quality of the product and over a period of time the mark may become popular. It is usually at that stage that other people are tempted to pass of their products as that of the original owner of the mark...”
& Midas Hygiene Industries P.Ltd & Anr .v. Sudhir Bhatia & Ors. 2004 [28] PTC 121 SC “5.The law on the subject is well settled. In cases of infringement either of Trade Mark or of Copyright normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases The grant of injunction of the Mark was itself dishonest.”
25. In International Websters' Comprehensive Dictionary- Disparage/Disparagement means “to speak of slightingly undervalue, to bring discredit or dishonor upon, the act of deprecating, derogation, a condition of low estimation or valuation, a reproach, an unjust classing or comparison with that which is of less worth, and degradation.
“The concise Oxford Dictionary defines disparage as under, “to bring dis-credit on, slightingly of and depreciate.”
Further, under Section 29(8) of the Trade Marks Act 1999, disparagement has been stated as an infringement wherein,
i) Unfair advantage is taken of the mark's reputation, or
ii) is contrary to honest practice in industrial or commercial matters,
iii) is detrimental to the mark's distinctive character; or
iv) damages the reputation of the trademark.
26. Hence, the complaint against the defendant is usage of a container labeled 'Tit' and spraying the contents of another person impacting vision. This is a scene in a movie, and I am unable to convince myself that every ordinary person would immediately stop purchasing the plaintiff's product 'Hit'. There is no disparagement of the plaintiff's product. If a narrow view is to be construed then every object in every movie, can be complained of. It is seen that even the movie projected a scene using an imaginary product “TIT” further the imagination is stated by the plaintiff to relate the shape of the product “HIT” to that of the plaintiff's product. Moreover, the scene which is objected by the plaintiff appears only for a few seconds. The further fact which weighs in my mind is that the suit is of the year is 2010. At the earliest instance, the plaintiff was not able to obtain any interim order from this Court. As of now nearly 7 years has passed. The plaintiff has mentioned about another proceeding before this Court in C.S.No.70/2005 in relation to a movie “Tirupachi” in which also the plaintiff's product “HIT” was said to have been disparaged. In that case, the defendants therein, according to the plaintiff, was directed by the Court “with the help of advanced technology to mask the name of Plaintiff's product containing the trade mark name HIT from the particular scene”. In the suit on hand, much water has flown. At this juncture, I hold the balance of convenience in favour of the defendant and consequently I hold these issues against the plaintiff. Issue nos. 2,7 & 9 are answered accordingly.
ISSUE NO.3:-
27. The plaintiff had filed Exs.P-2,3,4 and P-6,7,8 & 9 with respect to registration of the product “HIT” with the name 'Hit' in various combinations. The product shown in the movie is called “TIT”. It is clear that the pronouncement is the same but a movie must be seen as a movie namely as a bundle of imaginary facts. It cannot be seen as real events which occur in our day to day life. A certain amount of freedom of expression and space to imagine has to be given to every movie Producer/Director or to any other technician to expand his thoughts and also relate the same to a real life situation. The plaintiff should view this scene as a similar bundle of imaginary facts. From that angle, I hold that the plaintiff has not made out any case for either of infringement of the Trade mark “HIT”. Consequently, I hold issue No.3 against the plaintiff.
ISSUE NO.4 & 5:-
28. This suit has been filed under Section 134 and 135 of the Trade Marks Act. The plaintiff has come to Court seeking relief on the ground that the product “HIT” has been shown disparagingly in the movie “Vettaikaran”. The plaintiff has every right to come to Court seeking relief. A plaintiff cannot be non suited on technical grounds. I hold that the suit is maintainable and there is a cause of action for the plaintiff. But whether merely since the suit is maintainable and whether merely since there is a cause of action, the plaintiff is entitled for relief is a different aspect. Every suit can be maintainable and every plaintiff will have a reason to come to Court. But the reasons can be discredited on the basis of documentary and oral evidence. Consequently, I held that the suit is maintainable and there is a cause of action. But I still hold against the plaintiff with respect to infringement and disparagement in the use of the product “HIT”. Issue Nos.4 &5 are answered accordingly.
ISSUE NO.8:-
29. The defendant produced Ex.D-4 which is the certificate issued by the Censor Board for the movie “Vettaikaran”. The said certificate had been issued only for the purpose of viewing the movie by the general public and the regulations there to. The said certificate cannot be a ground to non suit the plaintiff who has alleged infringement of a registered Trade Mark and has raised other related legal issues. Consequently, I hold that even though, the defendant had a certificate to exhibit the movie, the plaintiff still has a cause of action against the defendant. But the cause of action does not survive in view of the oral and documentary evidence as analysed by this Court. Issue no.8 is answered accordingly.
ISSUE NO.10:-
30. In view of the discussions above, I hold that the plaintiff has not made out any case for grant of Permanent Injunction against the defendants. The grant of injunction would depend upon balance of convenience and comparable loss and hardships by either party. In this case, the movie 'Vettaikkaran' had been released nearly 7 years ago. It had been telecast across the country. Copies also been distributed and sold by way of VCDs and DVDs. At this stage, there cannot be a complete morphing of the scene by the defendant. The balance of convenience is with the defendant. Grant of injunction would cause more harm to the defendant. On the other hand, if interim injunction is not granted, the plaintiff would not be put to any direct loss. The plaintiff has actually not quantified the loss suffered so far. As stated earlier, the movie should be seen in a lighter vein. Consequently, I hold that the plaintiff is not entitled for any relief in the suit as claimed by him. In the result the suit is dismissed, however, without cots. Application No.331/2010 is closed.
24 .02.2017 Index:yes/no Internet:yes KP To The Sub Assistant Registrar, Original Side, High Court, Madras.
C.V.KARTHIKEYAN, J.
KP Judgment in C.S.No.73 of 2010 .02.2017 http://www.judis.nic.in