Bombay High Court
Chaurang And 2 Ors vs Shemaroo Entertainment Ltd. And 27 Ors on 18 February, 2020
Author: B.P. Colabawalla
Bench: B.P. Colabawalla
Ladda
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL JURISDICTION.
INTERIM APPLICATION No.1 OF 2020
IN
COMM IP SUIT (L) No. 127 of 2020
Chaurang & Ors. ..Plaintiffs.
Vs.
Shemaroo Entertainment Limited & Ors ..Defendants.
Mr. Rajendra V. Pai, Senior Advocate a/with Mr. Aloukik R. Pai, Ms.
Apurva Bhat, Mr. Akshay R. Pai, Ms. Nikita Dharamshi, Mr. Vinay
Katro, Mr. Siddhant Joshi i/by Mrs. Bina R. Pai for the Plaintiffs.
Mr. Hiren Kamod i/by Mr. Mahesh A. Mahadgut, Mr. Prem Khullar,
Ms. Poonam Teddu and Mr. Kaivalya Shetye i/by Mahesh A.
Mahadgut for Defendant Nos. 1 to 11.
Mr. Rishit Badiani i/by A.S. Dayal & Associates for Defendant No.28.
CORAM : B.P. COLABAWALLA, J.
DATED :- 18th February, 2020 P.C. :-
1. The present Interim Application has been moved for ad-
interim reliefs seeking an injunction against the Defendants from using the Plaintiff's trade mark "Marathi Bana" on the ground of 1/16 comipl-127-2020..doc ::: Uploaded on - 24/02/2020 ::: Downloaded on - 10/06/2020 10:38:30 ::: infringement and passing off.
2. When the application was argued for ad-interim reliefs, Mr. Pai, the learned Senior Counsel appearing on behalf of the Plaintiffs took me through the averments in the plaint and the documents annexed thereto. He submitted that on 19 th May, 2006 an application was made by Plaintiff No.2 for registration of the label "Marathi Bana" written in Devanagari script. After considering the application, the certifcate of registration was granted on 10 th March, 2009 registering the label "Marathi Bana". He submitted that over the years and more particularly for the last 15 years the Plaintiffs have been exclusively producing and performing the show under the trade mark "Marathi Bana". This show has been produced and performed not only domestically but also abroad. The said show was exclusively created, produced and performed by Plaintiff No.2 under the said trade mark for the frst time on 1 st November, 2005 during the Diwali Festival of that year. Over the years, the said trade mark developed good will and the words "Marathi Bana" have been imprinted in the mind of audiences, enjoining the Marathi language as being synonymous with Marathi entertainment. 2/16 comipl-127-2020..doc ::: Uploaded on - 24/02/2020 ::: Downloaded on - 10/06/2020 10:38:30 :::
3. Mr. Pai, thereafter, submitted that the said show has garnered much success and is a world renowned show which has been exclusively performed under the said trade mark "Marathi Bana" by Plaintiff No.2 almost about 2000 times. He submitted that Plaintiff No.2 is synonymous with the said words "Marathi Bana". Every newspaper advertisement for the said show prominently displays the name of Plaintiff No.1 and Plaintiff No.2 as its writer, director and producer. Mr. Pai submitted that the said trade mark has been in continuous and exclusive use of the Plaintiffs and has become distinctive with all forms of Marathi entertainment. The said trade mark is exclusively advertised and popularized by Plaintiff No.2 through various media from the date of the commencement of its use. He submitted that since the said show and the said trade mark is the most popular show / brand of the plaintiff's production, the majority of the revenue generated by the Plaintiffs and the majority of the expenses incurred by the Plaintiffs are directly earned through and expended on the said show and the said trade mark. He also brought to my attention Exhibits 'I' and 'J' to the plaint which is a summary of the revenue generated from usage of the said show and said trade mark "Marathi Bana" as well as the advertisement and other expenses spent for promotion and 3/16 comipl-127-2020..doc ::: Uploaded on - 24/02/2020 ::: Downloaded on - 10/06/2020 10:38:30 ::: production of the said show and the said trade mark. He submitted that Exhibit 'I' clearly shows that the gross annual sales fgures arising from the use of the Plaintiff's trade mark, as shown in the Income-tax Returns and supporting documents for the period 2005- 06 to 2018-19 comes to approximately Rs.55.17 crores. Similarly, the annual expenses towards the items such as promotion/ advertisement of the Plaintiff's trade mark as shown in the income- tax returns and supporting documents comes to approximately Rs.46.04 crores. By relying upon these fgures, Mr. Pai submitted that the plaintiff's trade mark "Marathi Bana" has acquired substantial good will in the market.
4. Mr Pai then submitted that the said trade mark has also been registered under Class 9 and Class 41 which registration has been renewed from time to time and is valid till 19 th May, 2026 (Class-9) and 19th February, 2024 (Class-41) respectively. He has thereafter brought to my attention averments in the plaint as to the accolades and laurels received by the Plaintiff's show and the details of which are given in paragraph 4 (e) of the plaint. Mr. Pai submitted that the said trade mark "Marathi Bana" has become extremely popular not only in the Maharashtrian community but 4/16 comipl-127-2020..doc ::: Uploaded on - 24/02/2020 ::: Downloaded on - 10/06/2020 10:38:30 ::: also adored and admired by audiences in several parts of India. The content of the said show enacts and encapsulates richness of culture and traditions of Maharashtra and Plaintiff No.2 is instrumental in reviving the interest of the Marathi audience in the traditional forms of Marathi entertainment. He submitted that because of the Plaintiff's efforts to popularize Marathi heritage and culture, the use of the words "Marathi Bana" is cherished by the Marathi audiences and the said trade mark "Marathi Bana" was conceptualized by Plaintiff No.2. It is distinctive in its usage and does not have any generic usage when the two words "Marathi" and "Bana" are used together. These words were not used together for connoting Marathi entertainment medium or in common parlance, prior to its creation and usage by Plaintiff No.2. Mr Pai submitted that the use of the word "Marathi" refers to the language and the word "Bana", for lack of a better equivalent in English, means ethos/spirit/disposition, all in one. He submitted that the Members of the public and trade, associate the said trade mark with Plaintiff No.2 exclusively and none else.
5. Mr. Pai submitted that on or about 20 th January, 2020 the Plaintiffs were shocked and surprised to see an article in 5/16 comipl-127-2020..doc ::: Uploaded on - 24/02/2020 ::: Downloaded on - 10/06/2020 10:38:30 ::: Marathi in the daily edition of "Dainik Sakal" titled as "Shemaroo Marathi Bana che Aagman" (Arrival of Shemaroo Marathi Bana). The said article gave a gist of the launch of the Defendant's Marathi channel which the Plaintiffs believe, is deceptively titled as "Shemaroo Marathi Bana". It is in these circumstances that the Plaintiffs gave a cease and desist notice to defendant Nos. 1 to 11 dated 23rd January, 2020. This cease and desist notice was replied to on 3rd February, 2020. Mr. Pai submitted that this reply erroneously claims that since the colour and font of both the marks were not identical to that of the Plaintiff's mark, it did not amount to any infringement. He however submitted that this reply ignores the phonetic identity as well as the area of activity and the audience being catered to by both the marks. He submitted that the reply also erroneously sought to contend the difference in the class of viewers and the area of activities. He therefore submitted that the Plaintiffs had made out a prima facie case for grant of ad-interim reliefs. He submitted that if the injunction as sought by the Plaintiffs is not granted, irreparable loss would be caused to the Plaintiffs, inasmuch as looking at the contents that were going to be aired on the Defendants' channel "Shemaroo Marathi Bana" the same would dilute the good will and reputation that the Plaintiffs had acquired 6/16 comipl-127-2020..doc ::: Uploaded on - 24/02/2020 ::: Downloaded on - 10/06/2020 10:38:30 ::: through its registered trade mark "Marathi Bana". He therefore submitted that ad-interim relief of injunction be granted in favour of the Plaintiffs.
6. On the other hand, Mr. Kamod, the learned Counsel appearing on behalf of Defendant No.1, frstly submitted that the Plaintiffs are not entitled to any ad-interim reliefs as they are guilty of suppression. He submitted that grant of any ad-interim relief is an equitable relief sought from this Court and the same ought not to be granted considering that the Plaintiffs have suppressed important and material facts from this Court. The frst suppression that he alleged was that at page No. 55 of the plaint the Plaintiffs have stated that the gross annual sales fgures arising from the usage of the Plaintiffs' trade mark "Marathi Bana" has generated a turnover of Rs.55.17 crores. He, however, submitted that before the Authorities under the Trade Marks Act, 1999, Plaintiff No.2 had fled an affdavit dated 3rd March, 2018 wherein it is quite clear that the sales fgures mentioned at Page No.55 of the plaint are not only with reference to the trade mark "Marathi Bana" but also with reference to Mangalgani Dangalgani, Awaz Ki Duniya, Azadi 60, Gane Suhane, Amrut Lata, Madhurbala, Manikmoti and Ganga 7/16 comipl-127-2020..doc ::: Uploaded on - 24/02/2020 ::: Downloaded on - 10/06/2020 10:38:30 ::: Jamuna. He submitted that in this affdavit, it is the case of the Plaintiffs that the shows mentioned above are performed under the single banner "M/s CHAURANG" and "MARATHI BANA" is one of them. Mr. Kamod submitted that in this affdavit the sales fgures that are mentioned are identical to the one mentioned at page No.55. He submitted that even though this affdavit makes it clear that the sales fgures are not only generated from "Marahta Bana" but also from various other shows, the impression sought to be created in the plaint is as if these sales fgures (at page No.55) are only in relation to the use of the Plaintiffs' trade mark "Marathi Bana". Mr. Kamod submitted that this is a deliberate attempt on the part of the Plaintiffs to try and mislead this Court to secure ad-interim reliefs.
7. In addition to the aforesaid argument, Mr. Kamod submitted that when Plaintiff No.2 made an application for registration in Class 41, the registrar of trade marks raised certain objections. One of the objections raised reads as under:-
"The Trade Mark application is open to objection on relative grounds of refusal under Section 11 of the Act because the same/similar trade mark (s) is are already on record of the register for the same or similar goods/services. The detail of same/similar trade marks is enclosed herewith."
8. Mr. Kamod brought to my attention the said objections 8/16 comipl-127-2020..doc ::: Uploaded on - 24/02/2020 ::: Downloaded on - 10/06/2020 10:38:30 ::: which can be found at page Nos. 229 and 230 of the paper-book and the conficting mark was shown as "Marathi Talkies" in Class 41.
"Marathi Talkies" was registered under Class 41 and Page 230 shows the goods and services for which it was registered. The same reads as under :-
"Goods/service services related to entertainment in the nature of an ongoing television series of different varieties, or broadcast of shows for entertainment, educational and/or spiritual purpose, news, music or comedy shows, over television satellite, audio, video and radio media."
9. He submitted that in reply to this Examination report, the Plaintiffs have categorically stated that the Plaintiffs are seeking registration of the Trade "Entertainment, Music Composition, Orchestra, Live Performances, Theatre Productions, Production of Shows" and the Services / mark involved in the cited trade mark "Marathi Talkies" is different and dissimilar from applicant service/ mark.
10. He submitted that having taken this stand before the Trade Marks Authorities for having the Plaintiffs' trade mark registered under Class 41, the Plaintiffs today cannot contend that the Plaintiffs' trade mark is similar to that of the defendant who is using the words "Marathi Bana" in relation to its Television Channel. 9/16 comipl-127-2020..doc ::: Uploaded on - 24/02/2020 ::: Downloaded on - 10/06/2020 10:38:30 ::: In any event, Mr. Kamod submitted that though initially the defendants had made an application for registration of the words "Shemaroo Marathi Bana" under Class 9 and 41, the same was withdrawn and has now applied for registration under "Class 38". It is not even the case of the Plaintiffs that their trade mark has been registered under Class 38. In fact, Mr. Kamod submitted that looking at the application made by the Plaintiff for registration (page 57 of the plaint) and the registration granted (page 59 of the plaint), it is quite clear that a very limited registration was granted to the Plaintiffs. Whilst registration was sought for in relation to "Stage programmes, Live Musical Shows, Direct Transmission, Audio & Video Cassettes, Terrestrial Television, Cable T.V., Satellite Television, T.V. Serial", the registration was granted only with reference to Audio and Video Cassettes and Terrestrial Television, under Class 9. Similarly, under Class 41 an application was made for registration of the trade mark label "Marathi Bana" in respect of "entertainment, music composition, orchestra, live performances, theater productions, production of shows" which was granted on 31 st October, 2018. He submitted that the Defendants did not fall either under Class 9 or Class 41 but have applied for registration under Clause 38. He submitted that the service being rendered by the 10/16 comipl-127-2020..doc ::: Uploaded on - 24/02/2020 ::: Downloaded on - 10/06/2020 10:38:30 ::: Defendants is totally different from that of the Plaintiffs and therefore there was no question of there being any confusion or similarity between the two.
11. Lastly, Mr. Kamod submitted that in any event the expression "Marathi Bana" is a commonly used phrase and is an expression having wide spread usage. He submitted that the Plaintiffs cannot claim proprietary rights over the expression "Marathi Bana" in connection of the notes/services/business which are existing and are carried out by various traders, manufacturers, etc. He submitted that business activities carried on by Defendant No.1 are covered by Class 38. Admittedly, the Plaintiffs are not dealing in the services in which Defendant No.1 is having a presence. He submitted that it is settled law that no one can be allowed to monopolize words/expressions of common usage and if at all the same is granted it is only in respect of the actual goods or services for which the trade mark is registered and cannot be in respect of all the goods/services which preclude the others from using the same for different activities.
12. Mr. Kamod submitted that it is totally false on the part of 11/16 comipl-127-2020..doc ::: Uploaded on - 24/02/2020 ::: Downloaded on - 10/06/2020 10:38:30 ::: the Plaintiffs to contend that the expression "Marathi Bana" was conceptualized by Plaintiff No.2 and that the same does not have any generic usage when the two words "Marathi" and "Bana" are used together. He submitted that the expression "Marathi Bana" is a very common expression in the Marathi language which describes pride of the Marathi speaking people, Marathi language, Marathi culture, etc. He brought to my attention that the expression "Marathi Bana"
has been used and associated since decades to describe Marathi pride, Marathi Language and Marathi culture and has been in use since at least 1900 which is evident from Marathi books and Marathi literature which is commonly available in the public domain. The said expression was also widely used and became extremely popular during the Samyukta (United) Maharashtra Movement which was an agitation that began in 1956, demanding the creation of a separate 'Marathi Speaking' State which ultimately lead to the formation of the present Maharashtra State on 1st May, 1960. All these instances have been set out in great detail by defendant No.1 in its Affdavit-in-reply from Paragraphs 4j to 4n. He therefore submitted that in any event the Plaintiffs cannot claim the injunction of the nature sought for against the Defendants.
13. I have heard the learned Counsel for the parties at length 12/16 comipl-127-2020..doc ::: Uploaded on - 24/02/2020 ::: Downloaded on - 10/06/2020 10:38:30 ::: and have perused the papers and proceedings in the above suit as well as the Interim Application. I fnd considerable force in the arguments canvassed by Mr. Kamod. Firstly, I agree with his submission that prima facie the Plaintiffs are clearly guilty of suppression. As mentioned earlier, the impression sought to be created in the plaint is as if the sales fgure of Rs.55.17 crores was in relation to the trade mark "Marathi Bana". However, as refected in the affdavit fled by the Plaintiffs before the Trade Marks Authorities, it is clear that the said fgure of Rs.55.17 crores was not in relation to "Marathi Bana" alone but for revenue generated from various other shows mentioned earlier. This has been suppressed from the plaint. When a party comes to the Court seeking equitable reliefs, it has to come with clean hands and has to disclose all material, whether in his favour or against him. If he fails to do so, the Court would be fully justifed in not exercising its equitable jurisdiction and deny any relief.
14. In any event, I fnd that in the facts of the present case, at least prima facie, the Plaintiffs cannot claim any blanket proprietary rights in relation to the words "Marathi Bana". I have gone through the Affdavit-in-Reply in great detail and on perusing 13/16 comipl-127-2020..doc ::: Uploaded on - 24/02/2020 ::: Downloaded on - 10/06/2020 10:38:30 ::: the same and looking at the instances mentioned therein, it is diffcult to hold, at least at the ad-interim stage, that "Marathi Bana"
is an expression conceptualized by Plaintiff No.2 and the same is distinctive in its usage and does not have any generic usage when the two words "Marathi" and "Bana" are used together. As mentioned earlier, the words "Marathi" refers to the language and the word "Bana" has been used and associated to describe the word pride, language and culture. I fnd considerable force in the argument of Defendant No.1 that "Marathi Bana" is a very common expression used widely in the Marathi language and conveys a defnite meaning. It fnds mention not only in old literature but also in day to day life and refers to Marathi pride with Marathi language, culture, etc.
15. Hence, looking at the overall facts of the case, I do not think that the Plaintiffs have made out a prima facie case for grant of any ad-interim reliefs. I must mention that in the view that I have taken, I am supported by a decision of this Court in the case of Techlegal Solutions Pvt. Ltd. vs. Genelia Ritiesh Deshmukh [2014 (4)Bom.C.R. 822]. In the facts of that case, this Court held that the phrase "Lai Bhari" over which the Plaintiffs claimed proprietary, 14/16 comipl-127-2020..doc ::: Uploaded on - 24/02/2020 ::: Downloaded on - 10/06/2020 10:38:30 ::: statutory and common law rights, was a common phrase in Marathi. Paragraph 10 of this decision clearly supports the view that I have taken and reads thus:-
"10. I do not think that it is possible in these circumstances to accept Mr. Dewani's submission that the registration of his client's domain name, laibhaari.com gives his client proprietary rights in the common Marathi expression lai bhaari across all classes, products and range of activities. The consequence of that submission is far too wide, and far too dangerous. That is not the mandate of intellectual property protection laws. By an extensive of that reasoning, over a period of time, the entirety of a language would be choked. Every title of every work of literature, theatre 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 submissions postulate, in the context of this claim, is the beginning of the end; 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 grade, power, style, cadences, variations, dialects and patois. The language of our State is no exception. It is part of our culture and our tradition. Trade mark 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."
16. I must mention that this judgment of the learned Single Judge was tested in appeal and which appeal was also dismissed by the Division Bench of this Court on 10th July, 2014. 15/16 comipl-127-2020..doc ::: Uploaded on - 24/02/2020 ::: Downloaded on - 10/06/2020 10:38:30 ::: Considering the overall facts of the matter, I, therefore, do not think that the Plaintiffs have made out any prima facie case for grant of ad-interim reliefs. The application for ad-interim reliefs is accordingly rejected.
17. Interim Application No. 1 of 2020 to come up in usual course as per its turn.
(B.P. COLABAWALLA, J.) 16/16 comipl-127-2020..doc ::: Uploaded on - 24/02/2020 ::: Downloaded on - 10/06/2020 10:38:30 :::