Bombay High Court
United Spirits Ltd vs Invincible Entertainment Pvt.Ltd. And ... on 4 October, 2012
Author: Anoop V. Mohta
Bench: Anoop V. Mohta
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dgm
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
NMSL/2959/2012
IN
SUIT (LODGING) NO. 2570 OF 2012
United Spirits Ltd. .... Plaintiff
vs
Invincible Entertainment Pvt.Ltd. and 4 ors. .... Defendant s
Mr. Venkatesh Dhond, Senior Counsel along with Mr. Ashish Kamat,
Mr. Bharat Shah i/by M/s. Bharat Shah & Co. for the Plaintiff.
Mr. K. S. Patil i/by Mr. Rajesh Srivastav for Defendants 1 to 5.
Mr. Sanjay Khandury, Defendant No.5 present.
CORAM: ANOOP V. MOHTA, J.
DATE : October 04, 2012 P.C.:
Heard the learned counsel appearing for the parties for ad-
interim relief only.
2 The Plaintiff/company is engaged in the business of manufacture, distilling and sale of alcoholic beverages including whisky. The Plaintiff is the third largest manufacturers of spirits ::: Downloaded on - 09/06/2013 19:13:05 ::: 2 901-nmsl-2959-12.sxw products in the world. The Plaintiff is the registered proprietor of the trade-marks "Black Dog" (both words and label). In the market, such whisky, the trade marks/label marks is also known and recognized by the phonetic use of words "Block Dog". Therefore, the use of the words "Black Dog" in respect of any drink purported to be whisky which is not the Plaintiff's whisky amounts to an infringement of Plaintiff's registered trade-mark.
3 Defendants 1 to 4 are the co-producers of Cinematograph film entitled "Kismat Love Paisa Dilli" (the said film) which, according to the plaintiff, contains disparaging statements about the plaintiff's well known whisky sold under the trade-mark "Black Dog". The averments are supported by an affidavit and the relevant documents including the relevant clips/copies of slide shows of the promos of the movie which will be releasing in the threatres on 5 October 2012 as promoted and advertised.
4 An affidavit of service is filed. The matter was circulated urgently on 3 October 2012 as it was pertaining to other Bench. In view of urgency shown, listed today for ad-interim relief.
::: Downloaded on - 09/06/2013 19:13:05 :::3 901-nmsl-2959-12.sxw 5 Respondent no.5, the Director of the film, has filed affidavit in reply opposing the grant of ad-interim relief.
6 The Plaintiff is basically seeking an injunction and/or restraintment order against the Defendants and/or its agents from in any manner, directly or indirectly, publishing, exhibiting and continue to publish or exploiting the offending telecast or impugned promos and/or impugned scenes of the film, containing the scenes as depicted in slide shows, Exhibit Q ( 1 to 20) or any other similar disparaging and/or defematory telecast which contains improper slanderous, libellous, reference to the Plaintiff's registered trade-mark "Black Dog".
For ad-interim, the basic submissions are made revolving around Clip Nos. 15 and 16, apart from visual/scene, the dialogue are : "MVO-Sahi hai yaar ! Black Dog?" in Clip No.15. In Clip No.16, the dialogue is "MVO - Nahi Sir, Canada ka hai ji, Lucky Dog".
7 The Defendants, through Defendant No.5, have averred as under:
"5 I say that, the trademark of the Plaintiff's "BLACK DOG" is removed/deleted from all the promos. I further say that, Plaintiff's trade mark "Black Dog" is ::: Downloaded on - 09/06/2013 19:13:05 ::: 4 901-nmsl-2959-12.sxw not appearing in any of the scenes in the said film as the same has been removed/deleted from the original prints which have been sent for exhibition. In these circumstances the Plaintiff's have not made out any case for stalling the release of the said movie/film as the Plaintiff's trade mark "Black Dog" is not used in any of the scenes in the original prints which are dispatched for exhibition."
8 The submissions are also made that they have already spent the crores of rupees and sold distributorship rights, the prints of movies have already been reached to respective destination for being released world wide. Therefore, opposed the ad-interim by stating that no prima facie case, balance of convenience, lies in favour of the Plaintiff.
They will suffer irreparable loss in case release of the said film is stalled. However, contended that no prejudice will cause as Plaintiff's trade-mark is not appearing in any of the scenes of the film.
9 Admittedly, there is no dispute with regard to the Plaintiff's trade-mark, name and fame. Even otherwise, the Defendants who are not competitors of the Plaintiff, in no way, in a position to deny the same. We are not concerned with the dispute between the competitors of the trade-mark.
::: Downloaded on - 09/06/2013 19:13:05 :::5 901-nmsl-2959-12.sxw 10 We are also not concerned here about the censorship of the film.
The remedy is elsewhere.
11 The Plaintiff's case referring to the scene in question is as under :
a) the leading star of the said film i.e. Vivek
Oberoi shown to be urinating into glasses;
b) The glasses filled with urine are then served
to a person who consumes this urine and thinking the contents thereof to be whisky exclaims the words "Black Dog".
[ Clip Nos. 11 to 16].
12 As per the Plaintiff, the trade-mark "Black Dog" uttered first time by a person depicted in Clip No.15. (He uttered "Sahi hai yaar! Black Dog" ). Then in Clip No.16, the words are "Nahin Sir, Canada ka hai ji, Lucky Dog". The Plaintiff restricted their case principally revolving around these two clips where a person exclaimed "Black Dog" and its effect, referring to the background of the other scenes.
::: Downloaded on - 09/06/2013 19:13:05 :::6 901-nmsl-2959-12.sxw 13 The Plaintiff averred that after getting knowledge of such promos, on 14 September, 2012, immediately referring to their product, name and fame and the effect of Promo, demanded to cease and desist from using the words "Black Dog". The Defendants, by reply dated 20 September, 2012, which received by the Plaintiff on 25 September, 2012, denied that they have continued and/or infringed the trade-mark rights as alleged. However, they admitted, without prejudice to their rights "without admitting any allegations in your notice, our clients state that they shall not henceforth use the words BLCK DOG in the said film or promos thereof. It is also mentioned "
However, reference to the words "Black Dog" in these aid movie shall be covered by the bleeping censor merely to avoid any controversy which may have effect on the release of the said movie."
14 The Plaintiff on 27 September, 2012 again re-iterated and insisted to desist from using the said trade mark as, according to them, these disparaging their products in the market and media, twenty four hours notice was given accordingly.
15 The Plaintiff, therefore, ultimately has filed the present Suit along with the above Notice of Motion on 1 October, 2012 and also served ::: Downloaded on - 09/06/2013 19:13:05 ::: 7 901-nmsl-2959-12.sxw on 1 October, 2012. The matter was on board on 3 October, 2012 and kept today for ad-interim relief.
16 Section 29 of the Trade Marks Act, 1999 (for short, "the Act"), apart from other provisions is relevant section for consideration in view of the averments so made by the Plaintiff. As noted already, the label as well as the words in question are registered as contemplated under the Act. Therefore, phonetic and/or spoken use of words read with the visual representation and/or connected depiction of such trade mark, definitely falls within the ambit of this Section. The Court, therefore, need to consider all these aspects, but from the point of view of use of those trade marks in the media by the persons who are definitely not the competitors.
17 Merely exclamation of words "Black Dog" itself is not sufficient to raise any sort of objection, referring to trade-marks. But the moment those words are used referring to the products in question i.e. whisky and/or related drinks, the owner of the trade has a right, to object the mis-use of the said trade-mark by any person.
::: Downloaded on - 09/06/2013 19:13:05 :::8 901-nmsl-2959-12.sxw 18 There is no serious dispute with regard to this aspect from other side, except that there was no intention whatsoever to mis-use the words "Black Dog" as averred by the Plaintiff.
19 The expression "Black Dog", as objected and as seen from the slide show/clips as referred above from 1 to 16, intended only to create a comic side of the film. But for the utterance of the word "Black Dog" in a sequence of scenes, where a person while drinking, so-called collected stuff as depicted, make the expression. (Clip No.15). In Clip No.16, in answer to the utterance at Clip No.15, the words are "Nahin Sir, Canada ka hai ji, Lucky Dog". The submission is made that in the scene, the words "Black Dog" read with "Lucky Dog"
affects their trademark and reputation of their well known brand whisky.
20 As recorded, the Defendants in their reply itself, without admitting the liability, stated positively that they will not use the words "Black Dog" in their film henceforth. They also assure and stated that they will cover and edit the clip/scene of the movie, including the sound, to avoid controversy.
::: Downloaded on - 09/06/2013 19:13:05 :::9 901-nmsl-2959-12.sxw 21 Defendant No.5, who is a Director, has filed the affidavit and not by the producers/co-producers and in paragraph 5 as recorded above, made positive averments in Court that the words/trade marks of the Plaintiff "Black Dog" are removed and/or deleted from all the Promos.
It is also averred that the Plaintiff's trade mark "Black Dog" not appearing in any of the scene in the said film as the same has been removed and deleted from the original Clips which have been sent for exhibitions.
22 The learned senior counsel appearing for the Plaintiff submitted that having once circulated and Promos were telecast on all every media, which has already its effect and this itself is infringement of their trade mark "Black Dog". Apart from the utterance of the words in Clip No.15, but even by "lip reading". The person concerned and/or the audience will be in a position to understand though those words are clipped, the reason behind it. Therefore, audio deletion of the words "Black Dog" itself is not sufficient. The words "Lucky Dog"
in clip No.16, now if followed after the words "Black Dog" has also direct reference to their trademark whisky "Black Dog".
23 Admittedly the film, as averred, is to release world wide on 5 ::: Downloaded on - 09/06/2013 19:13:05 ::: 10 901-nmsl-2959-12.sxw October, 20122. This itself means apart from huge expenditure in producing the films, distribution of rights and prints of movies and/or other related aspects, have already been entered into and proceeded further worldwide. Therefore, the Court need to consider while granting ad-interim relief on the foundation of the basic principle of prima facie case, the balance of convenience, irreparable loss and injury, in the background of production of film and/or distribution of film and/or their respective rights.
24 During the course of arguments, apart from the statement so made and averred in para 5 and first reply notice, as referred above, the learned counsel, on instructions, who is present in Court, and also on instructions, undertake to take steps to delete and edit those scenes within a shortest possible time, basically Clip Nos. 15 and 16.
25 The submission was also made by the learned senior counsel for the Plaintiff that if it is not possible for them to delete those scenes, if directed and/or if they continue to show and/or exhibit those scenes, this will definitely damage their reputation and infringe their rights further. It will definitely affect their brand in all respects. Therefore, the submission was also made to injunct the release of the film itself.
::: Downloaded on - 09/06/2013 19:13:05 :::11 901-nmsl-2959-12.sxw The film can be released after deletion of those scenes and not before that.
26 This itself means disturbance and hampering of the film industry's business just one day before the release of the film. The known and un-known costs and expenses of producing the film and bring it upto the stage of release of the film itself, require long run procedure and involvement of various persons and the rights. The Court, therefore, while passing and/or granting ad-interim relief just cannot overlook these facets.
27 The learned senior counsel appearing for the Plaintiff submitted and relied and referred the judgments passed by this Court whereby this Court, after considering the facts and circumstances of the case and referring to other judgments, has granted interim relief even at late stage. The aspect of delay and/or latches and/or investment so made even if any, should not be the reason not to pass the ad-interim order as such. The facts and circumstances of those cases are distinct and distinguishable. We are concerned with the release of the film on 5 October, 2012 and the averments made in the case.
::: Downloaded on - 09/06/2013 19:13:05 :::12 901-nmsl-2959-12.sxw 28 As noted, the Promos in question were in the market/media since first week of September. The Plaintiff noted and gave notice on 14 September, 2012. They wait for reply. They received reply on 25 September 2012 and ultimately they filed the Suit for interim relief/protection. The fact remains that the Plaintiffs were fully aware of the Promos which was already in the market since first week of September 2012 itself. For whatever may be the reason, they took steps for filing of Suit only on 1 October, 2012. The Defendants has in the first reply itself expressed that they have deleted the words/trade marks. The affidavit is also filed in the Court that they have already deleted those words/trademarks.
29 To this, the submission is also made by the learned senior counsel for the Plaintiff that till yesterday on internet promos of the film were on. We have to consider the various aspects of taking withdrawal steps if someone wants to withdraw such Promos from the media covering internet and/or other medial basically when it is normally launched at large scales.
30 I am inclined to observe that the averments so made in the present affidavit referring to withdrawal of the words/trade marks ::: Downloaded on - 09/06/2013 19:13:05 ::: 13 901-nmsl-2959-12.sxw and the intention was already expressed by them in their first reply itself, and as they are admittedly not the competitors, there was no intention to malign the name and fame of the Plaintiff's. The exclaimed words , if any, immediately after the notice they took steps to withdraw the same.
31 The learned senior counsel for the Plaintiff submits, referring to the lips movement/reading the words "Black Dog" also cause/prejudice as it goes back to the Promos already circulated.
Therefore, the lips movement in the dialogues in Clip No. 16, as referred to "Lucky Dog" also hampers their reputation. At this stage, I am not inclined to accept the same basically in the background of their averments referring to the deletion of the sound of the words "Black Dog" from all the Promos and the film.
32 If we consider independently the words "Black Dog" , there cannot be serious objection by anybody for using the same words. But in the present case, considering the scenes and the stuff so used, directly or indirectly connected to the colours and appearance of "Whisky" by using the words "Black Dog". If we read independently the words "Black Dog", no-one can raise any objection to the use of ::: Downloaded on - 09/06/2013 19:13:05 ::: 14 901-nmsl-2959-12.sxw those words. In the scene, the utterance of the words "Black Dog", if deleted, it is difficult for a lay man to read and understand the so-
called lip movements, as submitted, that the words "Black Dog" refers to the brand in question. In the present case, a statement is made and as it is recorded above, they have already deleted the words (sound) "Black Dog", I am not inclined to accept the case of the learned senior counsel appearing for the Plaintiff that by ad-interim relief, the Court must injunct and/or direct the Defendants to delete those scenes i.e. Clip Nos. 15 and 16, specially when, in the media, though Promos are circulated it is normally for limited seconds the concerned person only can see and understand the effect of the words "Black Dog" referring to particular whisky. The colour and/or appearance of whisky of any type as depicted in the scene and/or stuff as used, can not be objected by anybody or at least on that ground itself,there is no question of granting ad-interim relief as prayed. As already observed, we are not concerned with the censorship and/or aspect of censor, referring to the scenes, depicted in clips 1 to 20.
33 The balance of convenience, equity, apart from irreparable loss and injury, in my view, at this stage, tilts in favour of the defendants.
The Plaintiff definitely concerned with the exclamation words "Black ::: Downloaded on - 09/06/2013 19:13:05 ::: 15 901-nmsl-2959-12.sxw Dog". If those words goes that itself, in my view, sufficient at this stage to protect the alleged right of the Plaintiff. I am not deciding at this stage the other averments and prayers made in the Suit and the Notice of Motion.
34 This has also additional foundation that the Defendants to file undertaking that they have already deleted the objected scenes and dialogues/sound. In the undertaking, the statement should be made that they will ensure to delete the scene at Clip Nos. 15 and 16 at the earliest and ensure that those scenes will not be depicted and/or shown after four days from today. The undertaking to be filed by 5 October, 2012 of the Defendants.
35 Therefore, taking over all view of the matter, by keeping all points open, in view of the above, ad -interim relief is refused.
36 Stand over to 1 November, 2012.
(ANOOP V. MOHTA, J.) ::: Downloaded on - 09/06/2013 19:13:05 :::