Delhi High Court
Dr. Vijay Abbot vs Super Cassettes Industries Private ... on 29 July, 2019
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 29thJuly, 2019
+ CS(COMM) No.364/2019
DR. VIJAY ABBOT .... Plaintiff
Through:
Mr. Harish Malhotra, Sr. Adv.
with Ms. Kanishka Prasad, Mr.
Harsimran Singh, Ms. Samridh
Ahuja, Mr. Kartikeya & Ms.
Khushboo Tomar, Advs.
Versus
SUPER CASSETTES INDUSTRIES
PRIVATE LIMITED & ORS. ......Defendants
Through: Mr. Harsh Kaushik, Mr. Varun
Tandon & Mr. Harshvardhan
Jha, Advs. for D-1.
Dr. Harsh Surana, Ms. Deepali
S. Surana & Mr. Sandeep
Malik, Advs. for D-3,4,7&8.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. The plaintiff has instituted this suit for (a) permanent injunction
to restrain the ten defendants, being the producers, director and others,
connected with the film "KhandaniShafakhana" slated for release on
2nd August, 2019, from releasing the film "KhandaniShafakhana" and
/ or from using the plaintiff‟s proprietary material amounting to
dilution thereof and / or passing off; (b) mandatory injunction
directing the defendants to change and remove the title of the film
from that of "KhandaniShafakhana" to any other title not similar or
deceptively similar to the plaintiff‟s proprietary material and to remove
CS(COMM) No.364/2019 Page 1 of 22
or any other similar marks; and, (c) for recovery of Rs.2 crores.
2. The suit along with the applications for interim relief and under
Order II Rule 2(3) of the Code of Civil Procedure, 1908 (CPC) came
up before this Court first on 23rd July, 2019 when though I was not
prima facie satisfied with the rights claimed by the plaintiff but being
concerned whether the title of the film causes any damage to the
reputation of the plaintiff, suggested to the counsel for the defendant /
caveator, to before the scheduled release of the film, allow viewing
thereof by the plaintiff and his counsel as well as the senior counsel
briefed.
3. The counsel for the defendant / caveator, after taking
instructions, agreed thereto expressing apprehension that the plaintiff
and his counsels after watching the film and / or before the release
thereof, may make statements to the public, media or otherwise about
the film.
4. The senior counsel appearing for the plaintiff, under instructions
assured that no such statement shall be made and no information qua
the film will be divulged to anyone whatsoever.
5. It was also suggested that for the sake of expediency, the
undersigned may also view the film as suggested.
CS(COMM) No.364/2019 Page 2 of 22
6. Though vide order dated 23rd July, 2019 viewing of the film was
tentatively scheduled for 26th July, 2019 but with mutual agreement,
the viewing took place in the evening of 27th July, 2019.
7. The senior counsel for the plaintiff and the counsel for the
defendant / caveator have been heard.
8. The plaintiff has instituted this suit, pleading, that (i) the
plaintiff is a eminent Ayurvedic Sexologist with a career spanning
over four decades; (ii) the plaintiff currently practices from Hakim
Hari Kishan Lal Shafakhana Clinic, East Patel Nagar, New Delhi; (iii)
the plaintiff is the son of Late Hakim Hari Kishan Lal Abbot who was
a world renowned sexologist and had contributed significantly to the
health sector by providing for over three generationsAyurveda medical
care / treatment for all kinds of sexual dysfunctions; (iv) the plaintiff‟s
father had originally coined and invented the logo / trade marks /
brands / business names / portraits
; (v) the said logo / trade marks / brands / business names / portraits
constitute proprietary material and have been in existence and use by
the plaintiff‟s late father since the year 1925 and after his death on 27 th
January, 1987 by the plaintiff and his other family members; (vi) the
Registry of Trade Marks, vide order dated 8th December, 2000
CS(COMM) No.364/2019 Page 3 of 22
declared Smt. Raj Devi, Dr, Rajender Kumar Abbot and the plaintiff
as subsequent proprietors of the registered trade marks No.164662 and
213916 and allowed Dr. Rajender Kumar Abbot and the plaintiff to
trade in the name of „KhandaniShafakhana‟; (vii) the plaintiff and his
brothers still use the portrait of their father as corporate identity in
their profession; (viii) the said proprietary material has been
extensively used and advertised in promotion or otherwise by the
plaintiff and his family and gained immense reputation and goodwill
amongst the masses; (ix) the upward curved greased moustache and
the Peshawari looks of the plaintiff‟s father in his famous portrait
became a symbol of male sexuality / masculinity and are till date
identified with the professional services rendered by the plaintiff‟s
father; (x) the family members of the plaintiff agreed amongst
themselves that all the members will be entitled to use the photograph
of late Hakim Hari Kishan Lal Abbot on their respective sign boards
and in order to settle the dispute amicably, none of them will use the
word „KhandaniShafakhana‟ in any of their sign boards or other
materials / stationary; (xi) the said family arrangement does not give
right to the third parties as the defendants to use
„KhandaniShafakhana‟ and the goodwill and reputation attached
thereto; (xii) in June, 2009, the plaintiff was astonished to know about
the forthcoming Hindi feature film "KhandaniShafakhana" that uses
proprietary materials which belong to the plaintiff and his family;
(xiii) the first look poster of the film was released on 19th June, 2019
and the official trailer of the film released on 21 st June, 2019; (xiii) as
per the official trailer, the movie is based on a story of a renowned
CS(COMM) No.364/2019 Page 4 of 22
sexologist who provides Ayurveda medicines for all kinds of sexual
dysfunctions at his popular sex clinic titled "KhandaniShafakhana";
(xiv) the movie repetitively uses the portrait of the character in the
film and which is similar and can be confused with the portrait of the
plaintiff‟s father; (xv) the two portraits are as under:
; (xvi) from the trailer of the movie, it is evident that the movie is
based on the real life and contributions of the plaintiff‟s father; (xvii)
the plaintiff‟s father‟s looks, features, goodwill and reputation have
been exploited by the defendants for making financial gains without
obtaining any permission therefor from the plaintiff and his family;
(xviii) the similarity with respect to the style and colour of the turban,
the handlebar moustache and the facial posture clearly indicate a
thoughtful attempt to imitate the resemblance of the plaintiff‟s father;
(xix) the portrait of the plaintiff‟s father associated with the plaintiff‟s
corporate identity have attained distinctiveness and have acquired
secondary meaning for the treatment, of all kinds of sexual
dysfunctions in both genders, rendered by the plaintiff‟s father and
now by the plaintiff; (xx) the defendants are indulging in passing off
and misappropriation of business reputation of the plaintiff; (xxi) the
CS(COMM) No.364/2019 Page 5 of 22
misrepresentations are likely to deceive the public; (xxii) the
defendants are taking unfair advantage of the reputation and goodwill
enjoyed by the plaintiff and his family in relation to proprietary
material; and, (xxiii) the adoption and use of the plaintiff‟s proprietary
material by the defendants shall cause illegal and wrongful loss,
damage, hardship and injury to the plaintiff and his goodwill and
reputation.
9. Though the plaintiff in the plaint represented as if its trade mark
registrations were alive but a perusal of the documents filed by the
plaintiff showed the registration vide trade mark application
No.164663 in Class-5 [Medicinal Preparation] being of the device
mark andvide trade mark application No.213916 being of the
device mark ,also in Class 5. The documents also
revealed that the validity of registration vide trade mark application
No.164663 was till 22nd June, 2010 and of registration vide trade mark
application No.213916 to be valid till 19thFebruary, 2005 and the
status of both registrations as on 15th July, 2019 being shown as
"removed".
10. The aforesaid were essential facts to be disclosed by the
plaintiff in the plaint itself. Not only did the plaintiff indulge in
concealment but while claiming user of the two since 1925 and 1958
CS(COMM) No.364/2019 Page 6 of 22
respectively did not disclose that the registrations already stood
removed.
11. Such concealment and sharp practices followed in suits seeking
discretionary relief of injunction, not only disentitle the plaintiff to the
interim relief but also entail dismissal of the suit. A plaintiff, filing a
suit with urgent relief, cannot adopt such practices and contend that
the documents filed make the position clear. The Court, before which
a large number of matters are listed everyday, is not able to before
admission of the suit and considering the grant of ex parterelief, go
through each and every page of the voluminous documents filed and it
is for a plaintiff assisted by Advocates to make a clean breast of
affairs, so that on the basis thereof the grant/non-grant of ex parterelief
can be considered. The documents filed by the plaintiff do not show
any registration even of the word mark "KhandaniShafakhana". Only
in the document at page 6 of Part-IIIA file pertaining to trade mark
application No.164663 aforesaid, describes Hakim Hari Kishan Lal,
the applicant therein, trading as "KhandaniShafakhana". However, I
repeat that registration is not of word "KhandaniShafakhana" but of
device mark aforesaid.
12. The plaintiff, in my view is liable to be non-suited for this
reason alone.
13. The plaintiff along with its documents has also filed a certified
copy of the order dated 13th September, 2013 of the Court of
Additional District Judge-02 (West), Tis Hazari Courts, Delhi in CS
No.146/06/01 titled Rajinder Kumar Vs. Ankur Abbot &Ors. of
CS(COMM) No.364/2019 Page 7 of 22
dismissal as withdrawn of that suit in terms of an application filed
under Order XXIII Rule 3 of the CPC filed in the said suit. A perusal
of the said application shows Rajinder Abbot, Ankur Abbot, Manju
Abbot and the plaintiff to have agreed that all parties shall be entitled
to use the photograph of their father / grandfather Late Hakim Hari
Kishan Lal Abbot on their respective sign boards but neither party
shall use or display the words "KhandaniShafakhana" in any of their
sign boards or other materials / stationary.
14. It was for the reasons aforesaid that it was observed in the order
dated 23rd July, 2019, that the plaintiff was not entitled to the reliefs
claimed.
15. The senior counsel for the plaintiff today, after watching the
film, has argued, that (i) the film shows the artist whose photograph is
shown in the posters of the film, having been murdered because of
having dispensed wrong medicine to a patient; though towards the end
of the film, it is also shown that the same was not true but the fact
remains that he was charged with dispensing a wrong medicine to a
patient; (ii) the film shows the clinic in the name of
"KhandaniShafakhana" in a shabby condition; (iii) the film shows the
artist whose photograph is depicted in the posters, as having been
disqualified by the Ayurvedic Body and also shows the clinic to have
been subsequently sealed by the authorities; (iv) the film shows the
niece of the artist whose photograph is depicted on the posters,
attempting to run the clinic without being qualified therefor and
studying for a decree only thereafter; (v) the plaintiff cannot be said to
CS(COMM) No.364/2019 Page 8 of 22
have abandoned the mark "KhandaniShafakhana" because the said
abandonment is not voluntary; (vi) the plaintiff and his other family
members are till date continuing to use the photograph of the father of
the plaintiff; (vii) nothing prevents the plaintiff and his other family
members from joining together and collectively again start using the
mark "KhandaniShafakhana" ; (viii) even the removal of the marks
from the Registry is of no avail as the marks can be restored even
belatedly; in N.R. Dongre Vs. Whirlpool Corporation (1996) 5 SCC
714, the restoration application was filed after much longer period;
(ix) in any case the father of the plaintiff and the plaintiff and his
family members have used the portrait since the year 1925 and the
trade mark "Khandani Shafakhana" since 1958 till the Court order;
(x) that though in the poster of the film the photograph of the artist
therein is with the turban but else in the film the artist is never shown
wearing a turban except in the beginning; (xi) though in the
photograph of the artist in the posters of the film, he is shown sporting
a handlebar moustache but in the film his moustache is not shown as
handlebar; (xii) the film, for the aforesaid reasons is defamatory of the
plaintiff and tarnishes the reputation of the plaintiff; (xiii) reliance is
placed on N.R. Dongresupra, Satyam Infoway Ltd. Vs. Siffynet
Solutions (P) Ltd. (2004) 6 SCC 145, Laxmikant V. Patel Vs.
Chetanbhai Shah (2002) 3 SCC 65, The Timken Company Vs.
Timken Services Pvt. Ltd. (2013) 200 DLT 453, Rubiks Brand Ltd.
Vs. Mahesh Vaman Manjrekar MANU/MH/0703/2017, The Scotch
Whisky Association Vs. Pravara Sahakar Shakar Karkhana Ltd.
AIR 1992 Bom 294, Erven Warnink BV Vs. J. Townend & Sons
CS(COMM) No.364/2019 Page 9 of 22
(Hull) Ltd. (1979) 2 All ER 927, CIPLA Ltd. Vs. Registrar of Trade
Marks 2013 SCC OnLine Bom 1270 (DB), Union of India Vs.
Malhotra Book Depot 2013 SCC OnLine Del 828, Edmund Irvine
Tidswell Ltd. Vs. Talksport Ltd. (2002) 2 All ER 414, Reckitt and
Colman Products Ltd. Vs. Borden Inc. (1990) 1 ALL ER 873 and
The Crash Dummy Movie, LLC Vs. Mattel, Inc. 601 F. 3d 1387.
16. The counsel for the defendants has argued, that (a) the
compromise recorded on 13th September, 2013 is in pursuance to the
order in operation since the year 2001 restraining use of "Khandani
Shafakhana";thus the plaintiff has not been connected to the mark
"Khandani Shafakhana" for 18 years prior to the institution of this
suit, since the year 2001; (b) no case of any reputation of the plaintiff
being attached to "Khandani Shafakhana", inspite of admitted non use
thereof for 18 years, has been pleaded; (c) in fact the document filed
by the plaintiff himself at page 5 of Part-IIIA file pertaining to trade
mark application No.164663 shows the name of the proprietor as K.H.
Abdul Qadir trading as K.H. Soap Works and does not even disclose
Hakim Hari Kishan Lal or the plaintiff or any of his other family
members as proprietor thereof and there is no explanation whatsoever
in the plaint thereof; (d) there has been no sale or business in the name
of "Khandani Shafakhana" since 2001; (e) the plaintiff has not pleaded
any sales or given figures thereof; (f) the documents filed by the
plaintiff himself at pages 28,42 and 43 of Part-IIIA file show the
plaintiff to be carrying on his business in the names of „Hakim Hari
Kisan Lal Shafakhana‟or „Khandani Takat Shafakhana/Ankur Medico
Pvt. Ltd./Abbot Business Centre‟ or as „Hakim Saheb Shafakhana‟
CS(COMM) No.364/2019 Page 10 of 22
and not as "Khandani Shafakhana"; (g) the suit was based on a thirty
second clip of the film released as trailer but which was not even
attached to the plaint; (h) the protagonist of the film is not any man
but a woman and all apprehensions of the plaintiff, of the film being
based on the father, are misplaced; (i) the film is socially relevant and
raises the issues of need, for sex education and treatment of sexual
disorders like any other disorder/disease; (j) the reference in the film
to the man whose photograph appears on the posters, is only to show
how the lady protagonist of the film got the clinic and not of more
than five or six minutes out of a film of over two hours; (k) the film is
nowhere about the plaintiff or the plaintiff‟s father and rather deals
with the subject of sex education for youth through the eyes of the
lady who is the main protagonist of the film; (l) the film is not at all
about the life of the father of the plaintiff or the plaintiff;the plaintiff
in paragraphs 12 and 19 of the plaint has pleaded similarity, only by
citing the upward curved greased moustache,peshawari looks,colour
of the turban, handlebar moustache and facial posture and in which
there can be no proprietary rights and which are generic; (m) that look
also is confined only to one scene in the film; (n) that this is not a case
of sale of goods; (o) though the senior counsel for the plaintiff has
today argued on the aspect of defamation and citing which preview of
the film was also suggested and agreed to, but the plaint does not
disclose any cause of action for defamation and is silent in this regard
and the plaintiff cannot be granted any relief on the cause of action for
defamation; (p) the present suit was filed on the ground of passing off
and has to be decided on the said anvil only; (q) the plaintiff has not
CS(COMM) No.364/2019 Page 11 of 22
filed any invoices; (r) no injunction for protection of a marks which
lapsed in the years 2005 and 2010 and which have admittedly not been
in use since 2001, can be granted; (s) for injuncting release of a film,
the plaintiff cannot afford any delay; (t) the first poster of the film was
released on 11th June, 2019 and the film then was scheduled for
release on 26th July, 2019; the second poster was released on 19th June,
2019; the trailer of the film was released on 21 st June, 2019; (u)
however the present suit was filed only on 17 th July, 2019 and re-filed
on 20th July, 2019; (v) the plaintiff has not made out any case of
irreparable loss or injury; rather by filing the application under Order
II Rule 2 of the CPC, the plaintiff has admitted that the damage even if
any can be quantified in terms of money; (w) on the contrary, the
defendants have produced the film scheduled for release on 2nd
August, 2019 at huge costs and which will be wasted if any
interference is made; (x) the balance of convenience is also in favour
of the defendants; (y) the film, rather than causing any damageto the
plaintiff, takes the reputation if any of the plaintiff forward; (z)
reliance is placed on Mattel, Inc. Vs. Aman Bijal Mehta 2017 SCC
OnLine Del 11857, Godrej Sara lee Ltd. Vs. AVM Production Pvt.
Ltd. 2017 SCC OnLine MAD 12599 and A. Balakrishnan Vs. R.
Kanagavel Kamaraj 1999 SCC OnLine Mad 563.
17. The senior counsel for the plaintiff, in rejoinder has contended
that the mention of K.H. Abdul Qadir as proprietor in trade mark
application No.164663 at page 5 of Part-IIIA file is obviously a
mistake, as evident from pages 6 and 9 to 12 of Part-IIIA file.
CS(COMM) No.364/2019 Page 12 of 22
18. I have considered the rival contentions.
19. Having been privy to the film along with counsels for the
parties, I expected the plaintiff to today withdraw the suit. The film is
a work of fiction and deals with the subject of sex education and the
stigma attached to sexual dysfunctions and disorders and treatment
thereof. Of course, to attract the viewers to the film and sell it, the said
socially relevant subject is embedded in a drama / storyline, and
without which the film would be a documentary, with very limited
audience and reach.
20. The drama / storyline created around the subject aforesaid spills
to a large extent to the Court room. The Court scenes are again a
dramatized version rather than what unfolds in the mundane course in
the Courts every day. Again, to keep the interest of the viewers alive,
a comical twist is given to the arguments in the Court and the conduct
of the Judge. In fact, a thought did cross my mind while viewing the
film, that if the film indeed ridicules anyone or if anyone can take
offence to their depiction in the film, it is the lawyers and Judges.
21. I had risen after viewing the film thinking that it presents a
golden opportunity to the plaintiff and other practitioners in the field,
to, though till now found publishing their advertisements in local
newspapers, approach the larger cross section of the society on the
subject of need to impart sex education and for lifting the stigma and
taboo attached to sexual diseases/disorder/dysfunction and treatment
thereof and to commence a countrywide dialogue from the platform
offered by the film.
CS(COMM) No.364/2019 Page 13 of 22
22. There is no gainsaying that till date sexual
disorders/dysfunctions are viewed in the society as an abnormality and
not as a curable disease, with those in need of treatment therefor,
shying therefrom for the fear of same becoming public knowledge,
resulting in their becoming object of ridicule. This often results in the
disorder/dysfunction, though being curable, going untreated,
obviously at a huge emotional cost. Not only so, the same also results
in the sufferers seeking treatment from quacks and unqualified people,
offering cure shrouded in secrecy. The same is obviously to the
prejudice of general practitioners thereof, who are because of the
stigma attached to their profession, also deprived of the stature and
respect in the society as accorded to other medical practitioners. The
film, in two hours duration thereof, shows the societal transformation
brought about on the subject. I also wondered, whether on the plaintiff
and others so using the platform of the film, to propogate openness in
the matter, it would be the turn of the defendants to sue the plaintiff
for deriving undue benefit/mileage from the film. Alas! the
plaintiff,inspite of viewing the film, has not seen the potential the film
offers to him, to go out in the open and benefit not only himself but
the public at large therefrom.
23. I have had occasion to deal with attempts at seeking such ban
on films, besides in Mattel, Inc. supra cited by the counsel for the
defendant, also in Nandini Tewari Vs. Union of India 2014 SCC
OnLine Del 4662, Dharmaprachar Sabha Vs. Union of India 2014
SCC OnLine Del 6559, Yahoo Inc Vs. Firoz Nadiawala
MANU/DE/0784/2014, Prem Mardi Vs. Union of India 2015 SCC
CS(COMM) No.364/2019 Page 14 of 22
OnLine Del 12039, Kanungo Media (P) Ltd. Vs. RGV Film Factory
MANU/DE/1592/2017 and in Ajay Gautam Vs. Union of India 2015
SCC OnLine Del 6479 (DB) and the following principles can be
culled out therefrom: (i) that the effect of the allegedly offending
words / visuals is to be judged from the standards of a reasonable /
strong minded, firm and courageous man and not those of weak and
vacillating minds nor of those who scent danger in every hostile point
of view; (ii) that any restrictions imposed on expression of artistic
thought, affects the constitutional right of the film makers; (iii) our
society is a very mature society and there is no need for anyone to be
sensitive; (iv) that the standards that we set for our censorship must
make a substantial allowance in favour of freedom, thus leaving a vast
area for creative art to interpret life and society, with some of its
follies along with what is good; (v) we must not look upon certain
aspects, as banned in toto and forever from human thought and must
give scope for talent to put them before the society; (vi) the
requirements of art and literature include within themselves, a
comprehensive view of social life, not only in its ideal form; (vii) a
film that illustrates consequences of social evil, necessarily must show
that social evil; (viii) a film is to be judged in its entirety, from the
point of view of its overall impact; (ix) a feature film is a work of
fiction and is exhibited for commercial purposes; (x) the Constitution
protects the rights of the artist to portray social reality in all its forms;
some of that portrayal may take the form of questioning values and
mores that are prevalent in the society; (xi) films are a legitimate and
important medium for the treatment of issues of general concern and it
CS(COMM) No.364/2019 Page 15 of 22
is open to a producer to project his own message, even if it is not
approved by others; (xii) freedom of expression is of inestimable value
in a democratic society based on the rule of law; (xiii) right to
communicate and receive ideas, facts, knowledge, information,
beliefs, theories, creative and emotive impulses by speech or by
written word, drama, theatre, dance, music, film etc. is an essential
component of the protected right of freedom of speech and expression;
(xiv) humour cannot be divorced from reality; we can laugh only in
the context of what is known to us and not in abstract; if it were to be
held that there can be no contextual humour as the same is bound to be
considered to be offensive by someone or the other in the know of the
context, there indeed would be no humour and it will indeed be a sad
day; (xv) our commitment to freedom of expression demands that it
cannot be suppressed unless the situations created by allowing that
freedom are pressing and the community interest is in danger;
anticipated danger should not be remote, conjectural or far-fetched - it
should have proximate and direct nexus with the expression and the
expression to which objection is taken should be equivalent of a spark
in a powder keg; (xvi) freedom of speech and expression is sacrosanct
and the said right should not be interfered with; when the Central
Board of Film Certification (CBFC) has granted the certificate and
only something with regard to the petitioner which was shown in the
media is being reflected in the film, the Court should restrain itself and
not grant injunction; (xvii) a film is a creation of art; an artist has his
own freedom to express himself in a manner which is not prohibited in
law and such prohibitions are not read by implication,to crucify the
CS(COMM) No.364/2019 Page 16 of 22
rights of expressive mind; (xviii) like human beings, literary work
produced by the author or the work of entertainment produced by a
producer needs a title to be identified; (xix) title alone of a literary
work cannot be protected by Copyright Law; (xx) protection of
literary titles lies in the field of trade mark and unfair competition;
(xxi) titles may relate to two types of works i.e. titles of single literary
works and titles of series of literary works; (xxii) titles of series of
books, periodicals or newspapers do function as a trade mark, to
indicate that each edition comes from the same source as the others
and constitute a trade mark; (xxiii) titles of single literary work do not
enjoy trade markprotection and in order to become entitled to this
protection, it is necessaryto prove that such a title has acquired
Secondary meaning i.e. title iscapable of associating itself with
particular work or source; (xxiv) only if it is so, would the likelihood
of confusion of source, affiliation, sponsorship or connection in the
minds of potential patrons arise; (xxv) else, each literary work is a
specific, separate and unique commercial item and not as one product
among many competing products; and, (xxvi) the evidence necessary
to establish secondary meaning of literary work is evidence of an
audience educated to understand that the title means the work of a
particular artist; such evidence includes the length and continuity of
use, the extent of advertising and promotion and the amount of money
spent and the closeness of the geographical and product markets of the
plaintiff and defendants.
CS(COMM) No.364/2019 Page 17 of 22
24. Applying the aforesaid law to the pleadings of the plaintiff, the
plaint indeed does not show any right or cause of action for the
plaintiff to sue.
25. While the pleadings of the plaintiff are of his father having
practiced Ayurvedic treatment of sexual disorders in Delhi alone,
under the name "Khandani Shafakhana" and which name also is not in
use for the last 18 years, the film of the defendants is slated for an all
India, if not worldwide, release. Moreover, while the use of 18 years
prior to the institution of the suit, by the father of the plaintiff, of the
words "Khandani Shafakhana" is in relation to his professional clinic,
the use by the defendants is of the said words as a title to a film. The
words "Khandani Shafakhana" singly as well as used in conjunction
with each other are generic words. Both are words of Hindi / Urdu
language. While the word "Khandani" connotes familial or clannish,
the word "Shafakhana" means a hospital or a clinic. Used together,
the words convey a family hospital or a family clinic. A bare search
of the internet, discloses the word "Khandani" being used, with
„Pakode Wala‟ for vending street food, with „Rajdhani‟ for a
restaurant, with „Sherwani‟ for a clothing store.Certainly, one person
even if running his medical clinic in the name and style of "Khandani
Shafakhana", cannot prevent another, from using the generic word
"Khandani" or "Shafakhana" for a hospital or a medical clinic.
26. It is perhaps for this reason only that even when the father of the
plaintiff, and after him the plaintiff and his family members had
registration, the same was not of the word mark "Khandani
CS(COMM) No.364/2019 Page 18 of 22
Shafakhana" but of a stylized device mark, though with the word
"Khandani Shafakhana" and a logo therein and of the portrait of the
father of the plaintiff. The portrait of the father of the plaintiff, which
the plaintiff claims is in use even now,canby no stretch of imagination
be confused by anyone as portrait on the posters of the film of a well
known actor whose face will perhaps be recognized by more people
than the face of the father of the plaintiff.
27. The counsel for the defendant is right in his contention that the
plaintiff cannot also have any proprietary rights asserting which this
suit has been filed, to the Peshawari look or to the handlebar
moustache or to the turban, depicted in the portrait of the father of the
plaintiff and the portrait used in the posters of the film. In fact during
the hearing, I have reminded the senior counsel for the plaintiff of
other film characters sporting a similar turban or handlebar moustache.
Else, the face in the portrait of the father of the plaintiff and the face of
the well known film actor in the posters of the film can by no stretch
of imagination be confused for each other. „
28. No merit is found in the contention of senior counsel for the
plaintiff of the abandonment of the device mark with the word
"Khandani Shafakhana" and the logo, being not voluntary. Such
abandonment is under an application under Order XXIII Rule 3 of
CPC, of the own volition of plaintiff. It is not pleaded that there was
any force or compulsion on the plaintiff to sign the application.
29. The counsel for the defendant is also correct in his contention
that the plaint as drafted does not even contain a cause of action for
CS(COMM) No.364/2019 Page 19 of 22
defamation as has been argued by the senior counsel for the plaintiff
today. The plaint is drafted, with title and with prayers, as on the
ground of passing off and which ground of passing off is clearly
negated from admitted non use, for the last 18 years prior to the
institution of the suit, by the plaintiff and his family members of the
stylized device with the words "Khandani Shafakhana" and logo
contained therein. The plaintiff cannot be entitled to relief on the
grounds as urged, of there existing a possibility of the plaintiff and his
family members coming together and reviving the said registration
even, in the device mark which was earlier registered, or may agree to
commence using the words "Khandani Shafakhana" which was not
even registered. Else, 18 years is a long time for the memory to fade.
18 years, in the context of those in need of the professional services as
sexologist offered by the plaintiff, constitutes a generation and none of
the present patrons of the services offered by the plaintiff in other
names for the last 18 years,will connect the plaintiff with the words
"Khandani Shafakhana".
30. As far as the arguments of the senior counsel for the plaintiff
after watching the film are concerned, besides the suit being not to
prevent or to claim damages for defamation, I may also mention that
seeing the film holistically rather than as dissected in the manner
argued by the senior counsel for the plaintiff, shows the good to the
society done by the predecessor of the female protagonist of the film
and how inspite thereof he was not given social recognition /
acceptability. The same, on the anvils of the case law discussed above,
is a social evil and qua which it has been held that an artist cannot be
CS(COMM) No.364/2019 Page 20 of 22
prevented from depicting. The clinic shown in the film is seen in a
shabby condition only for the duration of non use and not otherwise.
No merit is also found in the argument, of the film showing the female
protagonist thereof to be practicing as a sexologist without the
requisite qualification. The film, as part of its plot /storyline, shows
the female protagonist thereof to have been entrusted the task,by her
predecessor of, after his death, dispensing medicines prepared by him,
to his patients, so as to not leave the patients in a lurch,depicting the
concern of the medical practitioner for his patients; otherwise the film
shows the society and the and the Ayurvedic Body earlier charging the
female protagonist thereof with misconduct, subsequently
withdrawing the said charges and the female protagonist, having
broken the social taboos to practice as a sexologist, taking steps for
being qualified therefor. The viewer of the film is more likely to walk
away, being more open than earlier to the acceptability of the
profession as a sexologist.
31. Rather, the pleadings of the plaintiff, instead of any damage
from the film, are of the film exploiting the goodwill and reputation of
the father of the plaintiff, for making financial gains to the producers
thereof, without obtaining permission of the plaintiff and the
producers of the film profiteering from the business reputation of the
plaintiff.
32. Owing to the urgency shown by the counsel for the defendant,
of the present suit interfering with the release of the film, the paucity
of time does not permit the undersigned to deal with each and every
CS(COMM) No.364/2019 Page 21 of 22
judgment cited by the senior counsel for the plaintiff and suffice it is
to state that having scanned through the same, I do not find any to be
laying down anything otherwise than what is expressed by him
hereinabove.
33. For the reasons above, no merit is found to proceed further with
the suit filed by the plaintiff.
34. The plaintiff, on the facts pleaded is not found entitled to the
reliefs of permanent or mandatory injunction or for recovery of any
damages from the defendant.
35. The suit is dismissed. However the senior counsel / counsel
plaintiff having fully cooperated in expeditious hearing, no costs.
Decree sheet be drawn up.
RAJIV SAHAI ENDLAW, J.
JULY 29, 2019 „gsr‟ CS(COMM) No.364/2019 Page 22 of 22