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2006 Supreme(Del) 1233
High Court Of Delhi
VIKRAMAJIT SEN
BISWAROOP ROY CHOUDHARY - Appellant
Versus
KARAN JOHAR - Respondents
CS (OS) 467 Of 2006
Decided On : 07/28/2006
PREM G.GIDWANI, R.K.KHURANA, S.K.BANSAL, S.P.DAS, SHYAM KESWANI, VIKAS DHAVAN
The central legal point established in the judgment is that proprietary or exclusive use of a common word should not be given legal recognition, and delay in approaching the court for equitable relief is fatal.
Headnote:
Trademark - Interim Injunction - Code of Civil Procedure - Trade Marks Act - Section 151 - Class 41 - KANK - [Order xxxix Rules 1 and 2, Section 151, Trade Marks Act, Class 41] - The court discussed the application of interim injunction under Order xxxix Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, and the rights of the parties under the Trade Marks Act in Class 41. The court considered the factual matrix and the legal principles related to the protection of literary titles and trademarks, and ultimately dismissed the application for injunction.
Fact of the Case:
The Plaintiff sought an interim injunction to restrain the Defendants from using the trademark/title KANK and making adverse statements against the Plaintiff. The Plaintiff claimed to have applied for registration of the trademark/title KANK and alleged that the Defendants had used the title without authorization. The Defendants asserted that they had obtained the title from third parties and had completed the production of the film KANK.
Finding of the Court:
The court found that the Plaintiff was not entitled to an injunction as neither party had originated the title KANK, which was a common phrase in India. The court noted that the Defendants had completed the production of the film and were ready for commercial release, while the Plaintiff had not made substantial progress in production. The court also observed that the Plaintiff's delay in initiating legal action and the likelihood of passing off had diminished, leading to the dismissal of the application for injunction.
Issues: The issues involved the alleged unauthorized use of the trademark/title KANK by the Defendants, the delay in initiating legal action by the Plaintiff, and the balance of convenience in granting injunctory relief.
Ratio Decidendi: The court emphasized that proprietary or exclusive use of a common word should not be given legal recognition. The court also highlighted the importance of actual user of the trademark and the fatal nature of delay in approaching the court for equitable relief. Additionally, the court expressed disapproval of protecting 'squatter' claims and viewed the suit as malafide.
Final Decision: The court dismissed the Plaintiff's application for an interim injunction, citing the lack of merit and the Defendants' readiness for commercial release of the film KANK. The court refrained from imposing costs on the Defendants due to their failure to respond to the legal notice.
VIKRAMAJIT SEN, J.
( 1 ) THESE Orders shall dispose of the Plaintiff's application under Order xxxix Rules 1 and 2 read with Section 151 of the Code of Civil Procedure seeking an interim injunction restraining the Defendants from using the trademark/title kabhi Alvida Naa Kehna (hereinafter referred to as 'kank') and from making any adverse statements against the Plaintiff. The application has been filed in this Suit for permanent injunction; for rendition of accounts of profits earned by the Defendants under the impugned trademark/title; and for a decree directing the Defendants to deliver-up all material pertaining to the impugned trademark/title for the purpose of destruction.
( 2 ) THE Plaintiff asserts that he had applied for registration of the trademark/title KANK on 17. 5. 2005 under the Trade Marks Act in Class 41. The registrar had ordered its advertising on 20th June, 2005, which occurred on the journal dated February 15, 2006. Thereafter, on 23. 6. 2005 the Mahoorat of the film had taken place in the presence of Ms. Aruna Irani. It is submitted that the Plaintiff commenced Production. At the time of arguments it has been conceded by learned counsel for the Plaintiff that only about 40 per cent of the shooting has been undertaken. Although some newspapers and trade magazines carried reports of the Defendants film under the same name KANK, the Plaintiff could not initiate legal action predicated on such reports. In September, 2005 the Defendants' Mahoorat took place and immediately thereafter the Plaintiff issued a legal notice dated 13. 10. 2005 to the Defendants. A communication was also addressed to the Registrar of Trademarks informing it of the disputed use of the film title.
( 3 ) THE Defendants, however, have asseverated that on 13. 1. 2005 they had approached the Secretary, Association of Motion Pictures and TV Programme producers for the title registration of KANK-Feature Film and TV. By letter dated 7. 5. 2005 a 3rd party, namely, Mr. Vinod Pande, had transferred this title, apparently registered by him, to the Defendants. Similarly, Ms. Aruna Irani as director of A. K. Films Pvt. Ltd. had also transferred the title to the defendants but restricting it to be used for a film only. The Defendants have also filed photocopies of the Notice circulated by the Association of Motion pictures and T. V. Programme Producers dated 12. 5. 2005, thereby informing the public that the feature film KANK stood registered in favour of the Defendants. The Defendants have filed photocopy of the letter dated 14. 6. 2005 of the Film and Television Producers Guild of India (hereinafter referred to as Guild)recording registration of this title in their favour. Learned counsel for the defendants have not controverted the fact that although the Plaintiff's legal notice had been received by the Defendant, no Reply thereto has been filed. In June 2005 the Defendants had addressed two letters to the Guild complaining of the competing use of the title KANK.
( 4 ) IT is within this factual matrix that the rights of the parties fall to be determined.
( 5 ) MR. Bansal, learned counsel for the Plaintiff, contends that reliance on Press Reports of competing and conflicting use of the title KANK was not sound foundation for initiation of legal action, keeping in view the opinion of the Supreme Court in State of Haryana v. Ch. Bhajan Lal, AIR 1993 SC 1348. Even if this is so, there is no plausible explanation for the Plaintiff's failure to initiate legal action immediately upon the Mahoorat performed by the Defendants in September 2005. This aspect of the case shall be reverted to later. Delay is always a determinative factor in debates relating to interim injunctions.
( 6 ) MCCARTHY on Trademarks contains the following exposition of the law which is topical to the present dispute: the term ?literary title? is used here to encompass titles of books, periodicals, newspapers, plays, motion pictures, television series, songs, phonograph recor
