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2008 Supreme(Del) 994
IN THE HIGH COURT OF DELHI
REVA KHETRAPAL
WARNER BROS.ENTERTAINMENT INC. - Appellant
Versus
HARINDER KOHLI - Respondent
IA No.9600/2008 in CS(OS) 1607/2008
Decided On : 22-09-2008
Mr. Sudhir Chandra Agarwal, Sr. Advocate with Ms. Binny Kalra, Ms. Shwetasree Majumdar and Ms. Diva Arora, Advocates.
Mr. Arun Jaitley, Sr. Advocate and Mr. Rajiv Nayar, Sr. Advocate with Ms. Prathiba M.Singh, Mr. Deepak and Mr. Gaurav Miglani, Advocates.
Deliberate suppression of material facts and false assertions disentitles a party to equitable relief. Delay in seeking legal recourse may shift the balance of convenience in favor of the opposing party.
Headnote:
Trademark Infringement - Interim Injunction - Code of Civil Procedure - Order XXXIX Rules 1 and 2 - Section 151 - Amritdhara Pharmacy vs. Satya Deo Gupta (1963) 2 SCR 484 - M/s. Hitachi Ltd. vs. Ajay Kumar Agarwal 1996 PTC (16) (DB)
Fact of the Case:
The plaintiffs sought an interim injunction to restrain the defendants from releasing a film titled HARI PUTTAR, claiming it infringed their trademark HARRY POTTER. The plaintiffs alleged that the film's title created confusion and deception, leading to unfair competition and passing off.
Finding of the Court:
The court found that the plaintiffs' deliberate suppression of material facts and false assertions disentitled them to equitable relief. The court also noted that the defendants had invested substantial sums and entered into various agreements for the film's release, while the plaintiffs had delayed in taking legal action.
Issues: The issues included trademark infringement, passing off, deliberate suppression of material facts, and delay in seeking legal recourse.
Ratio Decidendi: The court held that deliberate suppression of material facts and false assertions disentitled the plaintiffs to an injunction. The court also emphasized the principle of vigilentibus non dormientibur enquitor, stating that the plaintiffs' belated attempt to stop the defendants at the finishing line was unacceptable.
Final Decision: The court dismissed the plaintiffs' application for an interim injunction, finding that the plaintiffs had failed to establish a prima facie case for the grant of relief and that the balance of convenience tilted heavily in favor of the defendants.
1. This order shall dispose of the plaintiffs application under Order XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil Procedure seeking an interim injunction, inter alia, restraining the defendants from releasing the defendants film under the trademark/title HARI PUTTAR. The application has been filed in a suit for permanent injunction restraining infringement of trademarks, passing off, dilution, damages and rendition of accounts of profits earned by the defendants by use of the impugned trademark/title; and for an order of transfer of the domain name www.hariputtarthefilm.com to the plaintiffs.
2. The plaintiffs assert in the plaint that the plaintiff No.1 applied for and secured trademark registration in India for the word mark HARRY POTTER under Nos.1111702 in Class 9, 1111703 in Class 16, 917454 in Class 25, 917453 in Class 28 and 1246560 in Class 41, and that the defendants are guilty of infringing the aforesaid registered trademarks of the plaintiffs by the act of naming their film HARI PUTTAR, which is visually and phonetically similar to the plaintiffs trademark HARRY POTTER.
3. The plaintiffs further assert that HARRY POTTER, it is well known, is the protagonist of a series of seven novels written by British author Ms. J.K. Rowling, which chronicle the adventures of the adolescent wizard Harry Potter together with his best friends Ronald (Ron) Weasley and Hermione Granger, who are his classmates from the Hogwarts School of Witchcraft and Wizardry. The narrative begins with infant Harrys heroic survival against the evil magic of the dark wizard Lord Voldemort who killed Harrys parents but failed to send Harry to the same fate, for which the latter earned the sobriquet of The Boy Who Lived. Owing to his tragic circumstances, Harry was forced to live with his muggle (Non-magical or rather human) Aunt Petunia, Uncle Vernon and cousin Dudley. The seven books, viz., Harry Potter and Sorcerers Stone, Harry Potter and the Chamber of Secrets, Harry Potter and the Goblet of Fire, Harry Potter and the Order of Phoenix, Harry Potter and the Prisoner of Azkaban, Harry Potter and the Half-Blood Prince and Harry Potter and the Deathly Hallows, grippingly tell the story of Harrys many adventures, his trysts with good and evil, the destruction of his enemies and about his struggle for survival.
4. Plaintiffs further assert that a series of five films based on the aforesaid novels have already been released, while the sixth is on the anvil and scheduled to be released on 21st November, 2008. The Harry Potter series of films have received wide acclaim and the overwhelming popularity of the books as well as the films has made the HARRY POTTER trademark instantly identifiable and recognizable as being associated with the plaintiffs.
5. The defendant No.1 Mr. Harinder Kohli, is a citizen of the United Kingdom, and the proprietor of Dream Town Productions Ltd., i.e., the defendant No.2, who claims that he has produced several films and animation projects and has distributed worldwide, animated classics such as Peter Pan, Alice in Wonderland, Hunchback of Notre Dam, Jungle Book, etc. in various European languages such as German, Dutch, Spanish, French, etc. The defendant No.3 Munish Purii, is the Chief Operating Officer of the defendant No.4 Company Mirchi Movies Limited, and is one of the co-producers of the film Hari Puttar A Comedy of Terrors with the defendants No.1 and 2. The defendant No.4 Mirchi Movies Limited, is a part of the Times Group and is a wholly owned subsidiary of Times Infotainment Media Limited, which is also in the business of producing films including the landmark Being Cyrus.
6. In April, 2007, the defendant No.4 entered into a Film Acquisition Agreement with the defendant No.2 and, as per this agreement, the defendant No.4 now owns the entire rights in the said film with a profit sharing arrangement between the defendants No.2 and 4. At the time of the execution of the said agr
