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2021 Supreme(Del) 85
IN THE HIGH COURT OF DELHI AT NEW DELHI
Sanjeev Narula, J.
Dr. Reddy’s Laboratories Limited - Plaintiff
Versus
Eros International Media Limited and Anr. - Defendants
CS(COMM) 126 of 2021
Decided On : 23-03-2021
For the Plaintiff :Mr. Chander M. Lall, Senior Advocate with Mr. Raman Narula, Mr. Shashi P. Ojha and Ms. Nancy Roy, Advocates.
For the Defendant :Mr. Sandeep Sethi, Senior Advocate with Mr. Neel Mason, Ms. Ridhima Pabbi and Ms. Ekta Sharma, Advocates
Point of Law: Intellectual Property Law - Trademark/brand ‘DRL’ – Registered trademark ‘DRL’ in relation to goods in Class 05 i.e., pharmaceutical preparations - Infringement of registered trade mark - Use of a trademark, as the object of a critical comment, or even attack, does not necessarily result in infringement. Sometimes the same mark may be used, as in Esso; sometimes it may be a parody (like in Laugh it Off and Louis Vuitton). If the user’s intention is to focus on some activity of the trademark owners, and is “denominative”, drawing attention of the reader or viewer to the activity, such use can prima facie constitute “due cause” under Section 29(4), which would disentitle the plaintiff to a temporary injunction, as in this case.
Headnote:
Trade Marks Act, 1999 - Section 29, 29 (6) and (8) - Constitution of India, 1950 - Article 19(1)(a) – Registered Trade mark – What is plaintiff’s right over the ACRONYM/LETTERS ‘DRL’ - Whether fundamental right of Defendant, as enshrined under Article 19(1)(a) of Constitution of India for free speech and expression, can be taken away at instance of a Plaintiff on specious pleas - Whether the usage of ‘DRL’ in the movie amounts to infringement of the plaintiff’s trademark - Seeks urgent interlocutory injunction to restrain the release of a feature seeks urgent interlocutory injunction to restrain release of a feature film named ‘Haathi Mere Saathi’ (alternately titled ‘Kaadan’ in Tamil and ‘Aranya’ in Telugu) [movie”] via any media platform such as cinemas, OTT, etc., alleging that movie disparages Plaintiff’s registered trademark/brand ‘DRL’ - Plaintiff is a multinational pharmaceutical company engaged in the business of manufacturing, marketing and distribution of pharmaceutical, nutritional and cosmetic products, having its headquarters located at Hyderabad. It is the registered proprietor of the word mark ‘DRL’ under Trade Mark Plaintiff is a multinational pharmaceutical company engaged in the business of manufacturing, marketing and distribution of pharmaceutical, nutritional and cosmetic products, having its headquarters located at Hyderabad. It is registered proprietor of the word mark ‘DRL’ under Trade Mark.
Finding of the court: Plaintiff perceives movie to be a ""serious representation of fictional facts which could be a reality" and argues that “untruthful speech is not protected under Article 19(1)(a) of the Constitution” - DRL Township’/‘DRL Township Group’ cannot be appreciated, de hors context of movie, wherein complete name of fictitious entity, Drishti Refineries Limited, is stated to have been used explicitly - Moreover, to address concern of Plaintiff, counsels for the Defendants have assured this Court that the movie is preceded by a disclaimer to effect that “all characters appearing in this work are fictitious. Any resemblance to real persons, living or dead, is purely co-incidental.” Therefore, in view of Court, prima facie case is not made out in favour of Plaintiff - Ground of delay itself, the Plaintiff would be disentitled to relief of injunction as sought for in present application - Plaintiff has not been to able make out a case of irreparable loss that it would suffer if the movie is released - Plaintiff can always, in such circumstances, if it succeeds in establishing its case in trial, cement its claims for compensation and damages - Defendant has pointed out that teaser of movie, which contained alleged infringing use, was published in the month of February, 2020 and has garnered millions of view on YouTube - Yet, Plaintiff has approached the doors of justice just days before release of movie - In fact, it is the admitted case of Plaintiff that upon sighting alleged use of its mark in 2020, Plaintiff sent a legal notice but the teaser was not brought down by Defendants - Plaintiff, despite receiving no response for same, Plaintiff did not approach the Court. Plaintiff has failed to meet the three-pronged test for grant of injunction - Plaintiff does not have a prima facie case in its favour, balance of convenience is in favour of Defendants and not in favour of the Plaintiff.
Result: Application dismissed.
JUDGMENT :
SANJEEV NARULA, J.
I.A. 4237/2021 (u/O. XXXIX Rules 1&2 CPC seeking interim relief)
1. The Plaintiff seeks urgent interlocutory injunction to restrain the release of a feature film named ‘Haathi Mere Saathi’ (alternately titled ‘Kaadan’ in Tamil and ‘Aranya’ in Telugu) [hereinafter referred to as “the movie”] via any media platform such as cinemas, OTT, etc., alleging that the movie disparages Plaintiff’s registered trademark/brand ‘DRL’.
2. Briefly stated, the facts giving rise to the present dispute are as follows:
(i) The Plaintiff is a multinational pharmaceutical company engaged in the business of manufacturing, marketing and distribution of pharmaceutical, nutritional and cosmetic products, having its headquarters located at Hyderabad. It is the registered proprietor of the word mark ‘DRL’ under Trade Mark Registration No. 1529767 dated 09th February 2007 in Class 05 (pharmaceutical preparations).
(ii) The Plaintiff maintains that its impeccable reputation is at the core of its existence and a large segment of the population knows its business as ‘DRL’. It claims that the mark/brand ‘DRL’ has acquired distinctiveness and is associated only with the Plaintiff. The Plaintiff claims that ‘DRL’ has been openly, continuously, extensively and exclusively used by them as well as third parties in various promotion materials, press reports and other publications. They have subsidiaries that have DRL as part of their corporate name, such as ‘DRL Impex Ltd. and ‘DRL Investments Ltd.’. Since 1986, its reputation has spread far and wide by virtue of its corporate social governance (CSR) initiatives.
(iii) Defendant No. 1 is a leading global motion movie production and distribution company incorporated in 1981. It is producing and releasing the movie (Haathi Mere Saathi), which has been directed by Mr. Prabhu Solomo (the Defendant No. 2).
(iv) In the last week of February, 2020, the Plaintiff discovered that the Defendant media house is using/portraying the Plaintiff’s word mark/brand ‘DRL’ in the trailer video of the movie, as part of the name ‘DRL Township’, in a derogatory/disparaging manner. The plot of the movie centres on the destruction of an elephant corridor and habitat, by a corporate entity named ‘DRL’, for the construction of its ‘DRL Township’.
(v) The Plaintiff is aggrieved that such unauthorized use of ‘DRL’ as part of the movie plot, as one acting for commercial exploitation and gain with no regard to the environment, and showing its brand in a poor light, is purposeful, mala fide and intended to detriment the distinctive character, reputation and goodwill of the plaintiff’s brand.
(vi) Despite notice dated 03rd March, 2020 by the Plaintiff to the Defendants asking for deletion of the relevant scenes from the movie, no reply was received. However, the movie was not released on its originally set date of 2nd April, 2020.
(vii) Then on 3rd or 4th March, 2021, Defendants launched the trailer video of the movie on YouTube, spotting which, the Plaintiff issued another letter/notice dated 8th March, 2021 to the Defendants. Defendant No. 1 replied through their advocate on 12th March, 2021, denying all allegations therein and refusing to comply with the requisitions thereof. The movie is now slated to be released on 26th March, 2021.
(viii) The Plaintiff fears that such use of its mark in the movie will impact its: (a) sales, (b) power to attract talent for R&D/innovation, (c) new collaboration, (d) share price, (e) business partners, (f) morale of employees, (g) repute among existing stakeholders, as, they would assume and carry the impression that the Plaintiff must have been part of encroachment of a restricted area, for which reason the producers have chosen the name ‘DRL Township’ for its movie.
(ix) Moreover, the use of ‘DRL’ will have the inevitable consequence of: (a) exposing the Plaintiff to hatred, ridicule or humiliation, (b) injuring the Plaintiff in their profession or trade, and (c) lowering the reputation of the
