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2023 Supreme(Del) 5463
IN THE HIGH COURT OF DELHI AT NEW DELHI
Prathiba M. Singh, J.
Himalaya Wellness Company & Ors. - Appellants
Versus
Prk Productions LLP - Respondent
CS(COMM) No. 844 of 2023 and I.A. No. 23488 of 2023
Decided On : 15-12-2023
Mr. Pravin Anand, Ms. Prachi Agarwal, Mr. Ridhie Bajaj & Ms. Kanupriya Chawla, Advocates, for the Plaintiffs; Ms. Samapika Biswal, Ms. Nidhisha Garg & Mr. Aman Kumar Yadav, Advocates, for the Defendant.
IMPORTANT POINT
Trademark infringement in film depiction and the requirement to seek approval from the Censor Board for proposed changes.
Headnote:
Trademark Infringement - Film Depiction - Copyright Act, 1957, Section 2(c); Cinematograph Act, 1952; Cinematograph (Censorship) Rules, 1958
Fact of the Case:
The Plaintiffs, Himalaya Wellness Company and group companies, filed a suit against the depiction of their mark 'HIMALAYA' as 'VIMALAYA' in a Kannada feature film 'Aachar & Co'. The Plaintiffs claimed that their products were incorrectly depicted in the film, and sought the removal of references to their brands.
Finding of the Court:
The Defendant agreed to make changes in the film to address the Plaintiffs' grievances. The Court decreed the suit in favor of the Plaintiffs, accepting the Defendant's proposed changes and directing the submission of the edited film to the Censor Board for approval.
Issues: Trademark infringement, incorrect depiction of products in a film, relief sought by the Plaintiffs.
Ratio Decidendi: The Court found that the film depicted the Plaintiffs' products and mark in a manner that could mislead viewers. The Defendant's agreement to make changes and seek approval from the Censor Board led to the Court's decision in favor of the Plaintiffs.
Final Decision: The suit was decreed in favor of the Plaintiffs, and the Defendant was directed to implement proposed changes in the film and seek approval from the Censor Board.
JUDGMENT
Prathiba M. Singh, J. (Oral) - This hearing has been done through hybrid mode.
2. The present suit has been filed by the Plaintiffs-Himalaya Wellness Company and two group companies who are aggrieved by the depiction of the mark 'VIMALAYA' along with various other products of the Plaintiffs in the Kannada feature film titled 'Aachar & Co' (hereinafter, the film).
3. The Plaintiffs are stated to have been involved in the manufacture and distribution of ayurvedic medicaments since 1930. The Plaintiffs operate under the umbrella brand Himalaya, since 1930. Over the years, the Plaintiffs offer a diverse range of health and wellness products, cosmetics etc., under the name 'Himalaya'.
4. Some of the products of the Plaintiffs sold under the Himalaya brand include 'Liv.52', 'GERIFORTE', 'EVECARE' etc. The product 'Liv.52', is stated to be the flagship brand of the Plaintiffs and a top selling herbal medicine synonymous with the Plaintiffs' Himalaya brand.
5. It is averred that the Plaintiffs sell a range of products, including 'Liv.52', 'GERIFORTE' and 'EVECARE' and its formative marks along with the mark Himalaya and other several label marks. It pertinent to note that the marks 'Liv.52', 'GERIFORTE' and 'EVECARE' (including its associate and formative marks) of the Plaintiffs is exclusively associated with the 'HIMALAYA' brand.
6. It is also averred that the artwork underlying various stylistic representations of the Plaintiffs' mark 'HIMALAYA', 'Liv .52', 'GERIFORTE', 'EVECARE' trade marks as well as the associated trade dress, constitute original artistic works within the meaning of Section 2(c) of the Copyright Act, 1957. The Plaintiffs claim to be the first owner of the copyright in each of the said artwork/label/logo by virtue of Section 17 of the Copyright Act, 1957.
7. The Plaintiffs are the owners of several trade mark and copyright registrations in the name HIMALAYA as well as the marks and product names.
8. The Plaintiffs' grievance is that in the film, the protagonist posing as a sales representative, is going door-to-door, attempting to sell products to the customers. In the film, the protagonist uses dialogues/script/contents using similar/identical names to the Plaintiffs' registered 'HIMALAYA', 'Liv.52', 'GERIFORTE', 'EVECARE'. The name 'VIMALAYA' is employed in lieu of 'HIMALAYA', and the Plaintiffs' brands depicted in the film are also not accurately represented in terms of the product packaging. Some of the photographs displaying the manner of use by the Defendant are as follows:
9. Ld. Counsel for the Plaintiffs submits that there is a complete distortion of the Plaintiffs' name 'HIMALAYA' to 'VIMALAYA' in the film, and the Plaintiffs' products are incorrectly depicted. The film misleadingly represents that the products displayed under the mark 'Liv.52', 'GERIFORTE' & 'EVECARE' are emanating from 'VIMALAYA' and whereas, in fact, all the said brands are registered trade marks of the Plaintiffs.
10. Heard. The film - 'Aachar & Co.' was released in July, 2023 and upon realizing the incorrect usage of the Plaintiffs' house mark 'HIMALAYA', trade marks and brands, the Plaintiffs issued a notice to the Defendant, who is the producer of the film. A legal notice dated 29th August, 2023 was issued calling upon the Defendant to remove the references and scenes featuring the products of the Plaintiffs from all media platforms. As the film is available on Amazon Prime, the notice was also sent to Amazon Sellers Services Pvt. Ltd. (hereinafter ASSPL) and to PRK Productions LLP- the producers of the film.
11. Subsequently, a reply was received from ASSPL, dated 5th September, 2023, stating that, in the present case, Amazon is simply a licensee of the film from the producer. Accordingly, the details of the producer were furnished. ASSPL asserted that any grievances and remedies should be directed toward the licensor, as ASSPL is only exercising its rights based on the agreement with PRK Productions LLP. It was also mentioned tha
