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IN THE HIGH COURT OF DELHI
Sanjeev Narula, J.
Dr. Reddy's Laboratories Limited - Appellant
Versus
Eros International Media Limited - Respondent
CS(COMM) 126 of 2021
Decided On : 23-03-2021
The court ruled that the failure to demonstrate distinctiveness and continuous use of the trademark, along with the contextual use in a fictional film, does not establish infringement or disparagement.
Headnote:(A) Trade Marks Act, 1999 - Section 29 - Allegation of trademark infringement - Plaintiff, a pharmaceutical company, claimed unauthorized derogatory use of its registered trademark ‘DRL’ in a film, impacting its reputation and goodwill. The court found plaintiff lacked sufficient evidence of distinctiveness and continuous use of the mark since registration. Consequently, the accusations of infringement and disparagement were dismissed, emphasizing the defendant's use in a fictitious context and the lack of confusion among the public. (Paras 4, 14, 26)
(B) Right to Free Speech - The court also noted that the freedom of expression in artistic works cannot be curtailed unless a strong case is made for infringement or defamation, which was not established here. (Paras 24, 25)
Facts of the case:
The plaintiff claimed that the film ‘Haathi Mere Saathi’ portrayed its brand as a villainous corporation harming the environment, and sought an injunction against its release. The defendants contended the film's use of ‘DRL’ referred to a fictional entity, ‘Drishti Refineries Limited’, and denied any intentional disparagement.
Findings of Court:
The court concluded that the plaintiff did not establish a prima facie case for infringement as well as a lack of distinctiveness associated with 'DRL'.
Issues: The main issues included whether the use of ‘DRL’ in the work infringes the plaintiff's trademark and whether the plaintiff's claims were based on sufficient evidence.
Ratio Decidendi: The court determined that without strong proof of trademark use and distinct association, the plaintiff's arguments for relief fell short of legal requirements, especially given the fictional context of the work and absence of public confusion.
Result: Application for injunction 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 rep
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