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2023 Supreme(Online)(Del) 20113
DELHI HIGH COURT
HIMALAYA WELLNESS COMPANY & ORS. – Appellant
Versus
PRK PRODUCTIONS LLP – Respondent
CS(COMM)-844_2023
Unauthorized use of a registered trademark and copyright in a film constitutes infringement.
Headnote:
TRADEMARK - COPYRIGHT INFRINGEMENT - Depiction of similar/identical names to the Plaintiffs’ registered ‘HIMALAYA’, ‘Liv.52’, ‘GERIFORTE’, ‘EVECARE’ in the film ‘Aachar & Co.’ without authorization constitutes infringement of trademark and copyright.
Fact of the Case:
The Plaintiffs, Himalaya Wellness Company and two group companies, filed a suit against the Defendant, PRK Productions LLP, for depicting the mark ‘VIMALAYA’ along with various other products of the Plaintiffs in the Kannada feature film titled ‘Aachar & Co.’ without authorization. The Plaintiffs claimed that the depiction of the mark ‘VIMALAYA’ and their products in the film infringed their trademark and copyright.
Finding of the Court:
The Court found that the Defendant’s use of the mark ‘VIMALAYA’ and the Plaintiffs’ products in the film without authorization constituted infringement of the Plaintiffs’ trademark and copyright. The Court noted that the Plaintiffs had registered trademarks for all the brands depicted in the film and that the Defendant’s use of the mark ‘VIMALAYA’ was likely to cause confusion among consumers.
Issues: Whether the Defendant’s use of the mark ‘VIMALAYA’ and the Plaintiffs’ products in the film without authorization constituted infringement of the Plaintiffs’ trademark and copyright.
Ratio Decidendi: The Court held that the Defendant’s use of the mark ‘VIMALAYA’ and the Plaintiffs’ products in the film without authorization constituted infringement of the Plaintiffs’ trademark and copyright. The Court noted that the Plaintiffs had registered trademarks for all the brands depicted in the film and that the Defendant’s use of the mark ‘VIMALAYA’ was likely to cause confusion among consumers.
Final Decision: The Court decreed the suit in favor of the Plaintiffs and ordered the Defendant to remove the references and scenes featuring the products of the Plaintiffs from all media platforms. The Court also directed the Defendant to implement the proposed changes within 15 days and provide a pen-drive containing the edited version of the film to the Plaintiffs for confirmation.
$~45
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IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 15thDecember, 2023
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CS(COMM) 844/2023 & I.A. 23488/2023
HIMALAYA WELLNESS COMPANY & ORS.
..... Plaintiffs
Through:
Mr.
Pravin
Anand,
Ms.
Prachi
Agarwal, Mr. Ridhie Bajaj & Ms.
Kanupriya
Chawla,
Advs.
(M:
9958045858)
versus
PRK PRODUCTIONS LLP
..... Defendant
Through:
Ms. Samapika Biswal, Ms. Nidhisha
Garg & Mr. Aman Kumar Yadav,
Advs. (M:8104694675)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1.
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’.
Digitally Signed
By:DHIRENDER KUMAR
Signing Date:18.12.2023
17:07:38
Signature Not Verified
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
Digitally Signed
By:DHIRENDER KUMAR
Signing Date:18.12.2023
17:07:38
Signature Not Verified
accurately represented in terms of the product packaging. Some of the
photographs displaying the manner of use by the Defendant are as follows:
Digitally Signed
By:DHIRENDER KUMAR
Signing Date:18.12.2023
17:07:38
Signature Not Verified
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.
Digitally Signed
By:DHIRENDER KUMAR
Signing Date:18.12.2023
17:07:38
Signature Not Verified
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,
