*IN THE HIGH COURT OF DELHI AT NEW DELHI % Date of decision: 20th February, 2014.

+ CS(OS) 3466/2012 DISNEY ENTERPRISES INC. & ANR. ..... Plaintiffs Through: Mr. Aditya Kutty, Adv.

Versus BALRAJ MUTTNEJA & ORS. ..... Defendants Through: None.

CORAM :-

HON’BLE MR. JUSTICE RAJIV SAHAI ENDLAW

1. The plaintiffs have filed this suit inter alia claiming infringement and dilution of their registered trade marks and violation of their copyrights by the defendants, as well as passing off by the defendants of their goods as those of the plaintiffs, on account of use by the defendants of certain cartoon characters on their goods over which the plaintiffs assert exclusive rights.

2. The case of the plaintiffs as reflected in their plaint is thus:

I. that the plaintiff no. 1 M/s Disney Enterprises Inc. is a corporation organized and existing in the United States of America and is the creator of a number of world-famous characters such as Mickey Mouse, Minnie Mouse, Donald Duck, Daisy Duck, Winnie the Pooh, Hannah Montana, Tigger, Piglet, Eeyore etc. and has thus the exclusive right to use and authorize/license the use of such characters and character names (hereinafter collectively referred to as „DEI Materials‟);

II. that the plaintiff no.1, to protect its rights in the DEI Materials has registered several trade marks and copyrights with respect thereto, across a number of countries including India, and characters such as Disney and Mickey Mouse have also been accorded the status of „well-known marks‟ by the Delhi High Court;

III. that the plaintiff No. 2 M/s The Walt Disney Company (India) Pvt. Ltd. is the Master Licensee in respect of the DEI Materials in India and thus infringement of the registered trade marks and copyrights of the plaintiff no.1 detrimentally affects the business interests of the plaintiff no. 2;

IV. that the plaintiffs by utilizing the DEI Materials in conjunction with manufacturing, marketing, supplying, selling and distributing a wide variety of products/services for over fifty years all across the world, have earned immense goodwill and reputation in the DEI Materials and which has resulted in the consuming public intensely associating the DEI Materials exclusively with the goods/services of the plaintiffs;

V. that each of the characters of the plaintiffs is distinctive and capable of being recognized in isolation without the need for any context and amongst the most discernible features of such characters is their anthropomorphic nature i.e. the ability to feel and express emotions like human beings, and therefore the presence of any feature/trait which results in the customer relating to the plaintiffs‟ characters is sufficient to constitute infringement/unauthorized use, even if all the features of a character may not have been infringed;

VI. that the plaintiffs, in November, 2012 learnt about the defendant no. 1 Mr. Balraj Muttneja and defendant no. 2 Mr. Jaspal Muttneja running and operating affiliate entities defendant no. 3 M/s J.J. International (being the manufacturing/factory unit) and defendant no. 4 M/s Balraj International (being the supply/distribution outlet) for the purpose of manufacturing and selling confectionary items such as chocolates etc. under the brand name „Tasty Bear‟ bearing the plaintiff‟s DEI Materials like Winnie The Pooh, Tigger, Eeyore and Piglet, without the consent/authority of the plaintiffs;

VII. that such unauthorized use by the defendants of the DEI Materials of the plaintiffs is with a dishonest and mala fide intention to ride upon and benefit from the plaintiffs‟ hard- earned reputation/goodwill, and thus - (a) constitutes infringement and dilution of the registered trade marks of the plaintiffs within the meaning of Section 29 of the Trade Marks Act, 1999, (b) violates plaintiffs‟ copyright subsisting in the said artistic works under Section 51 of the Copyright Act, 1957 and, (c) amounts to the defendants passing off their goods as those of the plaintiff.

Accordingly, the plaintiffs