Delhi High Court holds spoken use of trademark to be infringing

In Hamdard National Foundation v Dalal (CS(OS) 1225/2013) the plaintiffs filed a suit before the Delhi High Court for trademark infringement, passing off, commercial disparagement and tarnishment of goodwill. The plaintiffs alleged that the defendants had depicted the plaintiffs' well-known brand Rooh Afza in a detrimental way through spoken words by the lead actor in the film Yeh Jaawani Hai Deewani.

In the film the contentious scene depicts a mother who is trying to reassure her son that everything will be alright no matter what difficulties he is facing; the son responds by saying that everything can change but Rooh Afza (which he is drinking at the time) will never change and will continue to be awful. The plaintiffs alleged that this defamatory statement was aimed directly towards their product.

Infringement
The single judge found that the term "use" was to be construed in the context of Section 29(9) of the Trademarks Act 1999 which, for the purpose of infringement, explicitly refers to "the spoken use" of words contained in the mark. The single judge also held that the term "by their visual representation", on a complete reading of the subsection, implied that a visual representation of the spoken word was an infringement of the trademark in question.

The single judge further observed that the test for adjudging infringement in the case at hand would primarily be either the spoken words being a misstatement leading to infringement or causing confusion and deception leading to passing off, or the spoken words leading to infringement by causing dilution of the distinctive character and reputation of the trademark (whether intentional or unintentional).

Application of Bata India Limited v Prakash Jha Productions
The single judge examined the decision and approach taken by the Supreme Court in Bata India Limited v Prakash Jha Productions pertaining to the film Chakravyuh, whereby the Apex Court had observed the lyrics in the film to portray certain business houses (Tata, Birla and Bata) in a bad light, which could have been avoided. Accordingly, the Apex Court directed the film's producers to add a disclaimer indicating that there was no intent to damage the goodwill of those whose interests were likely to be affected.

However, the single judge found the Apex Court's decision in the Bata case to be different to the case at hand. The single judge held that while the lyrics in the Bata case were aimed at a particular class (ie, industrialists), the contested dialogue in the case at hand was aimed directly at a "singular commercial product" which enjoyed a reputation and goodwill in India, thereby affecting its popularity among the public.

Freedom of speech and expression
One of the issues that arose during the case pertained to the right to freedom of speech and expression guaranteed under Article 19(1)(a) of the Constitution, and the limitation and reasonable restrictions imposed on such right by Article 19(2). The single judge, while synchronising the two provisions of the Constitution, held that the right to freedom of views, speech and expression through speech under Article 19(1)(a) is not an absolute right; Article 19(2) safeguards against the exploitation or abuse of such right. 

Applying this principle to the case at hand, the single judge held that the law preventing trademark infringement through the spoken word is a commercial law preventing unfair or untrue commercial speech, which may cause injury to the rights holder in order to prevent disparagement. Such law is related to the tort of defamation and thus is an excepted matter under Article 19(2).

Therefore, the single judge held that the offending dialogue in the film was in bad taste and should have been avoided, as it was likely to tarnish the plaintiffs’ reputation.   

In view of these findings, the single judge held that trademark infringement could be caused by the spoken words and visual depiction of the opinion stated in the film. Thus, the single judge held that a prima facie case of infringement and passing off had been established. However, the single judge held that since the film had already been released around the world, no injunction could be granted to the plaintiffs since the balance of convenience and irreparable injury was in favour of the defendants.

Therefore, the single judge held that the only relief which could be accorded to the plaintiffs was prevention of any future infringement by omitting the contested dialogue from the film in any future release to the public. The single judge restrained the defendants and persons acting on their behalf from releasing the film on DVD or any other format, or broadcasting the film on television, containing the contested dialogue. The single judge also made it explicit that this order did not apply to the cinema version of the film that had already been released.