Recently an order was passed by
the Delhi High Court in Hamdard National Foundation Vs Hussain Dalal [CS
(OS) No.1225/2013] that a trademark infringement could be caused by spoken
words and visual depiction of the opinion. A suit has been filed by the Hamdard
National Foundation for infringement of trade mark, passing off, commercial
disparagement and tarnishment of goodwill and damages.
It is the grievance of the
plaintiffs that the defendants have recently released the movie with the name
YEH JAWAANI HAIN DEEWANI and the said movie contains some dialogues which
somehow show the well known product ROOHAFZA in the manner which is detrimental
to the interests of the plaintiffs as a proprietor. The plaintiffs in order to
fortify its stand have reproduced the offending dialogues in the film which are
reproduced as under:
a) Son: "Yeh Roohafza Bahut
Bekaar Hai!"
b) Mom: "Sab Thik Ho
Jayega!"
c) Son: "Siwaye Is Roohafza
Ke.... Bahut Bura Hai"
The plaintiffs contend that the
said conversation between the mother and son in the film depicts a kind of
household wherein mom tries to console his son that everything will be alright
no matter what difficulties he is facing and in response to the same, the son
responds that everything can change but this ROOHAFZA will remain the same and
continue to bad.
The Hon’ble High Court found that
the provisions of the Trade Mark Act, 1999 explicitly provide for the
infringement of the trade mark by way of spoken use if the representation is
made to the public. This is evident from the Section 2 (2) and Section 29 (9) of
the Trade Mark Act 1999.
The Provision of Section 29 (9)
would make it clear that the said section provides that it is an infringement
of the trade mark by way of the spoken use of the words which are contained in
the trade mark and their visual representation thereof. What is an infringement
is not merely visual representation of the product in the bad light under the
provision of Section 29 (9) of the Act but it is the infringement of the trade
mark if the same is caused by way of spoken use of the words and the visual
representation of the said words.
Now, the cinematograph film is a
visual representation of the motion picture containing sound recordings,
dialogues which are presented in the audio and video format before the public
at large. The said cinematograph film is definitely covered within the ambit of
the visual representation which is larger genus under the provisions of Section
29 (9) of the Act. Thus, the provision of the Section 29(9) further makes a
statutory infringement of the registered trade mark if the same is caused by
the spoken words.
The tests for the adjudging the
said infringement would remain the same which are prevalent in the field of the
trade mark. Either the said spoken words should cause the infringement by
making a mis-statement or causing confusion and deception which is the gist of
the passing off action or in the alternative, the said spoken words should
cause infringement by way of diluting the distinctive character and repute of
the trade mark which may either intention or unintentional.
It is well settled that the
intention to defraud is not essential ingredient of the passing off action,
thus, the infringement or passing off which has been caused innocently or
fraudulently would not make a difference if the same falls within the ambit of
the infringement as a matter of law and fact.
In view of the above discussion
and explicit provisions of the Trade Marks Act, the Hon’ble High Court
satisfied that the infringement of trade mark can be caused by the spoken words
and visual depiction of the same in the form of presentation in the movie.
All trademarks are brands,
whereas not all brands are trademarks.
