T No. 157 of 2012
G.A. No. of 2012
C.S. No. of 2012
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Civil Jurisdiction
SMT. RUPLEKHA SEN
SRIJITA FILMS & ENTERTAINMENT PRODUCTION LTD.
The Hon'ble JUSTICE SOUMEN SEN
Date : 12th November, 2012.
Mr. Joydeep Kar, Adv.
Mr. Prodyumna Sinha, Adv.
Mr. Supratim Laha, Adv.
Mr. Paramita Bhattacharya, Adv.
... for the petitioner
Mr. Sudipto Sarkar, Sr. Adv.
Mr. Siraj Gupta, Adv.
Mr. Surajit Chakraborty, Adv.
...for the defendants.
The Court : The plaintiff is the daughter-in-law of the much acclaimed novelist Maitraye Devi. The instant suit is based on an alleged violation of an unregistered mark "Na-Hanya′te" by the respondent. In such an action of passing off the principal grievance of the petitioner appears to be that the respondents notwithstanding the popularity and eminence of the said book, adopted the said word mark and use the same in the film with a view to create an impression that the said film is based on the novel written by Maitraye Devi. 2
The soul is immortal and some feelings may not die perhaps was the essence of the said novel.
Mr. Joydeep Kar, learned counsel for the petitioner, submits that the words "Na-Hanya′te." is associated with Maitraye Devi and any feature film with the same title would give an unmistakable impression to the viewers that such feature film is based on the novel 'Na-Hanya′te.′ It is submitted that the artistic work on the cover of the book was designed by none other than Mr. Satyajit Ray and if the posters, hoardings and other advertising materials of the said film are compared with 'Na-Hanya′te′ as portrayed in the cover of the book, there cannot be any doubt that it would give an impression that the said film is based on the novel 'Na-Hanya′te.′ It is submitted that the respondents have knowingly chosen the said title with a view to make unjust enrichment and tried to exploit the goodwill acquired by the said novel since its first publication in 1974. Mr. Kar has relied upon the following decisions in support of his contention that this Court should injunct the defendants from releasing the said film under the title 'Na-Hanya′te′:
2001(5) SCC 73 (Cadila Health Care Ltd. vs. Cadial Pharmaceuticals Ltd.) 2002(3) SCC 65 (Laxmikant V. Patel vs. Chetanbhai Shah & Anr.) 2011(4) SCC 85 (T. V. Venugopal vs. Ushodaya Entp. Ltd. & Anr.) in Cadila (supra) the dispute was between the two pharmaceutical companies in relation to use of a brand name 'Falcitab.' The appellant contended that the use of the brand name 'Falcitab' by the respondent was similar to the drug sold by it under the brand name 'Falcigo.' After considering the rival 3
contention, the Hon'ble Supreme Court laid down the following principles in considering an action of passing off on the basis of unregistered trademark. "35. Broadly stated, in an action for passing-off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered: (a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works.
(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
(c) The nature of goods in respect of which they are used as trade marks.
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods.
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
36. Weightage to be given to each of the aforesaid factors depending upon facts of each case and the same weightage cannot be given to each factor in every case."
In Laxmikant V. Patel (supra) the dispute was with regard to the use of the name "QSS - Muktajivan Colour Lab" which has been the plaintiff's business name since 1985.
In considering the rival claims in relation to the word "Muktajivan" used by the parties, the Hon'ble Supreme Court held that an action for passing off would lie whenever the defendant company's name or its intended name is calculated to deceive, and so to divert business from the plaintiff or to occasion a confusion between the two businesses. If this is not made out then there cannot be any case of passing off.
In the case of T. V. Venugopal (Supra), the Hon'ble Supreme Court was considering the mark "Eenadu" which was used by the respondent company in relation to its publication in newspaper and television channel whereas the appellant was manufacturing incense sticks with the mark "Eenadu." In considering the rival contentions it was found that the respondent company's mark "Eenadu" had acquired extraordinary reputation and goodwill in the State of Andhra Pradesh and the adoption of the word "Eenadu" is ex facie fraudulent and mala fide from the very inception. The Hon'ble Supreme Court also held that the word "Eenadu" may be a descriptive word but has acquired a secondary or subsidiary meaning and is fully identified with the products or services provided by the respondent company. It was held that permitting the appellant to carry on the business in the name of "Eenadu" in the State of Andhra Pradesh would lead to erosion of the extraordinary reputation and goodwill acquired by the respondent company over a passage of time and the appellant's deliberate misrepresentation at the potentiality of creating a serious confusion and deception for the public at large. It was held that no one can be permitted to encroach upon the reputation and goodwill of other parties. 5
Per contra, Mr. Sudipto Sarkar, the learned senior counsel appearing on behalf of the petitioner submits that no one can claim any right in respect of the name "Na-Hanya′te". The learned senior counsel by referring to "A Sanskri English Dictionary" authored by Sir Monier-Williams and published by Motilal Banarsidass Publishers (16th Reprint, Delhi, 2011) submitted that "Na-Hanya′te" means that it is something which would never die. "Na-Hanya′te" means not. It is applied in order to negate any wish, request and command. "Hanya′te" means to be struck or killed as to punish. Such expressions found place in various works in the ancient Hindu texts including the Vedas and Gita. It is submitted that in order to sustain a claim of passing off based on an unregistered mark the petitioner would be required to establish prior use with considerable goodwill acquired over a period of time. It is submitted that the petition lacks in material particulars with regard to such particulars including the commercial value of such mark although it is claimed that the said book was published in 1974. It is argued that the suit is not based on infringement of copyright but passing off of a word mark "Na-Hanya′te". It is submitted that the petitioner would be required to establish by cogent and convincing evidence even at the interlocutory stage that such word mark has acquired a considerable reputation and in the event no injunction is passed, the same would cause irreparable loss and injury. Mr. Sarkar has relied upon the decision reported in 1988 RPC 113 (Mothercare U.K. Limited vs. Penguin Books Limited). It is submitted that the plaintiff is required to establish that there is some serious issue that is required to be tried at the trial. In fact in Mothercare (Supra), the plaintiff objected to the publication of a book by the defendant titled 6
Mothercare/Other Care alleging passing off or infringement of its trademark "Mothercare" registered in respect of books. The plaintiff conducted surveys amongst members of the relevant public in order to obtain evidence of confusion. Initially a restraint order was passed but the Court of appeal on facts and evidence found that the plaintiff had failed to establish that there was a serious issue to be tried. It was further found that there is no misrepresentation in the title of the book and no likelihood of damage.
It was further found that the word "Mothercare" in the title of the book was not used as a trademark or in a trademark sense. They were being used descriptively with the words "Other Care" what the book was about. It was thus submitted that it would be fancifully in the extreme to suggest that the alleged goodwill of the plaintiff would be injured, in the event, the said film is allowed to be released by using the words "Na Hanyate". In a passing off action, the issue required to be decided as held in Ruston & Hornsby Ltd. v. Zamindara Engg. Co. would be:
"Is the defendant selling goods so marked as to be designated or calculated to lead purchasers to believe that they are the plaintiff's goods?"
An act of passing off is an act of deceit. In order to establish passing off the petitioner would be required to establish a prima facie case, balance of convenience and irreparable loss of injury in the absence of grant of injunction. Plaintiff claims that the book was published since 1974 with the title "Na Hanyate" but the said mark was not registered. The plaintiff relied upon paragraph 34 and 36 to show that they will suffer irreparable loss and injury in 7
the event the said film is released under the title "Na Hanyate". The said paragraphs lack in material particulars. There are only bold assertions with regard to goodwill and reputation. There is nothing on record to show that the said mark has acquired considerable goodwill in the market and that in the event the said word mark "Na Hanyate" is used by the defendant the same is likely to cause irreparable loss and injury to the plaintiff. Merely prior use of the mark since 1974 without any evidence of sale and goodwill would not be sufficient to get an injunction on the basis of a unregistered mark. However, one fact cannot be disregarded, that is, the adoption of the name "Na-Hanya′te". Although Mr. Sarkar, the learned Senior counsel strenuously argued that the adoption of the words "Na-Hanya′te" in the film is influenced by the ancient text and the pholosophy associated with such expression but it cannot be doubted that for any discernable mind having any interest for literature would certainly associate the said film with the book written by Maitraye Devi. The said word mark is not commonly used and it would be difficult to find out the use of the said word mark "Na-Hanya′te" in relation to any other book, film or anything associated with it. It may be that the contents of the film is completely different from what Maitraye Devi had written in the book but the fact remains that the manner in which the film has been projected and advertised. It certainly gives an impression to the discerning mind at least that the film could be based on the said novel. It cannot be doubted that the book was specially designed by none other than the film legend, Satyajit Ray for the author. In view of the aforesaid, there shall be an order of injunction restraining the respondent nos.1, 2, 3 and 4 from using the word mark "Na-Hanya′te" in the same and/or 8
similar manner as it is appearing in the cover of the book as specially designed by late Satyajit Ray for a period of two weeks from date. The said respondents should also publish a disclaimer prominently displaying that the said film is not based on the novel "Na-Hanya′te" written by Maitraye Devi, in all advertisements, publicity materials, compact discs, DVDs and other publicity materials associated with the said film immediately and shall withdraw existing publicity materials and or advertisements from the market immediately. The petitioner shall make adequate publicity of such disclaimer through media and television channels and any other form so that the public in general is aware of the fact that the said film is not based on the said novel. The respondents shall keep accounts of all incomes earned in connection with the said film and furnish fortnightly account to the Court as also to the plaintiff until further orders. All parties are to act on signed photocopies of this order on the usual undertakings.
(SOUMEN SEN, J.)