Pravin Anand, Managing Partner and Achuthan Sreekuma, Senior Associate at Anand and Anand
This article is an attempt to examine the state of case law in India regarding various aspects of trademark law, such as commercial disparagement, infringement, passing off, dilution and tarnishment, and the affirmative defence of ‘freedom of speech and expression’ in the context of films and other such audiovisual works.
There have been various instances before the Indian Courts where filmmakers have been hauled into courts by trademark holders alleging commercial disparagement, an infringement of registered trademarks, dilution and tarnishment of trademark, damage to reputation and tarnishment of brand equity, brand dilution, passing off, etc, and seeking injunctive reliefs and damages. The case law discussed below illustrates how the Indian Courts have dealt with these scenarios.
Prakash Jha Productions, one of India’s most popular production houses, produced a movie entitled Chakravyuh. The movie revolved around the issue of naxalism and its causes. The movie contained a song that used the name of some of India’s biggest business conglomerates, including the Tata Group, the Bata Group and the Reliance Group. The song was entitled Mehngai, meaning ‘Inflation’, and through this song the filmmakers were attempting to show that the characters believe these businesses have abused the country and its resources to meet their selfish needs. The song further implied that the common man’s blood fuels the growth of such businesses.
The filmmakers say that the song merely depicts the state of affairs in society and that the song has been written in the context of the theme of the movie. Therefore, it ought not to be taken as any kind of aspersion against the businesses named therein. The businesses in question approached various courts around the country seeking an injunction to restrain the said movie’s distribution so as to remove the objectionable song from the movie. In this regard, the Hon’ble High Court of Delhi passed an injunction order restraining further screening of the movie until such time as the objectionable content was removed.
The matter was appealed to the Hon’ble Supreme Court of India by way of SLP (Civil) No.32998/2012. On 19 December 2012, the Hon’ble Supreme Court of India dismissed the SLP, noting at the very outset that naming such people or businesses was in poor taste and could have been avoided. However, taking into consideration the movie as a whole, the Apex Court found that the song was written in the context of the central theme of the film and it also appeared that there was no intention in the song to besmirch the reputation of the businesses in question.
With a view to safeguarding the rights of those businesses, the Apex Court, while categorically noting that the lyrics containing the names was in poor taste and that the wording could have been avoided, directed that whenever the song is played, a disclaimer should also run alongside the song stating that the names mentioned in the song are mere examples and no injury or disrespect is intended to any particular person or brand. A pivotal factor that led to the passing of the order in this case was the fact that the movie had already been released before the plaintiff could approach the court of first instance.
The Hamdard Group approached the Hon’ble High Court of Delhi in June 2013 and sought an injunction against the makers of the movie ‘Yeh Jawaani Hain Deewani’, stating that the movie contained certain dialogue showing the famous Indian drink Rooh Afza in a manner detrimental to its interests as the drink’s proprietor.
The Court opined that a conjoint reading of sections 2(2) and 29(9) of the Trade Marks Act show that the legislature has expressly departed from the ordinary construction of the expression “use” and opined that “use” under section 29(9) has to be construed to include “infringement by way of the spoken words” and their “visual representation”. It was further noted that a cinematographic film is a visual representation containing sound recordings and dialogues presented in an audio and video format before the public at large. Therefore, section 29(9) recognises the infringement of a registered trademark through ‘spoken words’.
The Court further noted that the fundamental right to speech and expression as enshrined in the Indian Constitution is not unbridled as the same is subject to the provisions of article 19(2) and hence the state is within its power to make any law in so far as it imposes reasonable restrictions to prevent defamation.
Finally, the Court opined that:
“…the law preventing the infringement of trade mark by way of spoken words is a commercial law preventing unfair or untrue commercial speech which may cause injury to the proprietor which is included within the ambit of the infringement in order to prevent disparagement. The said law prevent[ing] disparagement is one of the facet[s] of the tort of the defamation and is thus an excepted matter under Article 19(2) and the state is within its power to make such law.”
The Hon’ble Court distinguished this case from the ‘Chakravyuh’ case discussed above as the song in the ‘Chakravyuh’ case was central to the theme of the movie. However, in this case, the objectionable dialogue does not form a part of the central theme of the movie: in other words, if such objectionable content is removed, the movie will not be distorted.
The Court, however, also took note of the fact that as the movie was already released, it would be difficult to remove the objectionable content from the released versions. Nevertheless, to prevent future commission and continuance of the objectionable acts or dialogue, the Court ordered that the objectionable acts or dialogue be omitted from any and all future versions of the movie. This case is sub judice before the Delhi High Court.
G4S is one of the largest security service providers in the country. The issue in this case was whether a security guard wearing a G4S badge who was shown sleeping on duty as part of a scene in a movie amounts to commercial disparagement. The plaintiff, in this case, alleged that such a scene would damage the reputation of the G4S Group and would lead to dilution of the G4S mark and further, the plaintiff also sought damages from the filmmakers.
As the movie containing this scene was already released, the court noted that it was impossible to blur the objectionable scenes in such versions. However, in recognising the plaintiff’s rights, on 20 December 2010 the Hon’ble High Court of Delhi held that, as regards unreleased formats of the movie, the filmmakers will have to take appropriate steps to blur or obscure the objectionable contents. This matter is sub judice before the Delhi High Court.
Recently in the case of ICICI Bank Ltd v Ashok Thakeria, the plaintiff presented before the Hon’ble Delhi High Court a set of most interesting and different facts as compared to any other movie-related cases in India. The most important factor that differentiated this case from all the other cases was the fact that the plaintiff (ICICI Bank) approached the Hon’ble High Court of Delhi long before the movie was scheduled to be released.
The plaintiff stated that the trailer of the movie ‘Grand Masti’ depicted a burglary scene in a bank that appeared to be identical to the plaintiff bank. This was because the moviemakers used the logo IBIBI, the “i” device, various banners and posters of the plaintiff, as well as the red and white colour combination that is typical of the plaintiff. The plaintiff further claimed that in the event they are shown in such a negative light, customers will be misled into believing that ICICI Bank has a weak security system and that its customer deposits are not safe. This, they claimed, amounts to commercial disparagement that will adversely affect and tarnish the goodwill, reputation and brand equity associated with the plaintiff’s well-known trademark ICICI and the “i” device.
After hearing the plaintiff’s arguments, on 9 September 2013 the Hon’ble High Court of Delhi passed an ex parte interim injunction in favour of the plaintiff stating:
“in light of the aforesaid observations, I hereby grant an ex parte injunction in favour of the Plaintiff, directing the Defendants to blur/censor the disparaging font/content of the movie carrying the marks IBIBI, the logo similar to the “i” device, and the banner/poster regarding the ‘Most Trusted Brand Award’ in an identical font, layout and colour scheme as that of the Plaintiff’s, in its bank robbery scene and/or any other part/scene of the movie ‘Grand Masti’.”
This case, as stated above, stood at a different footing from the other movie-related cases as the rightholder approached the Court before the movie was released. This case is also sub judice before the Delhi High Court.
One of the main objects that the Cinematograph Act seeks to achieve is to examine and certify films as suitable for public exhibition.
In exercise of the powers conferred by sub-section 2 of section 5B of the Cinematograph Act, 1952, the government of India came up with guidelines for certification of films for public exhibition. These were published in the Official Gazette of India on 6 December 1991. Section 2 sub-clause (xviii) states that the Central Board of Film Certification (CBFC) must ensure that visuals or words involving defamation of an individual or a body of individuals, or contempt of court are not presented through films.
Therefore, the Act provides powers to the CBFC to screen movies before giving them a final approval for public viewing. All the movies discussed in the previous section were approved in this way. However, suits were then filed by right holders complaining of defamation or commercial disparagement. This shows that there are some lacunae in the system in place at the CBFC level as regards screening movies. These systems further appear to be very leniently enforced. Such a lenient approach has left right holders with no other option but to approach courts seeking appropriate relief, when our judiciary is already burdened with a heavy backlog of pending cases. Such a situation can be avoided if some very basic systems are robustly implemented.
Even though our Constitution promises freedom of speech and expression as a fundamental right of each citizen, it is to be remembered that such a right should not encroach upon the right and reputation of others. This freedom is not absolute and the state and courts are entitled to enforce reasonable restrictions on the exercise of such freedom in the larger interests and one of such larger interests includes avoiding defamation or commercial disparagement.
Therefore, while exercising such a right, filmmakers should keep in mind that the medium remains responsible and sensitive to the values and standards of society and they must ensure that defamation of individuals, including dilution, tarnishment or infringement of trademark or brand names does not occur.
Just like what defamation does to an individual, dilution or tarnishment could destroy the immense reputation and goodwill associated with a brand or trademark. It is a well-known reality that it takes years to build goodwill and reputation, but it takes minutes to destroy.