RKD laid the trail for suits against disparagement of trademarks in films, when we successfully represented Godrej Sara Lee Ltd, getting a permanent injunction and damages worth INR 500,000 against Super Good Films, who had shown Godrej Sara Lee’s insect repellent “Hit” in a bad light in one of their films.
An order was recently passed by the Delhi High Court restraining the producers of the Bollywood movie ‘Yeh Jawaani hai Dewaani’ from releasing the movie on home video. The suit was filed by Hamdard National Foundation which manufactures a beverage under the trademark ‘ROOHAFZA’ and holds registration for the same in respect of syrups included in Class 32. It was alleged by Hamdard that defamatory references to their popular product ‘RoohAfza’ were made in the movie and as a result Hamdard filed the suit for infringement of trademark, passing off, commercial disparagement and tarnishment of goodwill and damages.
In order to provide a better understanding of the case, the allegedly offending dialogues in the movie are reproduced as under:
- Son: “Yeh RoohAfza bahut bekaar hai!” (This RoohAfza is very bad)
- Mother: “Sab theek ho jayega” (Everything will be okay)
- Son: “Siwaye is RoohAfza ke…bahut bura hai” (Other than this roohafza...Its very bad)
The Hon’ble High Court said that “a reading of Section 2(2) and 29(9) of the Trademarks Act, 1999 would make it abundantly clear that infringement is said to occur not merely by the visual representation of the product in the bad light. The infringement of the trademark may also be caused by way of spoken use of the words and visual representation of the same words. Prima facie case is made out by the plaintiffs for infringement of trade mark and also of passing off which may injure the reputation of the plaintiffs before the public.”
Similar instances were reported when UK based Murphy Radio sued UTV for depicting their mark ‘Murphy’ in poor light in a recent production. In 2010, Zandu Balm sued a prominent production house for use of their trade name in a song without prior consent. It must be pointed out that use of mark by the alleged infringer should be in the course of trade in order to come under the ambit of the above stated provisions under Section 29(4) of the Trademarks Act.
HT Media had also recently filed a suit against Sony Entertainment, Balaji, etc. with respect to a particular episode of a popular soap wherein it suggested that the newspaper was into publishing false and defamatory news. Also Bata India Ltd had filed a suit against AM Turaz, Prakash Jha & Ors with respect to use of their trademark "Bata" in the song "Mehangai" of the Bollywood film Chakravyuh.