The Rubik’s Cube, invented by Ernő Rubik in 1974, has been a source of endless enjoyment (for some) and frustration (for most). It can easily be categorised as one of the most popular toys, which everyone has played at one point of time or another but only few have managed to solve. Given the widespread popularity of the puzzle, any unauthorised use of the term ‘Rubik’s Cube’ by a third party would indisputably result in prejudice to its rightful owner. Recently, such an unauthorised use was the subject matter in the case Rubiks Brand Ltd & Anr vs. Mahesh Vaman Manjrekar & Ors, wherein the Hon’ble Bombay High Court granted an injunction in favour of Rubiks Brand Ltd (Rubiks). The impetus behind filing of this suit was the adoption of the term ‘Rubik’s Cube’ by Mr. Mahesh Vaman Manjrekar (Mr. Manjrekar), an Indian actor and filmmaker, as the title of his upcoming Marathi movie. Given that Rubiks has the exclusive right to market and distribute the Rubik’s Cube puzzle, they took an exception to the usage of their trade mark by Mr. Manjrekar as his movie title.
Rubiks’ claim was tested against the three requisites of passing off, namely - goodwill and reputation, misrepresentation, and likelihood of damage. In support of the passing off claim, Rubiks adduced information to substantiate their reputation and goodwill. Details of trade mark registrations in international jurisdictions and stratospheric sales figures were presented as well. Taking into account the extreme popularity and well-known nature of the puzzle, the court held that it was unlikely that Mr. Manjrekar could have produced any information which would have negated or undermined Rubiks’ goodwill and reputation.
The court further observed that in the case of passing off, the intention is irrelevant and so is the requisite of fraud. Mr. Manjrekar’s choice of movie title would have unquestionably resulted in misrepresentation. The use of ‘Rubik’s Cube’ would perpetuate the idea amongst the public that the movie was in some way related to the well-known mark as used in relation to the puzzle. The court further held that given the publicity drive already in force with respect to the movie in question, it would not have been incorrect to state that the Rubiks had already suffered damage with regard to dilution of their brand and trade mark.
The court held that given the widespread popularity of the puzzle, it did not seem plausible that the filmmaker was oblivious to puzzle’s renowned status. Further, propounding on the fact that the word ‘Rubik’s Cube’ was an invented and coined term in relation to the puzzle, the court held that ‘Rubik’s Cube’ only denoted the puzzle. The court also took into account the fact that the movie poster had 4 out of 6 colours employed in the puzzle. Moreover, the tagline i.e. you rarely get the combination right even in love, of the movie was in clear reference to the puzzle.
The court held that all three factors necessary for grant of an ad-interim injunction were in favour of Rubiks. The three factors are:
· Whether prima facie case in favour of the aggrieved party has been established;
· Does the balance of convenience lie in favour of the aggrieved party; and
· Whether irreparable loss or damage will be suffered by the aggrieved party, in case the injunction is not granted.
The court held that Rubiks had successfully established a prima facie case. Furthermore, the balance of convenience was also in their favour. Concurring that an irreparable harm would be caused to Rubiks if the injunction was not granted, the court restrained Mr. Manjrekar from working on any film or other material bearing the title ‘Rubik’s Cube’ or the term ‘Rubik’ therein. The court also made it amply clear that the movie would not be released with the impugned title.