Transborder reputation has been a matter of dispute, largely elucidated and deliberated upon in the law of trademarks. The principle however finds itself extrapolated to other realms of intellectual property disputes as well. Becoming the bone of contention, "BUDDHA-BAR", the name of an album, found itself in an appeal before the Division Bench of Delhi High Court in the case of Kiran Jogani v. George V. Records, SARL [2008 (38) PTC 69 (Del.) (DB)]
Involving the issue of transborder reputation in the mark "BUDDHA-BAR" for music albums and the allegation of an infringement thereof, Kiran Jogani and Another appeared before the High Court of Delhi in an appeal against the decision in the civil suit filed on the Original Side of this Court by George V. Records, SARL. An interlocutory application for injunction under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908 had been filed along with the plaint by George Records, which ex-parte met with success and thus an application under Order 39 Rule 4 for vacation of the interim injunction had been filed, whereby the interim injunction was confirmed.
George Records claimed that the trademark BUDDHA-BAR had been first adopted and used in the year 1996 as the name of a restaurant in Paris by their affiliates. They stated that the name had acquired reputation and the music played at the restaurant was compiled into CDs as they became extremely popular. These CDs were sold under the name BUDDHA-BAR from the year 1999 onwards and George V. Records averred that BUDDHA-BAR was connected via its affiliate. They claimed that they had acquired trademark registration in several jurisdictions as also reputation.
It was pleaded that the adoption of the mark BUDDHA-BAR by Jogani was dishonest. The mark was said to constitute a unique combination of two words which would otherwise have no correlation with each other and the adoption of an identical mark in relation to identical goods being music albums without any explanation regarding the adoption depicted dishonest intent on the part Jogani.
Evidence in the form of paper cuttings of magazines and other publications was filed to establish that the mark had acquired reputation all over the world, including India. Jogani on the other hand showed a single page advertisement to demonstrate the adoption of this mark prior to George Recordings. They stated that there was blatant copying of the artistic features of the inlay card of the music album BUDDHA-BEATS released by Jogani in 2001.
Several pleas were raised in the course of argument, which were dealt with by the learned Single Judge in the impugned order, who emphasized that passing off is an action of deceit and thus prior adoption and use of the mark as also it having acquired reputation and goodwill distinctive of the goods of the plaintiff in the country of origin is a necessity. He also noted that connection in the course of trade between the goods of the two parties by use of identical or a deceptively similar mark must be established. Heavy reliance was placed upon a large amount of published material brought on record to grant the interim injunction. The factum of the failure of Jogani to give any satisfactory explanation in relation to adoption of the mark BUDDHA-BAR was emphasized not to be honest.
In view of lapse of almost four years since the stage of the interlocutory injunction, the Court suggested that a more advisable course of action was to expedite the hearing of the suit. However, the counsel for Jogani was of the view that recording of evidence would take some time and thus he would like to invite a judgment on the appeal against the decision on the interlocutory application.
Considering the scope of scrutiny by the appellate Court in matters of grant or refusal of such interim injunction, the legal position in Wander Ltd. and Anr. v. Antox India P .Ltd; 1990 Supp (1) SCC 727 was taken into account whereby it is not the function of this Court as an appellate Court to substitute its own discretion with the exercise of discretion by the Trial Court except where the discretion has been shown to be exercised arbitrarily, capriciously and perversely or where the Court has ignored the settled principles of law regulating the grant or refusal of interlocutory injunctions. Further, the precedent states that so long as the exercise of discretion by the Trial Court is reasonable and in a judicial manner, no interference is called for. It is within this limited scope that the scrutiny in an appeal has to be made.
Jogani's counsel asserted that the Trial Judge had acted in an arbitrary fashion in the exercise of his discretion. The court taking note of the argument stated that the grant or refusal of injunction has to be on the triple criteria of a prima facie case, balance of convenience and irretrievable loss and injury and that the mere fact that the parties may have an opportunity to file additional documents subsequently is not a relevant ground to form a prima facie opinion. The Court stated that looking at the extent to which the Single Judge has dwelled into the agreements and evidence, the findings of the learned Single Judge cannot be faulted.
The Court also stated that Jogani's contention of the evidentiary material being in the form of newspaper reports, magazines and other publications be ignored the nature of that being secondary evidence, was unacceptable. No doubt, the plaintiff would have the duty to prove the evidence on record by leading appropriate evidence, but that stage had not arisen. The Court stated that at the interlocutory stage, where the parties are yet to have the opportunity to produce witnesses to prove the documents, such material cannot be shut out especially taking into consideration the nature of controversy in the present matter.
The court noted that material akin to newspaper clippings would be necessary to establish transborder reputation. The Court stated that it is not necessary that only an invoice of sale would be the relevant evidence and thus merely because the invoice is just after the alleged propagation of the CD album by Jogani itself could not defeat the rights of George V. Records on the face of other voluminous prima facie material in support of their transborder reputation.
The counsel for Jogani also brought in the aspect of Section 52A of the Copyright Act and consequent punishment which may follow under Section 68A of the said Act. This plea had been brushed aside by the Single Judge to be considered at the time of trial. However the Court stated that the prima facie finding on the effect of the same is liable to be given and thereafter one can observe that the parties would have the rights to produce the evidence in that behalf. George Records stated that the plea with respect to the sections was not the focus of the submissions and that transborder reputation was the only issue to be dealt with. They also stated by George Records that there had been no lack of compliance with the said provision.
George Records pleaded that BUDDHA-BAR albums may have been sold in India, but they were not published in India and thus Section 52A of the said Act was not attracted. Further, the attention of this Court had been drawn to Section 5 of the said Act which specifies as to when a work is first deemed to be published in India. According to the provision, the work is deemed to be simultaneously published in India and another country if the time between the publication in India and publication in such country does not exceed 30 days. The Court found that since this did not happen, no publication in India so as to infringe the provisions of Section 52A of the Act had taken place. The Court noted that the penalty for contravention of Section 52A was provided for under Section 68A of the said Act of imprisonment extending up to 3 years and fine. The counsel for the George V. Records emphasized that if there was an infringement, Jogani would have taken steps in respect of the same and the Court noted this to be sufficient to prima facie conclude that Jogani did not suspect infringement by George V. Records. The Court noted that the object of Section 52A is clear i.e.to prevent piracy and counterfeiting and that the same appeared missing in the present suit.
Opining that the material placed on record had been rightly appreciated by the learned Single Judge to come to a prima facie view, the appeal was dismissed with costs.
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