Recently the Delhi High Court dismissed an application filed by Dr. Reddy's Laboratories Limited ("Plaintiff"), seeking an injunction against the release of a feature film named 'Haathi Mere Saathi' (hereinafter "Film") by Eros International Media Limited and Anr ("Defendants"). The Plaintiff's application alleged that the Film disparages the Plaintiff's registered trade mark/ brand DRL.
The Plaintiff is a multinational pharmaceutical company and the registered proprietor of the word mark DRL for goods in Class 5. The Plaintiff asserted that a large segment of the population knows its business as DRL.
Eros International Media Limited (Defendant No. 1) is a leading global motion movie production and distribution company that has produced and released the Film which has been directed by Prabhu Solomo (Defendant No. 2). The plot of the Film centers on the destruction of an elephant corridor and habitat by an entity named DRL so that it can build a DRL Township. The Plaintiff contended that the Defendants' use of DRL is derogatory/ disparaging because it shows its brand, DRL in a poor light.
The Plaintiff argued that the deliberate negative portrayal of DRL in the Film would seriously tarnish its impeccable reputation as an environmentally conscious company and hamper the public trust gained by it through years of Corporate Social Responsibility activities. The Plaintiff further submitted that in response to the legal notice issued by it, the Defendants have contended that DRL refers to a fictional corporate entity, named Drishti Refineries Limited. Accordingly, the Defendants should use the full name, Drishti Refineries Limited, in the Film instead of the acronym DRL. Alternatively, the acronym, DRL, should be used in conjunction with the name Drishti Refineries Limited. Use of the mark DRL by the Defendants would not only amount to infringement of the registered trade mark under Sections 29(6) and 29(8) of the Trade Marks Act, 1999 (hereinafter "the Act"), but would also amount to passing-off.
On the other hand, the Defendants argued that the Plaintiff is not entitled to claim any monopoly over the English letters 'D-R-L' beyond its purported limited right under the Act. Use of the letters DRL is for a made-up entity in a work of fiction and that cannot possibly amount to infringement of the trade mark DRL. In cases of advertising under trade mark law, comparison is permissible as long as it is not disparaging. Thus, the use of a trade mark as a fictional term in the Film is definitely permitted, and by no means it is considered disparaging. Further, there was delay on the part of the Plaintiff in approaching the Court. As per Plaintiff's own case, it discovered the portrayal/ use of the mark DRL in the official teaser of the movie in the last week of February 2020, which prompted it to issue a notice dated March 3, 2020, calling upon the Defendants to immediately delete the relevant scenes in the movie. Thereafter, the Plaintiff observed silence for a whole year and now, just before the release of the movie, slated for March 26, 2021, the Plaintiff has filed the present suit for injunction. As per the Defendants, anyone who approaches the Court at the eleventh hour seeking interim injunction against the release of a movie, is disentitled to such relief. The Defendants further presented before the Court a larger issue regarding the fundamental right of the Defendants, as enshrined under Article 19(1)(a) of the Constitution of India for free speech and expression. Freedom of speech certainly allows the Defendant to use the acronym/ letters DRL in creative fictional works. The Film is not a documentary, but a feature film and does not relate to pharmaceutical companies in the slightest. The Defendants argue that at most, the Plaintiff can contend that this action of the Defendants amounts to defamation of the Plaintiff. DRL has been used at several instances in the Film and it would be impracticable, if not next to impossible to edit the entire movie at such a short notice, since the movie is due to release within a week.
The Court was of the opinion that the Plaintiff cannot claim monopoly over the letters D, R and L based upon registration in one class. There is no material for the Court to hold that DRL is a synonym to the Plaintiff's corporate name. The Court found no similarity between the Plaintiff's business and the use of the word DRL in the Film. Moreover, the Defendants have assured the Court that the movie is preceded by a disclaimer to the effect that it is a work of fiction and any resemblance to any real person is purely coincidental. As regards to the delay on the part of the Plaintiff in approaching the Court, it is noted that the cause of action arose as early as February 2020 and the present suit has been filed after nearly one year of first coming into the knowledge of the infringing action. This delay disentitles the Plaintiff of any discretionary relief of injunction. Thus, based on the above, the Court was of the opinion that the Plaintiff has failed to meet the three-pronged test for grant of injunction, and does not have a prima facie case in its favor. The balance of convenience lies in the favor of the Defendants. Therefore, the Court ruled that the present application is devoid of any merits and is dismissed accordingly.
Citation: Dr. Reddy's Laboratories Limited v. Eros International Media Limited & Anr., CS(COMM) 126/2021, decision dt. March 23, 2021 by Delhi High Court.
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