In the much talked about suit Warner Bros. Entertainment Inc. v. Harinder Kohli and Ors. [IA No.9600/2008 in CS(OS) 1607/2008] Warner Bros. moved to Delhi High Court to seek an interim injunction on the use of the title "HARI PUTTAR". The suit for permanent injunction prays to restrain infringement of trademarks, passing off, dilution, damages and rendition of accounts of profits earned by Kohli and co-parties vide the use of the impugned trademark/title while also for an order of transfer of the domain name www.hariputtarthefilm.com to Warner.
Warner claims to have secured trademark registration in India for the word mark "HARRY POTTER" infringing the aforesaid registered trademarks of the plaintiffs by the act of naming their film "HARI PUTTAR", which is visually and phonetically similar to their mark. Warner also asserts that their mark is a well known character and is the protagonist of a series of seven novels written by British author Ms. J.K. Rowling.
Kohli a citizen of the United Kingdom and proprietor of Dream Town Productions Ltd claimed to have produced several films and animation projects and having distributed worldwide, in various European languages. The co-party Mirchi Movies Limited, also in the business of producing films, entered into a Film Acquisition Agreement as per which Mirchi Movies owned the entire rights in the said film with a profit sharing arrangement. At the time of the execution of the said agreement, the film was tentatively titled as "HARI PUTTAR", which was later modified to "Hari Puttar a Comedy of Terrors". The title was registered with the Indian Motion Picture Producers' Association (IMPPA), The Film and Television Producers Guild of India Limited and had also applied for registration with international bodies like the Title Registration Bureau, Motion Picture Association of America Inc. Warner claims the title to be an infringing variant of their mark.
It was stated that there was immense confusion and deception being created in the minds of the potential audience of the former's film, resulting in the dual torts of unfair competition and passing off. Further, publicity materials were produced forth the Court and the promotional video, was stated to further compound the confusion. Warner contended that as soon as they came to know about the tentative title "HARRY PUTTAR", they corresponded with Kohli and co-parties.
Kohli and co-parties averred that the name itself is derived completely from the theme, story line and character depiction of the movie. They stated that main protagonist in the film was Hariprasad Dhoonda and that Hari is a short form of the same. Further, Puttar' in Punjabi meant 'son' and the focus in the film is on the son of the family, who is the real hero of the movie.
They also stated the language of the movie to be a mix of Hindi and Punjabi and differentiated from the Harry Potter books and movie in terms of storyline, characterization and language. Additionally, they also submitted that irrespective of the translation, English, Hindi and Punjabi are phonetically distinct. Hence, they stated that the fact that by deliberate mispronunciation cannot be a ground for phonetic similarity. For the promotion of Hari Puttar it was claimed that various business tie ups had been entered into with well known Indian and Foreign Brands such as Britannia, McDonald's and Diamond Comics amongst others. However, an affidavit sworn by a professional investigator stating on oath that none of the movie halls mentioned by him in the Affidavit had posters or promotional material of the film and further stating on oath that none of the McDonalds outlets at Lajpat Nagar, Khan Market and Nehru Place have any posters or promotional material.
The Court on the question of assertions made by Warner Bros. regarding them being false and suppression of relevant facts were dwelled upon. The Court as regards the delay by Warner, in spite of having knowledge, failing to prevent Kohli and others from preventing building up their business or venture, stated that they would be estopped by their acquiescence from claiming equitable relief. The court rendered that Warner Bros. had failed to establish a prima facie case for the grant of an ad interim injunction in their favour. The balance of convenience was also stated to tilt heavily in favour of the Kohli, who had invested huge sums of money, apart from entering into copious agreements and business tie ups with various third parties. The Court stated that if Warner was so keen and so wary of protecting their rights, it was incumbent upon them to vigilantly guard the same. The principle of vigilantibus non dormientibur enquitor was stated to apply. Further, the Court found them to have failed to establish that any irreparable loss or injury would accrue on the release of the film. Pursuant to these arguments, the Court dismissed Warner's application, stating it to be not maintainable.
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