Recently, the BCCI has been dragged to the Court by the publisher of the popular children magazine “Champak” over adopting an identical name for their AI robot dog. Although the Delhi High Court has issued notice in the case, as per media reports it seems like the plaintiff has made a glaring omission of not adding Section 29(4) in their plaint! SpicyIP intern Sonisha Srinivasan, in her second post on the IP controversies arising out of this year’s IPL season, discusses the dispute over “Champak” and why the omission on part of the plaintiff could lead to an unfavorable result for them. Sonisha is a 4th year law student at School of Law, Christ (Deemed to be) University, Bangalore. She is keenly interested in Research, Intellectual property Law and Media and Entertainment Law.
The Champak Controversy: How “Naming A Dog” Led BCCI Into A Trademark Tussle
By Sonisha Srinivasan
Did you know that the viral AI robotic dog with a mounted camera “Champak” that was introduced this IPL season as a part of IPL’s production and marketing push has landed in legal trouble? Reportedly, the Board of Control for Cricket in India (BCCI) has received a legal notice in a suit filed by the Delhi Press Patra Prakashan for naming the robot dog “Champak”. The publishers have instituted the suit over the use of the name “Champak” by the cricket body which is identical to its popular children magazine.
According to the trademark registry (pdf), Champak has been registered as a trademark with application number 4638253 by the Delhi Press Patra Prakashan under class 41 for services for publication of books, magazines, newspapers, pamphlets etc. Now the question that arises is if BCCI’s use of Champak would infringe the right of the proprietor of the registered trademark.
As per the order passed by the Delhi High Court issuing notice to BCCI, it can be seen that the publishers have instituted the suit alleging infringement, passing off, dilution, and damages. Sections 29 (1), 29 (2) and 29 (3) of the Trademark Act 1999 deal with deceptive similarity and likelihood of confusion with respect to the similar class of goods and services. We aren’t concerned about these here since Delhi Press Patra Prakashan’s case should technically fall under the ambit of Section 29 (4) which deals with unauthorized usage of similar/ identical trademarks over different goods. However, the requisite conditions that have to be proved are that a) the registered trademark must have reputation in India, b) the use without cause takes unfair advantage of/ is detrimental to the distinctive character/ repute of the registered trademark.
Although, the above order is silent on the contention of the parties, reportedly the Delhi Press Patra Prakashan has argued that they have been using the mark since 1968, and have a reputation in India. They further contended that the usage of their mark “Champak” for robotic dog for commercial gain without their permission amounted to dilution, tarnishing the image of their registered trademark.
What is interesting about the BCCI’s naming of Champak is that it wasn’t named by an entity, but decided by majority votes in an online poll. It was also pointed out by BCCI that the fans didn’t associate Champak with the magazine but with a popular character of the sitcom “Tarak Mehta ka Ooltah Chashmah”. During the hearings in the Delhi HC, Justice Saurabh Bannerjee remarked that the publisher had failed to prove the existence of a commercial element in the name and that the name wasn’t BCCI’s choice. The Court also observed that there were no pleadings on Section 29 (4) by the publisher! Although, I cannot confirm this reporting yet, if true, it seems like a bizarre omission on the part of the publishers. This is because the first three subsections of Section 29 concern with infringement analysis of the competing marks with regard to similar or identical goods. In the present case, the goods/ services are service of publication on one hand and use of the mark on an AI robot on the other. While both photography and publication fall under the same classification- 41, as mentioned above, the publisher’s use of the mark is restricted to publication services. Unlike these other provisions though, Section 29(4) seems to be squarely applicable. Hypothetically, if we apply it then the publisher would be able to make an infringement case if the other conditions regarding the reputation of the plaintiff’s marks (as discussed earlier) are fulfilled and if it’s able to establish that BCCI adopting the “Champak” mark for the robot would fall under the ambit of “use” of the mark under the Trademarks Act.
So far this is all based on the different news reports, owing to the lack of crucial details in the High Court order. Therefore, the readers should take the bits on the arguments and the court hearings with a pinch of salt. However, if true, the absence of any evidence of commercial gain or “unfair advantage or detriment “ to the reputation of magazine “Champak”, and the missing plea on application of Section 29(4)seems like a hurried and not well thought out legal strategy and I doubt if it will yield in a positive outcome for the plaintiff.