[The post is authored by Arshya Wadhwa. Arshya is a final year law student pursuing LL.B. She is extremely passionate about Intellectual Property Rights and law in sectors like Media and Entertainment and TMT.]
The DHC recently passed an ad-interim injunction order in favor of Indospirit Beverages Pvt. Ltd., restraining Ravi Mohan Studios and its associates from using the trademark “BROCODE” as the title of their upcoming film. It is well established that the name of a film can be seen as a trademark and makers can be sued for trademark infringement. This case concerns an instance where an alcoholic beverage company sued a film producer for adopting a title similar to its alcoholic beverage- a pint of wine, titled “BROCODE”. The Delhi Court found a prima facie case in favor of Indospirit for trademark infringement, given their mark BROCODE had registrations in multiple classes with a significant market presence and use of their marks in different YouTube videos (here and here). The matter reached the DB in an appeal where the Court has refused to interfere with the order for now and has only issued notice. Interested readers can find the Livelaw update on the appeal here.
There were communications between the parties via email wherein Ravi Mohan was informed by the beverage manufacturer about the use and adoption of the BROCODE mark for their business. Although Ravi Mohan acknowledged their use of the mark, but denied any infringement by using it as a title of the film. After receiving a cease-and-desist notice, the production studio approached the Madras HC seeking protection against the groundless threats of infringement action. Consequently, the High Court passed an interim order in their favor. However, after the Madras HC order, Indospirit approached a different forum- the Delhi High Court, seeking an interim injunction, which was eventually granted by the Court.
Now this order is particularly interesting for two reasons: firstly, whether the Delhi High Court rightly concluded on similarity between the marks, especially when Indospirit’s trademark is registered in different classes; secondly, whether the Court rightfully assessed acquired distinctiveness of “BROCODE” (a term which in ordinary parlance refers to unwritten rules governing male friendships) by Indospirit in context of videos and films.
The Missing Analysis under Section 29 (4)
Interestingly, an argument was raised by Ravi Mohan’s counsel pointing toward the classes in which Indospirit’s BROCODE trademark was registered. It was highlighted that while Indospirit has registrations on other classes, it does not have a registration under 41 (entertainment) yet, and its application for the composite “Brocode Roast” mark is still pending before the trademark registry. Although this argument was presented to the Court, there was no engagement on this issue as to why the Court prioritized the protection of the plaintiff’s BROCODE mark without engaging with the requirement under Section 29(4). The provision allows an action against the use of a similar mark in the context of different goods or services only when it is proved that the mark has a reputation in India and the defendant’s use would amount to an unfair advantage or would be detrimental to the plaintiff’s mark. (Sidenote: In the appeal before the DB, the Court also inquired how the injunction was passed without any observation on Section 29(4).)
Need for Due Diligence under Section 142(2)
Another point which was not addressed by the Court is whether Indospirit’s action was initiated after the required “due diligence” as per Section 142 (2). The provision states that once an action against the alleged infringement is instituted, the preceding action alleging a groundless threat will cease to exist. However, operation of this provision is subject to the requirement that the plaintiff in the infringement action initiates it after due diligence (see here for different facets of this term in the context of different IP laws) from their end. The Delhi High Court order is starkly silent on whether any such due diligence was conducted by Indospirits or not before filing a separate infringement suit some 2000 km away from the place where the initial suit in the controversy was filed. Also, without engaging with this requirement and passing a favorable order, the order signals that it might be convenient for the plaintiffs to file another suit instead of fulfilling the requirement under Section 142 (1) where the party making the threats would have to satisfy the Court that its mark is registered and the impugned action amounts to infringement. Considering that Indospirit’s relevant mark “Brocode Roast” is still awaiting registration under the relevant class, it could have been difficult for it to prove that the mark meets this requirement, considering the relatively higher burden of proof as compared to filing a separate suit alleging infringement.
Also, although the law doesn’t say anything about the need for both the suit for groundless threat of infringement proceeding and the subsequent suit for infringement to be filed before the same court, it is surely striking that Indospirit chose to pursue the action in a different forum altogether. Recently, the Supreme Court had interpreted a similar provision under the Patents Act and allowed Atomberg’s application to transfer an infringement suit against it to the Bombay High Court, where it has filed a suit against Eureka Forbes alleging a groundless threat for injunction. The Supreme Court found that the Court where the groundless threat suit was filed is the right forum and allowed Atomberg’s petition. However, an important difference here is that, unlike the Trademarks Act, a subsequent infringement proceeding will not cease the preceding suit for a groundless threat under the Patents Act. Hafsah has written on this crucial difference between the two provisions here.
Lastly, it was surprising to see that neither the producer nor the Court raised/ discussed any arguments on “BROCODE” being a generic term. As explained above, it means a set of unwritten rules governing male friendships. From the movie’s trailer, so far it seems like it is going to focus on- unspoken rules governing the bond between three male friends. However, the Court held that use of the mark in a film will lead to confusion, without explaining how and relying on the goodwill of the mark, generated in the context of an alcoholic beverage.
Turning the heat up, the producer of the movie, in a press release issued by his team, has insinuated that the dispute is consequent to his refusal to promote the alcoholic beverage in the movie and dubbed it a publicity stunt before the launch of the beverage in Tamil Nadu.
The matter is listed before the Single Judge on December 23 next.