He notes that awarding proprietary rights for common expressions to any individual or company has dangerous consequences and such disputes cannot be the mandate of intellectual property protection laws. He notes that this would amount to “a form of censorship and the gagging of speech and expression.”
The judgment also notes that the trademark registration produced by the Plaintiff is of the domain name laibhaari.com, and not of the colloquial Marathi expression ‘Lai Bhaari’, and that both are completely different things. Plus, the registration is applicable only to the narrow range of services under Class 38of the Trade Marks Act. In fact, when Techlegal Solutions tried to trademark the expression ‘Lai Bhaari’ the Registry apparently opposed it and the application is still pending.
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
NOTICE OF MOTION (L) NO. 1503 OF 2014
IN
SUIT (L) NO. 629 OF 2014
Techlegal Solutions Pvt. Ltd.
V
Mrs. Genelia Ritiesh Deshmukh
CORAM: G.S. PATEL, J
DATED: 3rd July 2014
1. Heard. This is an application for urgent ad-interim reliefs
moved after notice. The Plaintiff seeks to restrain the Defendants
from releasing a Marathi film under the title “Lai Bhaari”. The
Plaintiff claims that this phrase or expression is the Plaintiff’s
registered trade mark and that the Plaintiff is a prior user of this
mark.
2. I have heard Mr. Dewani, learned counsel for the Plaintiffs
and Mr. Dhond, learned senior counsel for Defendants No. 4, 6 and
7, Ms. Dholakia, learned advocate for Defendants No. 1 and 5, and
Mr. Parekh, learned advocate for Defendants No. 3 and 8. I have
considered, too, the material produced by Mr. Dewani, as also Mr.
Dhond.
3. For the reasons that follow, I am unable to agree with Mr.
Dewani or to accept his submission. Indeed, in my view this entire
action is thoroughly misconceived. The expression or phrase over
which the Plaintiff claims proprietory, statutory and common law
rights is a common and colloquial phrase in Marathi. On the
material before me, I have found that the Plaintiff also does not
have any proprietory rights in the phrase itself; at best, these rights
may exist only in an Internet domain name of which the phrase is a
part.
4. The Plaintiff claims that some time in 2010, it launched a
social network in Marathi with a domain name “laibhaari.com”.
This, the Plaintiff claims, rapidly become popular and acquired
several subscribers. There is little by way of evidence to
substantiate this other than reference to other websites and
television programmes. Mr. Dewani drew attention to a Wikipedia
entry about this site; that is hardly authoritative, no matter how
popular it is or how widespread its use may be. Wikipedia is a
multilingual, web-based, free-content encyclopedia-style service. It
is freely editable, and entries in its are made collaboratiely by
volunteers who, for the most part, remain anonymous. Except in
certain limited cases, as Wikipedia says about itself, anyone with
Internet access can write and make changes to Wikipedia articles
and entries. It is entirely possible for a person to make an entry
about his or her own service, product or, for that matter, himself or
herself.
5. What the Plaintiff lays claim to is, after all, a web-based
service, a social network. There are established methods of
assessing the success of any such enterprise. In the plaint, no
information is made available even about the expenditure incurred
on the design, operability, algorithms, structures and other essential
aspects that go into the making, hosting and operating of such a
service. There is no evidence of any independent audit of usage,
traffic, page views, or any of the other metrics normally used to
gauge the success of any web based service.
6. In essence, the Plaintiff claims that it has a complete
monopoly on the expression lai bhaari. This is not an expression
coined by the Plaintiff. It cannot be. It is a very old, well-known and
established colloquial expression in Marathi, its etymology possibly
in one of the coastal dialects. It has a known meaning: excellent,
very good or very important. It is used in several contexts to convey
this.
7. The Plaintiff claims to have obtained registration of the trade
mark laibhaari. The documents annexed to the plaint show
otherwise. Exhibit “J” to the plaint is a registration certification for
“ybZHkkjh-dkWe”, i.e. Lai Bhaari-dot-com written in Devnagari. It is
dated 1st November 2010. It is in respect of a very narrow or niche
range of services in Class 38 described thus
“SOCIAL NETWORKING SERVICES, AUDIO AND VIDEO
BROADCASTING SERVICES OVER THE INTERNET,
NAMELY UPLOADING, POSTING, SHOWING,
DISPLAYING TAGGING AND ELECTRICALLY
TRANSMITTING INFORMATION, AUDIO AND VIDEO
CLIPS, PROVIDING ACCESS TO INFORMATION, AUDIO
AND VIDEO VIA WEBSITES, ONLINE FORUMS, CHAT
ROOMS AND BLOGS OVER THE INTERNET,
PROVIDING ONLINE CHAT ROOMS AND ELECTRONIC
BULLETIN BOARDS FOR TRANSMISSION OF
MESSAGES AMONG USERS IN THE FIELDS OF
GENERAL INTERESTS. ALL BEING INCLUDED IN
CLASS 38”.
8. The registration is, clearly, not of the expression Lai Bhaari,
but of laibhaari.com, two very different things. I must note that
when the Plaintiff ventured further afield and attempted a rather
more ambitious registration of the expression “lai bhaari”, they met
opposition from the Registry. That application is yet pending.
9. What Plaintiff claims is that since they now have some selfproclaimed
popularity (I am compelled to say this for want of any
persuasive material on record), they, therefore, have a right to
restrain any person using the phrase or expression lai bhaari in any
context. It is common ground that the Defendants do not propose a
rival website or service using this expression at all. The Defendants
are producing a Marathi-language motion picture using this
common, colloquial phrase in the title. That film is ready for release
on 11th July 2014.
10. I do not think that it is possible in these circumstances to
accept Mr. Dewani’s submission that the registration of his client’s
domain name, laibhaari.com gives his client proprietary rights in
the common Marathi expression lai bhaari across all classes,
products and range of activities. The consequence of that
submission is far too wide, and far too dangerous. That is not the
mandate of intellectual property protection laws. By an extensive of
that reasoning, over a period of time, the entirety of a language
would be choked. Every title of every work of literature, theatre or
cinema, every piece of dialogue in a film would, conceivably, be hit
with claims of trade mark (or copyright) infringement. What Mr.
Dewani’s submissions postulate, in the context of this claim, is the
beginning of the end: a form of censorship and the gagging of
speech and expression. If this claim is allowed, there is absolutely
no limit to what will then be prohibited. Every language occupies its
own universe. Each has its integrity, its special grace, power, style,
cadences, variations, dialects and patois. The language of our state
is no exception. It is part of our culture and our tradition. Trade
mark infringement claims cannot be allowed to still the tongue of an
entire populace, even in the slightest. One of the tests postulated in
assessing such claims is to balance the private and personal rights
claimed against a larger public interest. On this test, too, the
Plaintiff must fail.
11. Mr. Dewani, relies on the decision of the Supreme Court in
M/s. Satyam Infoway Ltd. vs. M/s. Sifynet Solutions Pvt. Ltd.,1 and in
particular paragraph 9, to urge that a domain name has all the
trappings of a proprietary mark. What this submission overlooks, as
Mr. Dhond quite rightly points out, is that the dispute in that case
was about the domain name Sify, an artificial word in which the
plaintiff claimed rights. Mr. Dewani’s claim is altogether different:
he seeks exclusive rights over a phrase commonly and frequently
used by a very large swathe of this State’s people in quotidian
speech and communication.
12. Mr. Dewani also relies on the decision of the Supreme Court
in Mahendra and Mahendra Paper Mills Ltd. vs. Mahindra and
Mahindra Ltd.2 This was a case in passing off. The present suit
before me makes out no case in passing off whatever. In paragraph
15, the Supreme Court held:
“15. This question has been considered by different
High Courts and this Court in umpteen cases from time
to time. On analysis of the principles laid down in the
decisions, certain recognised parameters relating to the
matter have emerged. Without intending to be
exhaustive some of the principles which are accepted as
well settled may be stated thus: that whether there is a
likelihood of deception or confusion arising is a matter
for decision by the Court, and no witness is entitled to
say whether the mark is likely to deceive or to cause
confusion, that all factors which are likely to create or
allay deception or confusion must be considered in
combination; that broadly speaking, factors creating
1 AIR 2004 SC 3540
2 AIR 2002 SC 117
confusion would be, for example, the nature of the
market itself, the class of customers, the extent of the
reputation, the trade channels, the existence of any
connection in course of trade, and others.”
13. The Supreme Court considered the well settled law on the
subject, from Amritdhara Pharmacy v. Satya Deo Gupta.3 in 1963 to
Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd.4 in 2001.
The Supreme Court decision in Mahendra & Mahendra does not, in
my view, have any application to the facts of the present case. What
Mr. Dewani invites me to do is to expand well beyond the realms of
what is legally possible, and well beyond anything the Supreme
Court contemplated, the parameters of such protection. In
Mahendra & Mahendra the Supreme Court found that the
respondent’ corporate name Mahindra & Mahindra had, over a
period of several decades, acquired such distinctiveness and
secondary meaning that there was a unique association of certain
products with that company, and that company alone. The original
defendant (the Appellant before the Supreme Court) adopted the
name Mahendra & Mahendra as its corporate name. It had yet to
start any business. The Supreme Court held that in such a case
there was no doubt that the business and activities of the appellant
would be confused as those of the respondent. Critical to that
decision was the Supreme Court’s finding as a matter of fact that
the Respondent, Mahindra & Mahindra had, over a considerable
period of time, acquired certain proprietary rights in common law
in its corporate name. In the present case, there is no factual
material at all on which any such opinion can legitimately be
formed.
3 AIR 1963 SC 449
4 AIR 2001 SC 1952
14. To the contrary, Mr. Dhond points out that not only is the
phrase commonly used in everyday speech, writing and
communication, and that the Plaintiff cannot possibly want to
injunct all use of the phrase, but that it has been used even in the
online media and in several contexts for the last several years. The
Plaintiff, who now lays claims such zeal in protecting its so-called
proprietary rights, has done absolutely nothing in regard to these
other uses of the same phrase. For instance, a Marathi Television
Channel called 9X Jhakaas launched a new show with the same
name lai bhari (phonetically identical and missing only one vowel in
transliteration) in 2012. The Plaintiff did nothing. There is a music
CD available since 1995 that uses the same phrase. The Plaintiff has
not once objected. There are restaurants in Pune and Kolhapur that
use the same name. The Plaintiff’s silence is deafening. What Mr.
Dewani says is that his client will now move against all other users
of this phrase. That is too little too late. That particular horse has
long since bolted.
15. The requirements for the grant of an interim or an ad-interim
injunction must be made out irrespective of whether the action is
brought in respect of a trade mark, copyright or for any other
purpose: a strong prima facie case, irretrievable injury or prejudice
and balance of convenience. I do not believe that the Plaintiff has
made out even the slightest vestige of anything approaching a prima
facie case. There is no possible injury to the Plaintiff. There is no
question of any balance of convenience being in the Plaintiff’s
favour. None of the well-established tests for infringement have
been satisfied. The Plaintiff has absolutely no proprietory or
statutory rights in the phrase “lai bhaari”, no matter how spelled.
16. Ad-interim injunction is refused.
17. Affidavit in reply to be filed and served on or before 31st July
2014. Rejoinder, if any, to be filed and served on or before 21st
August 2014. No further affidavits without leave of the Court.
18. Defendants to file and serve their respective written
statements by 8th August 2014. List the suit for framing issues on
27th August 2014.
19. Notice of motion to be listed for hearing and final disposal on
27th August 2014.
20. All concerned to act on an authenticated copy of this order.
(G. S. PATEL, J.)
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