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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 1451/2011
% Order delivered on: 20.10.2011
DISNEY ENTERPRISES ,INC & ANR ..... Plaintiffs
Through : Ms. Tanya Varma, Adv.
versus
GURMEET SINGH & ORS ..... Defendants
Through : Mr. Vibhu Tiwari, Adv.
CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI
1. Whether the Reporters of local papers may be allowed to see
the judgment?
2. To be referred to Reporter or not?
3. Whether the judgment should be reported in the Digest?
G.S.SISTANI, J. (ORAL)
1. Plaintiff has filed the present suit for permanent injunction restraining infringement of trademark, passing off, trademark dilution, and delivery up.
2. Plaintiffs are stated to be engaged in the variety of businesses including operation of theme parks and hotel services around the world, producing and distributing motion pictures and television programmes, producing and selling clothing, books, records, toys and other merchandise, and providing entertainment services. Plaintiffs' business also include merchandising and licensing of distinctive elements associated with its motion pictures and television programmes including but not limited to the world CS(OS) 1451/2011 Page 1 of 10 famous fanciful characters Mickey Mouse, Minni Mouse, Donald Duck, Daisy Duck, Goofy, Pluto and Winnie the Pooh and Tiger as well as the characters from 'DISNEY' trademark, animated motion pictures including but not limited to 'Snow White and the Seven Dwarfs', 'Pinocchio, 'The Lion King', 'Aladdin, 'Beauty and the Beast', 'The Little Mermaid', and the like. According to the plaint, the character Mickey Mouse was created in the year 1928 in connection with animated motion picture 'Steamboat Willie' and has over the years starred in more than 120 different cartons. This character also starred in 'The Mickey Mouse Club' television show in the 1950s. Various details of this character has been extracted in the plaint. Plaintiffs' have also extracted details of its trade mark in India in the plaint, which are reproduced below:
Trademark Class Registration / Application No. Mickey Mouse (Device) 24 596839 Mickey Mouse (word) 24 596842 CS(OS) 1451/2011 Page 2 of 10 Mickey Mouse (word) 14 596840 MICKEY MOUSE 28 596844 MICKEY MOUSE DEVICE 25 959760 Mickey Mouse Device 16 01231663 Mickey Mouse Device 18 1231664 Mickey Mouse Device 21 01231666 Mickey Mouse Device 32 01231672 (Classic) Mickey Mouse Device 18 01231729 (Classic) Mickey Mouse Device 25 01231733 (Classic) 28 596850 MINNIE MOUSE Donald Duck 14 516165 Donald Duck 25 516167 Donald Duck 28 516168 CS(OS) 1451/2011 Page 3 of 10 24 596827 Donald Duck 14 596828B Donald Duck 16 596829B Donald Duck 28 596832 Donald Duck 25 596831 MINNIE MOUSE 25 596849 MINNIE MOUSE (Device) 14 516157 24 596845 MINNIE MOUSE (Device) MINNIE MOUSE 14 596846 MINNIE MOUSE 24 596848 CS(OS) 1451/2011 Page 4 of 10 Minnie Mouse Device 25 01231616 Minnie Mouse Device 28 01231617 Minnie Mouse Device 29 01231618 Minnie Mouse Device 30 01231619 Minnie Mouse Device 09 01231439 (Classic) Minnie Mouse Device 14 01231440 (Classic) Minnie Mouse Device 20 01231443 (Classic) Minnie Mouse Device 21 01231444 (Classic) Minnie Mouse Device 29 01231448 (Classic) 24 596833 GOOFY (Device) GOOFY 16 596835B 25 596837B GOOFY GOOFY 28 596838 CS(OS) 1451/2011 Page 5 of 10 Goofy Device 16 01231362 Goofy Device 14 01231361 Goofy Device 18 01231363 Goofy Device 32 01231371 21 1231510 743127 That's Donald 21 (TM-27) 743130 That's Donald 28 (TM-30) Donald Duck Device 21 01231510 14 1231361 41 1238865 30 1231449 32 1231672 CS(OS) 1451/2011 Page 6 of 10 32 1231450 CLASSIC POOH & DEVICE 30 877459 CLASSIC POOH & DEVICE 18 877450 Goofy Device 16 01231362 DAISY DUCK DEVICE 1231495 18 DAISY DUCK DEVICE 1231496 20 DAISY DUCK DEVICE 1231497 21 DAISY DUCK DEVICE 24 1231498 DAISY DUCK DEVICE 32 1231503 WALT DISNEY 09 516177 WALT DISNEY 14 516178 516180 WALT DISNEY 25 WALT DISNEY 28 516181 .CS(OS) 1451/2011 Page 7 of 10
3. Learned counsel for the plaintiffs submits that defendants are carrying on the business of providing services under the trade name/style HOTEL DISNEY INN.
4. Learned counsel for the plaintiffs submits that mark of the plaintiffs is well known within the meaning of Section 2(1)(zg) of Trade Marks Act. Counsel further submits that based on its long user the plaintiffs claim that they have earned a huge goodwill and tremendous reputation through the world including in India. Counsel next submits that unauthorized use of such characters in relation to any items of merchandise would create a high degree of confusion and deception resulting in passing off.
5. While issuing summons in the suit and notice in the application on 2.6.2011, this Court had passed ex parte ad interim injunction in favour of the plaintiffs.
6. At the first call, learned counsel for the parties have submitted that parties are open for an amicable settlement. Accordingly, Mr. Hemant Singh, Advocate, who was present in the Court, was appointed as a Mediator in this matter. The matter was passed over once. At the second call, learned counsel for the parties submit that parties have arrived at an amicable settlement on the following agreed terms:
(i) Defendants admit the averments made by the plaintiff in the plaint and acknowledge that the mark of the plaintiff is well known within the meaning of Section CS(OS) 1451/2011 Page 8 of 10 2(1)(zg) of the Trademark Act. Counsel for the defendants also submits that defendants have no objection if the present suit is decreed in terms of prayers i, ii, iii, iv & vi of the plaint, subject to condition that plaintiffs gives up relief in terms of prayer v of the plaint with regard to damages, to which plaintiffs have no objection;
(ii) Defendants would destroy all materials including business cards, brochures, signage, cutlery, crockery and all other items bearing the impugned name/character DISNEY in the presence of the representative of the plaintiffs.
7. I have heard counsel for the parties. Having regard to the averments made in the plaintiff, the documents placed on record by counsel for the plaintiff, I am of the view that the settlement arrived at between the parties is lawful. The trademark WALT DISNEY and Disney Characters have acquired a tremendous reputation and goodwill throughout the world including in India so much so that the unauthorized use of such characters in relation to any items of merchandise would create a high degree of confusion and deception resulting in passing off. As a result of the plaintiff's exclusive and extensive use and protection of the characters, the said characters have achieved a secondary meaning identifying in the minds of the consuming public the goods and services of the plaintiff exclusively.
CS(OS) 1451/2011 Page 9 of 10
8. Accordingly, as agreed, suit stands decreed in above terms of settlement leaving the parties to bear their own costs. Court appreciates the efforts put in by the learned Mediator, counsel for the parties and the parties to arrive at an amicable settlement.
9. In view of the settlement arrived at through Mediation, learned counsel for the plaintiffs submits that court fee be refunded to the plaintiffs in terms of Section 16 of the Court Fee Act. Let court fee be refunded to the plaintiff in terms of Section 16 of the Court Fee Act.
I.A.NOS.9571/2011 & 14043/2011.
10. Applications stand disposed of in view of the order passed in the suit.
G.S.SISTANI,J
OCTOBER 20, 2011
msr
CS(OS) 1451/2011 Page 10 of 10