Disney Enterprises ,Inc & Anr vs Gurmeet Singh & Ors
2011 Latest Caselaw 5167 Del

44.
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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

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

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

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

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

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

32 1231450

CLASSIC POOH & DEVICE 30 877459

CLASSIC POOH & DEVICE 18 877450

Goofy Device 16 01231362 DAISY DUCK DEVICE 1231495

DAISY DUCK DEVICE 1231496

DAISY DUCK DEVICE 1231497

DAISY DUCK DEVICE 24 1231498

DAISY DUCK DEVICE 32 1231503

WALT DISNEY 09 516177

WALT DISNEY 14 516178

516180

WALT DISNEY 28 516181

.

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

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.

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
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