Delhi High Court
World Wrestling Entertainment ... vs M/S Reshma Collection & Ors. on 5 October, 2016
$~14.
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 1801/2013
% Judgment dated 5th October, 2016
WORLD WRESTLING ENTERTAINMENT INC
..... Plaintiff
Through : Ms. D. Neha Reddy and Ms. Vaishali
Mittal, Advs.
versus
M/S RESHMA COLLECTION & ORS. ..... Defendants
Through : None
CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI
G.S.SISTANI, J (ORAL)
1. The plaintiff has filed the present suit for permanent injunction
restraining the defendants from infringement of copyright, infringement
of trademarks; passing off; dilution; rendition of accounts; damages;
etc. The plaintiff has additionally prayed for a declaration that its
marks are well-known under Section 2 (zg) of the Trade Marks Act.
2. Prior to going into the averments made in the plaint, it would be
necessary to give the details of the proceedings. The present suit was
filed in the year 2013 and when it first came up before this court on
18.09.2013, this court adjourned the matter the enable the plaintiff to
satisfy the court with regard to the jurisdiction of this court. Thereafter
on 04.10.2013, after a detailed hearing this court returned the plaint for
the want of territorial jurisdiction. The plaintiff herein preferred an
appeal before a division bench of this court, being FAO (OS) 506/2013.
CS(OS). 1801/2013 Page 1 of 27
The division bench, vide judgment dated 15.10.2014, allowed the
appeal holding that this court had the jurisdiction to try the suit.
Summons in the suit were issued on 28.10.2014. The defendants were
allowed to be served by publication on 23.12.2015. On 15.02.2016,
considering that the defendants had been duly served by publication yet
there was no appearance, this court passed an order of interim
injunction. The plaintiff has also filed ex parte evidence of Mr. D.C.
Sharma, constituted attorney of the plaintiff, who has deposed on the
lines of the plaint.
3. As per the plaint, the plaintiff, which commenced its business in 1952, is
an international integrated media and entertainment company principally
engaged in the development, production and marketing of television
programming, pay-per-view programming, live events and the licensing
and sale of branded consumer products featuring its „WWE‟ brand. Since
as early as February, 1983, the plaintiff has been providing to the public
live and televised wrestling and entertainment events on a regular basis in
many major cities throughout the world including India.
4. The plaintiff was previously known as World Wide Wrestling Federation
(WWWF) and later as World Wrestling Federation (WWF). In 1982, it
was sold to the Titan Sports company, which later changed its name to
World Wrestling Federation Entertainment (WWFE), before finally
becoming World Wrestling Entertainment (WWE) in May 2002.
5. According to the plaintiff, since 1985 the plaintiff has an annual wrestling
and entertainment event, broadcast live on pay-per-view worldwide called
„WRESTLEMANIA‟ which culminates the year‟s events and is the
occasion for determining and crowning the champion WWE wrestler for
that year. „Wrestlemania‟is the biggest wrestling event of the year
attracting millions of viewers from all over the world. The plaintiff made
history as „Wrestlemania 29‟, televised live on pay-per-view 07.04.2013
CS(OS). 1801/2013 Page 2 of 27
worldwide, became the highest grossing event in WWE history. The event
generated over 1 million pay-per-view buys in more than 105 countries
and 20 languages, with global gross sales in excess of US $72 million.
With 80,676 in attendance, fans from all 50 states and 34 countries
attended the sold out event at the MetLife Stadium in East Rutherford,
New Jersey, USA. Besides Wrestlemania, the plaintiff is broadcasting
twelve (12) other live events in 2013, televised via pay-per-view.
Excluding Wrestlemania, such events include „Summerslam‟, „Royal
Rumble‟, „Extreme Rules‟, „Money In The Bank‟ etc. Since 2000, WWE
pay-per-views have generated an average of approximately US $100
million in revenue and over five million buys annually.
6. As per the plaint, consumers of the plaintiff‟s services and products are its
ardent fans. For its clientele, the plaintiff offers a variety of memorabilia
including, but not limited to apparels (including t-shirts, sweatshirts,
masks, hats, caps, jerseys, and belts); posters; calendars; fact books;
sunglasses; water bottles; key rings; action figures; DVDs; video tapes;
etc. The plaintiff claims that it has more than 200 licensees distributing
products in 86 countries, including India. In 2012, the plaintiff‟s
consumer products had global netrevenues of US $88Million. It also has
a large digital presence. Its official homepage, i.e. wwe.com, averaged
12.4 million monthly unique visitors in 2012. More than 100 million
videos are watched per month on wwe.com, YouTube.com/wwe and
hulu.com/wwe, combined.
7. The plaintiff (WWE) has more than 5 million „friends‟ on Facebook, more
than ESPN, Pepsi, MLB, Gatorade, NASCAR and the NFL. WWE has its
official online e-commerce store at wweshop.com which processed over
307,000 orders in 2012, leading to net revenues of US $15million. The
plaintiff also operates other websites, such as www.wwe.sify.com. These
websites are freely accessible to one and all and have served in making
CS(OS). 1801/2013 Page 3 of 27
customers worldwide aware of the plaintiff and its goods and services.
8. The plaintiff also publishes books with Simon & Schuster Inc. The
plaintiff‟s first biographies, "Hollywood Hulk Hogan" and "It‟s Good to
be King...Sometimes" by Jerry Lawler, became New York Times Best
Sellers. Plaintiff‟s other books include inter alia "The Stone Cold Truth"
and "WWE Unscripted." Since the plaintiff began publishing books, more
than twenty-three books have made the New York Times Bestseller List,
with three making it to the No. 1 position. The plaintiff‟s publishing
operations also consist of „WWE Magazine‟ and „WWE Kids Magazine‟,
special edition magazines and mini-magazines. The magazine business
has a combined annual circulation of approximately six million
subscribers.
9. The plaintiff submits that all its wrestling events feature professional
wrestlers having distinctive appearances and carrying fictitious and
unique names which are evocative of the image sought to be projected by
the characters. The combination of both name and image, has the effect
of making an indelible impression in the mind of the viewer. Thus, for
instance, there are wrestlers with names such as „John Cena‟,
„Undertaker‟, „Triple H (HHH)‟, „Batista‟, „Randy Orton‟, „The Rock‟,
„CM Punk‟, „Shawn Michaels‟, „The Great Khali‟, „Rey Mysterio‟,
„Edge‟, etc. As a further example of the "images" of these characters, the
character named „Undertaker‟ typically appears in wrestling exhibitions
and in printed matter as an intimidating figure in black with darkened
eyes. The plaintiff claims intellectual property rights of the plaintiff in its
characters like „The Great Khali‟, „Undertaker‟, etc., which are well
recognized by the public.
THE TRADEMARK RIGHTS OF THE PLAINTIFF:
10. As per the plaint, the plaintiff has obtained registrations of its
CS(OS). 1801/2013 Page 4 of 27
marks„World Wrestling Entertainment‟ and „ ‟(hereinafter „WWE
Scratch Logo‟ or „New Scratch Logo‟) in relation to various goods in
different countries worldwide, including in India. Additionally, some of
the fictitious names of the wrestlers have been registered as trademarks by
the plaintiff in relation to various goods in different classes in the USA
and India. Registrations of the plaintiff are as under:
TRADEMARK REG No. INTERNATIONAL CLASS
NEW SCRATCH LOGO &
WORLD WRESTLING 1111005 25
ENTERTAINMENT
WORLD WRESTLING 25
ENTERTAINMENT & New 1111006
Scratch Logo
WORLD WRESTLING
1111007 28
ENTERTAINMENT
WORLD WRESTLING
1111003 25
ENTERTAINMENT
WWE 1111004 25
WORLD WRESTLING
1110999 16
ENTERTAINMENT
WWE 1111008 28
WWE(logo) 1110998 09
NEW SCRATCH LOGO &
WORLD WRESTLING 1310606 41
ENTERTAINMENT
WWE 1111000 16
New Scratch Logo Design &
WORLD WRESTLING 1111002 16
ENTERTAINMENT
WORLD WRESTLING 1310605 41
CS(OS). 1801/2013 Page 5 of 27
ENTERTAINMENT
(Word)
WWE 1310604 41
WWE 1110996 09
11. The plaintiff has also registered its talent and their slogans. Details of
which are as under:
TRADEMARK REG No. INTERNATIONAL CLASS
JOHN CENA 1318958 16,25,28,41
703267B 25
UNDERTAKER 1022510 16
1318955 28,41
TRIPLE H (HHH) 1022512 16
1318946 28, 25, 41
RANDY ORTON 1318945 16, 25, 28, 41
BATISTA 1318951 16, 25, 28, 41
12. As per the plaint, the sporting events organized by the plaintiff are
broadcasted on television networks across the world and their viewership
rating constitutes a record of sorts. Each year, more than 7,500 hours of
television programming can be seen in more than 145 countries and 30
languages around the world. WWE programming can be seen in half a
billion television households worldwide. Versions of the plaintiff‟s
„RAW‟, „Smackdown‟, „WWE Superstars‟, and „WWE NXT‟
CS(OS). 1801/2013 Page 6 of 27
programmes are shown in United States domestic and international
markets.
13. In India, plaintiff‟s „RAW‟, „Smackdown‟, „WWE Superstars‟ and „WWE
NXT‟ programmes are televised on Ten Sports. With millions of men,
women and children patronizing hundreds of arenas around the world
each year, and watching numerous televised and pay-per-view
programming year-round, the plaintiff submits that„WWE‟ is among the
most popular brands in the world.Therefore, the plaintiff asserts statutory
and common law rights in the WWE trademarks.
COPYRIGHT OF THE PLAINTIFF
14. The plaintiff also claims to be the copyright owner of the pictorial
representations of the „WORLD WRESTLING ENTERTAINMENT‟ and
„WWE wrestlers‟ and the „WWE Scratch Logo‟ as they appear on the
various publicity material/promotional merchandise of the plaintiff. Apart
from this the plaintiff is also the proprietor of the events that are relayed
through various satellite channels throughout the world in various
languages and the same are sold in VCD/ DVD formats through
authorized publishers. The plaintiff submits that India and USA being
signatories to the Universal Copyright Convention as well as to the Berne
Convention, protection is afforded to the plaintiff‟s works since they are
created by authors of member countries, originate from and are first
published in the said member countries. This is by virtue of the Copyright
Act, 1957 read along with the International Copyright Order, 1958.
15. As per the plaint, the plaintiff acquires ownership of the copyright to the
photographs of these talents/characters by virtue of express declaration of
assignment given by the talents/characters and photographers in writing at
the time of undertaking a project. The declaration of the Talent, which is
in a standard format, states:
CS(OS). 1801/2013 Page 7 of 27
"Wrestler hereby grants to PROMOTER the exclusive right
during the term to video tape, film, photograph, or otherwise
record, or to authorize others to do so, by any media now
known or hereinafter discovered, Wrestler‟s appearance,
performance, commentary, and any other work product for or
related to the events or for or related to any and all of the
services performed by WRESTLER pursuant to the terms
herein."
16. Relying upon the aforegoing, the counsel for the plaintiff submits that the
talent/character assigns entire rights to the plaintiff to the use of the
photographs. The plaintiff, as a purchaser for valuable consideration, has
all such rights as are vested by the copyright law in the owner of such
photographs which are original artistic works. Further, being registered
with the Copyright Office in the United States of America the overall
format, structure, photographs, sequence, layout, etc. of the plaintiff‟s
magazines are also protected copyright works. These copyrights of the
plaintiff extend to India by virtue of the International Copyright Order,
1991 read along with Berne Convention and the Universal Copyright
Convention. The plaintiff further submits that the present suit concerns
infringement of copyright by the defendants in the photographs carried in
the plaintiff‟s talents/characters from time to time.
17. The plaintiff submits that it licenses the images and character of its talent
to third parties under strict conditions to ensure proper quality. The
plaintiff claims exclusive right to license to others to manufacture or deal
in or to reproduce the characters; the public is also aware of such
merchandising. The plaintiff‟s merchandising program at present includes
a product line of sales of goods falling under nearly 25 different
categories; including various types of apparels, action figures and toys,
video games, trading cards, sticker albums, music CDs, and shows
featured in VCD‟s and DVD‟s.
18. In the Indian market, plaintiff licenses among other things, T-shirts, sweat
CS(OS). 1801/2013 Page 8 of 27
shirts, caps, vests and other licensed products like CDs, VCDs and DVDs
reproducing the well known trademarks World Wrestling Entertainment,
WWE, the WWE Scratch Logo, and the WWE characters of the plaintiff
on the said products.
PRESENCE OF THE PLAINTIFF IN INDIA
19. The plaintiff submits that the above mentioned rights of the plaintiff
extend to India among other countries and are valuable for the Plaintiff in
as much as substantial revenues are earned by the plaintiff by virtue of its
business in India. Several Indian wrestlers like „The Great Khali‟ and
„Jinder Mahal‟ are a part of the plaintiff‟s business and have gained
immense popularity with audiences worldwide, including India. The
plaintiff has also recently opened an office in India at Mumbai. The
plaintiff‟s licensees in India market licensed products of the plaintiff,
reproducing its trademarks and characters on the said products; more
particularly mentioned in paragraph 18 aforegoing.
20. On Indian television, Ten Sports broadcasts WWE shows on a regular
basis. Public awareness of the Plaintiff, its trademarks and its activities
which receive unprecedented media coverage and publicity. The plaintiff
submits that thus, the activities of the Plaintiff under the trademark/trading
style „World Wrestling Entertainment‟, „WWE‟ and the trademarks
„WWE logo‟ are very well-known in India and the different WWE
characters, each with his unique and highly distinctive name and image,
are also exclusively associated with the plaintiff.
21. I have heard the learned counsel for the plaintiff and examined the
plaint, affidavit of PW-1 and the documents placed on record. I deem it
appropriate to deal with the prayers of the plaintiff under different
heads.
CS(OS). 1801/2013 Page 9 of 27
WELL-KNOWN MARK
22. The plaintiff in paragraph 34 (vi) of the plaint has sought a declaration
that its marks: „WWE‟; „World Wrestling Entertainment‟; and the New
Scratch Logo are well-known marks in India in terms of Section 2 (zg)
and 11 (6) of the Trade Marks Act, 1999.
23. The law in respect of declaration of a mark to be well-known in India is
no longer res integra. A coordinate bench of this court had in the case
of Tata Sons Ltd. v. Manoj Dodia & Ors., 2011 (46) PTC 244 (Del.)
had summed up the tests to be applied by court as to whether a mark is
well-known or not. The relevant paragraphs read as under:
"5. A well known trademark is a mark which is widely
known to the relevant general public and enjoys a
comparatively high reputation amongst them. On account of
advancement of technology, fast access to information,
manifold increase in international business, international
travel and advertising/publicity on internet, television,
magazines and periodicals, which now are widely available
throughout the world, of goods and services during
fairs/exhibitions, , more and more persons are coming to
know of the trademarks, which are well known in other
countries and which on account of the quality of the
products being sold under those names and extensive
promotional and marketing efforts have come to enjoy
trans-border reputation. It is, therefore, being increasingly
felt that such trademark needs to be protected not only in
the countries in which they are registered but also in the
countries where they are otherwise widely known in the
relevant circles so that the owners of well known
trademarks are encouraged to expand their business
activities under those marks to other jurisdictions as
well.The relevant general public in the case of a well known
trademark would mean consumers, manufacturing and
business circles and persons involved in the sale of the
goods or service carrying such a trademark.
...
13. Trademarks Act, 1999 does not specify the factors which
the Court needs to consider while determining whether a
mark is a well known mark or not, though it does contain
factors which the Registrar has to consider whether a
trademark is a well known mark or not. In determining
whether a trademark is a well known mark or not, the Court
needs to consider a number of factors including (i) the
extent of knowledge of the mark to, and its recognition by
the relevant public; (ii) the duration of the use of the mark;
(iii) the extent of the products and services in relation to
which the mark is being used; (iv) the method, frequency,
extent and duration of advertising and promotion of the
mark; (v) the geographical extent of the trading area in
which the mark is used; (vi) the state of registration of the
mark; (vii) the volume of business of the goods or services
sold under that mark; (viii) the nature and extent of the use
of same or similar mark by other parties; (ix) the extent to
which the rights claimed in the mark have been successfully
enforced, particularly before the Courts of law and
trademark registry and (x) actual or potential number of
persons consuming goods or availing services being sold
under that brand. A trademark being well known in one
country is not necessarily determinative of its being well
known and famous in other countries, the controlling
requirement being the reputation in the local jurisdiction."
(Emphasis Supplied)
24. Further, in the case of Rolex SA v. Alex Jewellery Pvt. Ltd.,
2014(60)PTC131(Del), it was held that:
"38. Section 2(zg) of the TM Act defines a 'well known trade
mark' in relation to any goods or services to mean 'a mark
which has become so to the substantial segment of the
public which uses such goods or receives such services that
the use of such mark in relation to other goods or service
would be likely to be taken as indicating a connection in the
course of trade or rendering of services between those
goods or services and a person using the mark in relation to
the first-mentioned goods or services.' Under
Section 11(9)(i) and (v), for the purposes of registration of a
well-known mark it is not necessary for such mark to have
been used in India or be well-known to the public at large in
India. It must be well known to a substantial segment of the
relevant public."
(Emphasis Supplied)
25. In order to support his case that its marks are well-known, the counsel
for the plaintiff has argued the following grounds:
a. The plaintiff‟s marks are well recognized and are within the
knowledge of the public. To establish the same, the counsel relies
upon the fact that the plaintiff has more than 200 licensees
marketing products in more than 86 countries in India; more than
100 million views per month cumulatively on wwe.com,
YouTube.com/wwe, and hulu.com/wwe; and its regular broadcasts
in India on Ten Sports.
b. The marks of the plaintiff have been used for extended period: the
marks have been used atleast since 2002, when the plaintiff
changed its name from World Wrestling Federation (WWF) to
World Wrestling Entertainment (WWE); further, the
talents/characters‟ marks have been used even by the plaintiff‟s
predecessor‟s in interest prior to 2002.
c. Plaintiff has a substantial market in India: the plaintiff licensees
market, inter alia, T-shirts, sweat shirts, caps, vests and other
products such as CD‟s VCD‟s and DVD‟s in India.
d. The plaintiff‟s marks enjoy a broad-based public awareness and an
unprecedented media coverage.
e. The plaintiff‟s goods and merchandise reproducing its marks are
available for sale through its interactive online e-commerce store at
wweshop.com; orders from the said website can, and have been,
placed throughout India and abroad.
f. The plaintiff enjoys numerous trademark registrations in India and
abroad.
g. The volume of the business and sales under the marks: the plaintiff
has garnered tremendous business for its goods sold under its
marks; the plaintiff‟s online e-commerce store processed over
307,000 orders in 2012 alone, leading to net revenues of US$15
Million. Further, one of the Plaintiff‟s pay-per-view televised
events, „Wrestlemania 31‟ held in 2015, generated over 1.3 million
pay-per-view and WWE Network Over-the-Top (OTT) buys in
over 100 countries. Since 2000, the plaintiff‟s pay-per-view events
have generated an annual average of approximately US $100
million in revenue.
h. The plaintiff has successfully enforced its rights and obtained a
recognition of its rights in the said marks by this court;
i. The plaintiff has a vast number of actual and potential persons
consuming its goods and merchandise.
26. In view of the aforegoing and applying the test laid down, I find the
marks of the plaintiff to be well-known in India. I do so as all the tests
laid down in Tata Sons Ltd. (Supra) stand satisfied. The marks of the
plaintiff has been extensively used in India and has garnered wide
recognition;user since 2002, after the plaintiff was changed to its
present form;use in respect of varied products, enumerated paragraph
17 aforegoing;extensive promotion in India; wide and numerous
registrations; the volume of sales of the plaintiff‟s merchandise as well
as the viewership of its events; regular enforcement of the rights; and
the consumer base of the plaintiff.
27. Accordingly, I am of the view that the marks „WWE‟; „World
Wrestling Entertainment‟; and its new scratch logo, i.e. „ ‟ are
well-known marks in India.
DEFENDANT'S ACTIVITIES
28. It is the case of the plaintiff that in the month of July, 2013, the plaintiff
learnt that the defendants are engaged in selling and offering for sale
counterfeit products includingT-shirts, caps and wrist bands bearing the
images of its talents. In the goods of the defendants, the characters
„Randy Orton‟, „CM Punk‟ and „John Cena‟were displayed. The goods
further displayed the plaintiff‟s registered trade mark „New Scratch logo‟.
In addition, the defendants were also offering for sale T-shirts and caps
bearing the plaintiff‟s device mark „U CANT SEE ME‟.
29. Thereafter, in order to determine the extent of the infringing activities of
the defendants. On 13.07.2013, a private investigation was carried out.
As per the plaintiff, during the investigation the following infringements
were established:
S. No. Defendants' Product Infringement
1. i. Reproduction of the
Plaintiff‟s talent "JOHN
CENA".
ii.Representation of the
WWE Talent "JOHN
CENA" is distorted and
in the wrong colour.
iii. Reproduction of the
Plaintiff‟s marks
"NEVER GIVE UP" and
"10 YEARS STRONG"
i. Reproduction of the
Plaintiff‟s mark "YOU
CANT SEE ME"
ii. The "YOU CANT
SEE ME" device mark
font is incorrect.
i. The neck tag is that of a
third party "4 PLAY -
FUN UNLTD" and not
the "Authentic Wear" tag
used on the Plaintiff‟s
genuine merchandise.
ii. The Hologram placed
on the neck of the t-shirt
is that of a third party "4
PLAY - FUN UNLTD"
and not an authentic
hologram of the Plaintiff.
iii. Hang tag on the neck
is that of a third party "4
PLAY - FUN UNLTD"
and not that of the
Plaintiff‟s
iv. None of the tags or the
hologram are correct
(does not have "WWE
Authentic" marking" or
the trademark registration
"®" symbol).
i. Reproduction of the
Plaintiff‟s mark
"HUSTLE LOYALTY
RESPECT"
ii. Reproduction of the
Plaintiff‟s mark "10
YEARS STRONG"
i. Reproduction of the
Plaintiff‟s mark
"HUSTLE LOYALTY
RESPECT"
2. i. Reproduction of the
"YOU CANT SEE ME"
mark.
ii. The font of the logo is
smaller than it should be.
iii. Reproduction of the
Plaintiff‟s mark
"HUSTLE LOYALTY
RESPECT"
iv. There are no tags
anywhere on this product.
i. Reproduction of the
Plaintiff‟s mark
"HUSTLE LOYALTY
RESPECT"
3. i. There are no tags
anywhere on this product.
ii. The Skull in head-
dress logo is unrelated to
the Plaintiff, however, the
inside neck bears an
infringing WWE Scratch
Logo.
30. The plaintiff submits that common to all of the counterfeit goods is the
fact that none of them bear the "Authentic Wear" tag on them nor do they
carry the proper trade mark registration „®‟ symbol. The infringing
activities have also been corroborated by the report of the local
commissioner dated 10.12.2014 which affirms the activities of the
defendant.
INFRINGEMENT OF TRADE MARK AND COPYRIGHT
31. The plaintiff claims that the marks under its registered marks „WWE‟;
„New WWE scratch logo‟; the words marks „Undertaker‟, „John Cena‟,
„Batista‟, Randy Orton‟ and „Triple H‟.
32. Section 29 (2) of the Trade Marks Act stipulates the conditions when
usage by a person amounts to infringement of a registered trademark.
Section 29 (2) and (3) read as follows:
"(2) A registered trade mark is infringed by a person who,
not being a registered proprietor or a person using by way
of permitted use, uses in the course of trade, a mark which
because of--
(a) its identity with the registered trade mark and the
similarity of the goods or services covered by such
registered trade mark; or
(b) its similarity to the registered trade mark and the
identity or similarity of the goods or services covered
by such registered trade mark; or
(c) its identity with the registered trade mark and the
identity of the goods or services covered by such
registered trade mark,
is likely to cause confusion on the part of the public, or
which is likely to have an association with the registered
trade mark.
(3) In any case falling under clause (c) of sub-section (2),
the court shall presume that it is likely to cause confusion
on the part of the public."
(Emphasis Supplied)
33. Since the marks being used are identical and the the goods being
applied to are also identical, it stands proved that the activities of the
defendant no. 3 are infringing the registered mark of the plaintiff under
Section 29 of the Trade Marks Act. The presumption contained in sub-
section (3) of Section 29 also comes to the aid of the plaintiff in the
present matter.
34. Additionally, the counsel for the plaintiff sumits that the illegal
representation of the WWE characters and „WWE Scratch Logo‟ by the
Defendant on the impugned counterfeit products has led to intentional
infringement of the copyrights belonging to the plaintiff as per the
Copyright Act, 1957.
35. In Burroughs Wellcome (India) Ltd. v. Uni-Sole Pvt. Ltd. & Anr.,
1999(19)PTC188(Bom), the Bonbay High Court observed as under:
"8. Copyright is a form of intellectual property. With
advancement in technology it is very easy to copy. The basic
test in actions based on the infringement of the copy right is
that if a thing fetches a price, it can always be copied and
therefore, it needs adequate protection. It is well settled that
although under the Copy Right Act 1957, there is a
provision of registration, under section 44 of the Act. It is
not in doubt that the said procedure is an enabling
provision and registration is not compulsory for the purpose
of enforcing copy right. Section 44 of the Act provides for
registration of work in which copy right exists but in order
to claim copy right registration is not necessary. This is
because registration is only to raise a presumption that the
person shown in the certificate of registration is the author.
This presumption is not conclusive, but no further proof is
necessary unless there is a proof rebutting the contents of
the said certificate. Under section 48 of the Registration Act
therefore, the act of registration is ex-fade prima-facie
evidence of the particulars incorporated in the certificate.
There is no provision under the Act which deprives the
author of his rights on account of non-registration of the
copy right. There is nothing in the Act to suggest that the
registration is condition precedent to the subsistence of the
copy right or acquisition of copy rights or owner-ship there
of or for reliefs of infringement of copy rights.The sine-qua-
non of existence of a copy right is expenditure of skill,
labour and capital on any work expended by a
person/author and unless the original work is produced in
Court to prima-facie show that the work has originated
from author, no relief can be granted. In other words, copy
right exists even without it being registered for the purposes
of its enforcement. The nature of copy right is also meant to
be borne in mind. It subsists in any material form in which
ideas are translated. Copy right is a incorporeal right. It
does not lie in any idea, but it lies in the expression in which
the idea is expressed. The work of an author therefore
becomes the subject matter of the copy right. In essence the
copy right is a negative right of preventing copying of
physical material in the field of art, literature etc. Once an
idea is written down, the writing becomes the subject matter
of copy right..."
(Emphasis Supplied)
36. In the present case, it is evident from the photographs in the plaint and
reproduced in paragraph 29 aforegoing and the photographs taken
during the visit of the local commissioner on 14.11.2014 that the
defendants have applied the marks of the plaintiff as well as the
photographs of its talent, which are within the exclusive domain of the
plaintiff. Further, the declaration signed by the talent of the plaintiff,
reproduced in paragraph 15 aforegoing, leaves no room for doubt that
the plaintiff is the copyright owner in the said works.
37. Accordingly, in my view, the defendants have infringed the copyright
and trademarks of the plaintiff.
PASSING OFF
38. The counsel for the plaintiff submits that the WWE characters and its
marks are immensely popular and appear on the plaintiff‟s publicity
material/merchandise. Further, the Plaintiff by its long and continuous
use of its characters and other WWE Trade Marks has acquired immense
reputation and goodwill for its business. Accordingly, the plaintiffs have
acquired common law rights in the same marks.
39. Counsel further submits that the use of the same by the defendants is
blatantly dishonest and a mala fide attempt by them to derive an unfair
advantage by creating the impression that their products emanate from the
plaintiff and have some connection, nexus, association, affiliation with or
endorsement by the plaintiff.
40. I have heard the learned counsel in this regard, prior to proceeding
further, it is necessary to appreciate the nature of a passing off action.
Passing Off action arises out of common law and is not pre-conditioned
on registration. The term „passing off‟ was explained by James, L.J. in
Singer Manufacturing Co. v. Loog, (1880) 18 ChD 395 as under:
"...I have often endeavoured to express what I am going to
express now (and probably I have said it in the same words,
because it is very difficult to find other words in which to
express it) -- that is, that no man is entitled to represent his
goods as being the goods of another man; and no man is
permitted to use any mark, sign or symbol, device or other
means, whereby, without making a direct false
representation himself to a purchaser who purchases from
him, he enables such purchaser to tell a lie or to make a
false representation to somebody else who is the ultimate
customer."
(Emphasis Supplied)
41. Lord Diplock in Erven Warnink Besloten Vennootschap v. J.
Townend & Sons (Hull) Ltd.,[1979] A.C 731 had identified five
essentials to establish an action of passing off. The relevant excerpt is
as under:
"My Lords, A.G Spalding and Brothers v. A. W. Gamage
Ltd., 84 L.J.Ch 449, and the later cases make it possible to
identify five characteristics which must be present in order
to create a valid cause of action for passing off: (1) a
misrepresentation, (2) made by a trader in the course of
trade, (3) to propsective customers of his or ultimate
consumers of goods or services supplied by him, (4) which
is calculated to injure the business or goodwill of another
trader (in the sense that this is a reasonably foreseeable
consequence) and (5) which causes actual damage to a
business or goodwill of the trader by whom the action is
brought or (in a quia timet action) will probably do so."
(Emphasis Supplied)
42. The aforegoing essentials have been accepted by the Supreme Court in
Cadila Health Care Ltd.v.Cadila Pharmaceuticals Ltd., (2001) 5 SCC
73 and Heinz Italiav. Dabur India Ltd., (2007) 6 SCC 1. In Cadila
Health Care Ltd. (Supra), the Supreme Court had further laid down
the following decisive tests for checking deceptive similarity:
"35. Broadly stated, in an action for passing-off on the basis
of unregistered trade mark generally for deciding the
question of deceptive similarity the following factors are to
be considered:
(a) The nature of the marks i.e. whether the marks
are word marks or label marks or composite marks
i.e. both words and label works.
(b) The degree of resembleness between the marks,
phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they
are used as trade marks.
(d) The similarity in the nature, character and
performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the
goods bearing the marks they require, on their
education and intelligence and a degree of care they
are likely to exercise in purchasing and/or using the
goods.
(f) The mode of purchasing the goods or placing
orders for the goods.
(g) Any other surrounding circumstances which may
be relevant in the extent of dissimilarity between the
competing marks.
36. Weightage to be given to each of the aforesaid factors
depending upon facts of each case and the same weightage
cannot be given to each factor in every case."
(Emphasis Supplied)
43. In the present case, applying the aforegoing test I am of the view that
the defendants have tried to dupe the general public by portraying their
products in a manner that they originate from the plaintiff. The
defendants have used the marks of the plaintiff, photographs of its
talent as well as their tag-lines. Such usage would inevitably lead to
loss of revenue as also that of goodwill. Accordingly, the defendants
have not only indulged in infringement, but also into the offence of
passing off.
DILUTION OF THE TRADEMARK OF THE PLAINTIFF
44. Having held the marks of the plaintiff to be well-known in paragraph
27 aforegoing, I must deal with the aspect of dilution.In this respect, in
Tata Sons Ltd. (Supra)it was held as under:
"6. The doctrine of dilution, which has recently gained
momentous,particularly in respect of well known
trademarks emphasises that use of a well known mark even
in respect of goods or services, which are not similar to
those provided by the trademark owner, though it may not
cause confusion amongst the consumer as to the source of
goods or services, may cause damage to the reputation
which the well known trademark enjoys by reducing or
diluting the trademark's power to indicate the source of
goods or services."
(Emphasis Supplied)
45. From the aforegoing observations, it is clear that dilution occurs when
the power of the trademark to indicate the source of the goods gets
reduced. A well-known trademark, owing to its use and reputation,
establishes a clear origin of the goods in the mind of every consumer
who may come across it. This is its primary purpose. Whenever any
other person tries to use the mark, the same may reduce the capacity of
the mark to indicate to the origin of the goods and lead to dilution of
this differentiating capacity of the mark.
46. Applying the said principle in the present case, the use of the marks by
the defendants will inevitably create a confusion as to the origin of the
products and dilute its distinctiveness. Therefore, I am of the view, that
the defendants have also diluted the well-known marks of the plaintiff.
47. Having held that the defendants have infringed the copyright and
registered trademarks of the plaintiff, committed the tort of passing off
and dilution, the only other issue which remains in the present suit is
damages.
PUNITIVE DAMAGES
48. With regard to the relief of damages as claimed by the plaintiffs in
paragraph34 (v) of the plaint pertaining to rendition of accounts and
decree for the amount so determined, it is pertinent to note that since
the defendants have chosen not to contest the present proceedings, it is
not possible to ascertain as to the specific amounts raised from the use
of the infringing marks. But, the same cannot handicap the courts from
giving punitive/ tentative damages.
49. Further this court has also frequently resorted to the practice of granting
punitive damages in addition to compensatory damages. To this end, in
Time Incorporated v. Lokesh Srivastava & Anr., 2005 (30) PTC 3
(Del): 2005 (116) DLT 599, while awarding punitive damages of Rs. 5
lakhs in addition to compensatory damages also of Rs. 5 lakhs, Justice
R.C. Chopra observed as under:
"8. This Court has no hesitation on saying that the time has
come when the Courts dealing actions for infringement of
trade marks, copy rights, patents etc. should not only grant
compensatory damages but award punitive damages also
with a view to discourage and dishearten law-breakers who
indulge in violations with impunity out of lust for money so
that they realise that in case they are caught, they would be
liable not only to reimburse the aggrieved party but would
be liable to pay punitive damages also, which may spell
financial disaster for them. In Mathias v. Accor Economy
Lodging Inc., 347 F.3d 672 (7th Cir. 2003) the factors
underlying the grant of punitive damages were discussed
and it was observed that one function of punitive damages is
to relieve the pressure on an overloaded system of criminal
justice by providing a civil alternative to criminal
prosecution of minor crimes. It was further observed that
the award of punitive damages serves the additional
purpose of limiting the defendant's ability to profit from its
fraud by escaping detection and prosecution. If a torfeasor
is caught only half the time he commits torts, then when he
is caught he should be punished twice as heavily in order to
make up for the times he gets away.This Court feels that this
approach is necessitated further for the reason that it is very
difficult for a plaintiff to give proof of actual damages
suffered by him as the defendants who indulge in such
activities never maintain proper accounts of their
transactions since they know that the same are
objectionable and unlawful. In the present case, the claim of
punitive damages is of Rs. 5 lacs only which can be safely
awarded. Had it been higher even, this Court would not
have hesitated in awarding the same. This Court is of the
view that the punitive damages should be really punitive
and not flea bite and quantum thereof should depend upon
the flagrancy of infringement."
(Emphasis Supplied)
50. This court in the case of Microsoft Corporation v. Rajendra Pawar &
Anr., 2008 (36) PTC 697 (Del.) has held:
"22. Perhaps it has now become a trend of sorts, especially
in matters pertaining to passing off, for the defending party
to evade Court proceedings in a systematic attempt to
jettison the relief sought by the Plaintiff. Such flagrancy of
the Defendant's conduct is strictly deprecatory, and those
who recklessly indulge in such shenanigans must do so at
their peril, for it is now an inherited wisdom that evasion of
Court proceedings does not de facto tantamount to escape
from liability. Judicial Process has its own way of bringing
to task such erring parties whilst at the same time ensuring
that the aggrieved party who has knocked the doors of the
Court in anticipation of justice is afforded with adequate
relief, both in law and in equity. It is here that the concept
of awarding punitive damages comes into perspective.
23. Punitive damages are a manifestation of equitable relief
granted to an aggrievedparty, which, owing to its inability
to prove actual damages, etc., could not be adequately
compensated by the Court. Theoretically as well as
practically, the practice of awarding of punitive damages
may be rationalized as preventing under-compensation of
the aggrieved party, allowing redress for undetectable torts
and taking some strain away from the criminal justice
system. Where the conduct of the erring party is found to be
egregiously invidious and calculated to mint profits for his
own self, awarding punitive damages prevents the erring
party from taking advantage of its own wrong by escaping
prosecution or detection."
(Emphasis Supplied)
51. A coordinate bench of this court in the case of The Heels v. Mr. V.K
Abrol and Anr., CS(OS) NO.1385 of 2005 decided on 29.03.2006has
held:
"11. This court has taken a view that where a defendant
deliberately stays away from the proceedings with the result
that an enquiry into the accounts of the defendant for
determination of damages cannot take place, the plaintiff
cannot be deprived of the claim for damages as that would
amount to a premium on the conduct of such defendant. The
result would be that parties who appear before the court
and contest the matter would be liable to damages while the
parties who choose to stay away from the court after having
infringed the right of the plaintiff, would go scotfree. This
position cannot be acceptable.
12. No doubt it is not possible to give an exact figure of
damages on the basis of actual loss, but certain token
amounts on the basis of the sales of the plaintiff can
certainly be made. The plaintiff is unnecessarily dragged
into litigation and the defendants must bear consequences
thereof. In fact in such a case both compensatory and
punitive damages ought to be granted apart from the costs
incurred by the plaintiff on such litigation.In view of the
given sales figure of the plaintiff, I consider it appropriate
to grant a decree of damages in favor of the plaintiff and
against the defendants for a sum of Rs 3 lakh apart from
costs of the suit."
(Emphasis Supplied)
52. Having regard to the facts of this case, rupees five lakhs is awarded as
punitive damages in favour of the plaintiff and against the defendant in
terms of para 34 (v) of the plaint.
53. Accordingly, the present suit is decreed in favour of the plaintiff and
against the defendants in terms of paragraphs 34 (i), (ii), (iii), (iv) and
(vi) of the plaint along with damages of rupees five lakhs.
54. Let a decree sheet be drawn accordingly.
G.S.SISTANI, J
OCTOBER 05, 2016
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