ROHIT SHETTY’S FILM SIMMBA FACES TRADEMARK INFRINGEMENT CLAIM BY A BEVERAGE COMPANY

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M/s Sona Beverages Pvt. Ltd. (“Plaintiff”) has instituted a trademark infringement suit in the Delhi High Court against Rohit Shetty Picturez LLP (“Defendant”) claiming infringement of its registered trademark ‘SIMBA’ by the Defendant’s film which is titled ‘SIMMBA’.

Justice Prathiba M. Singh vide Order dated November 2, 2018 has directed the Defendant to respond to the Plaintiff’s notice. The Defendant has also been directed to endeavour to work out an arrangement for addressing the use of the mark. In the event the parties fail to reach an agreement, the matter would be taken up by the Court on the next date of hearing which is December 4, 2018. The Ranveer Singh and Sara Ali Khan starrer SIMMBA is proposed to be released on December 28, 2018.

The Plaintiff has claimed that its registered mark is used for a wide variety of products including beers, mineral and aerated waters, and other non-alcoholic drinks, fruit drinks as also in the business of manufacture, distribution and sale of merchandise including apparels, playing cards, glasses, note pads, various other forms of accessories. The Plaintiff claimed that it has been using its mark, SIMBA since 2015. It also claimed that the Defendant failed to respond to its notice apprising the Defendant of the Plaintiff’s rights in the trademark SIMBA.

The Defendants had earlier attempted to register the mark ‘SIMBA’. However, the application was subsequently withdrawn and an application was filed seeking registration of the mark ‘SIMMBA’.

The order mentions that the Plaintiff’s mark ‘Simba’ is a registered mark. The Plaintiff’s mark seems to be registered in class 16.  However, in relation to the other classes relevant for the Plaintiff’s business such as class 30, 32, 33, the Plaintiff’s mark ‘Simba’ has been refused registration/ is in an objection stage. Further, in class 9 and 41 which deal with films and entertainment services, the Plaintiff does not seem to have obtained any registration. The mark Simba also seems to be registered in name of several other entities in different classes. For instance, in class 32 which deals with non-alcoholic beverages, Simba is registered in the name of Coca Cola Company. The word ‘Simba’ also means ‘Lion’ (Simba the Lion in Lion King). There is also no commonality in the target customers as well. It would have to be seen if a trademark infringement claim against the Defendant is upheld in this scenario where the Plaintiff has not received registration in the main classes in which it carries out business/ claims goodwill and reputation. If the matter does not get settled between the Parties, the Court may consider applying the trinity test of passing off action (goodwill, misrepresentation, damages).

Update: The matter has been settled between the parties and disposed of by the Delhi HC. Read order here.

In addition to Trademark License Agreement between the parties on December 10, 2018, the parties further filed their executed consent terms dated December 19, 2018. Additionally, the parties also agreed to incorporation of a disclaimer in the title slides film, Simmba to the effect that the ‘Simba’ trademark is owned by the Simba Brewery (Sona Beverages Pvt. Ltd. which has licensed Rohit Shetty Picturez LLP to use the trademark for the movie. Pursuant to this arrangement between the parties, vide Order dated December 19, 2018, Justice Prathiba M. Singh has disposed of the suit.

Other instances where trademark infringement/ passing off claims have been made in relation to films:

  1. Runningshaadi.com– In a suit filed by People Interactive Pvt. Ltd, owners of the matrimonial website ‘Shaadi.com’, the Bombay High Court directed the producers of the film ‘Runningshaadi.com’ to drop ‘shaadi.com’ from its title. (Read order here)
  2. Rubiks Brand Ltd & Anr v/s Mahesh Vaman Manjrekar & Ors (Rubiks Cube)- Rubiks Brand Limited had filed a suit in the Bombay High Court against Mr. Mahesh Manjrekar for using the term ‘Rubik’s Cube’ for his film. The court held that an irreparable harm would be caused to Rubiks Brand Ltd if the injunction was not granted and thereby restrained Mr. Manjrekar from working on any film or other material bearing the title ‘Rubik’s Cube’ or the term ‘Rubik’ therein. (Read order here)
  3. Nokia Corporation and Ors vs Movieexpress and Ors- The Plaintiff had sought a decree of permanent injunction restraining the defendants, their directors, partners, proprietors, distributors, agents etc. from advertising, airing songs, publishing, publicizing, offering for viewing, the movie under the title Mr. NOKIA and/or Mr. NO.KEYIA and/or Mr. NA-VKIA and/or offering the songs containing the reference to the mark NOKIA and/or NO.KEYIA and/or any other identical or deceptively similar to the Plaintiffs registered trade mark ‘NOKIA’ amounting to infringement or amounting to passing off of their services as for the services of the plaintiff or amounting to dilution thereof. The Delhi High Court in its judgement pronounced on November 3, 2017 decreed in favour of the plaintiff. The interim order and final judgement can be read here and here.
  4. Bajaj Auto Limited and Anr V/s JA Entertainment Private Limited and Anr (Hamara Bajaj)- Bajaj Auto had filed a suit against J.A. Entertainment Pvt. Ltd over the alleged infringement of their trademark “Hamara Bajaj” following the announcement of the film’s title. The Bombay High Court ruled in favour of Bajaj and granted injunction against J.A. Entertainment. (Read order here)
  5. Sholay Media and Entertainment Pvt. Ltd and Anr v/s Parag Sanghavi And Ors (Ram Gopal Verma Ki Sholay)- The Plaintiffs had filed a suit before the Delhi High Court against director Ram Gopal Verma and others in respect of the film ‘Ram Gopal Verma ki Sholay’, alleging infringement of trademark, copyright, passing off, damage, rendition of accounts, etc. The Plaintiff alleged breach of its proprietary rights in its registered trademark, Sholay, Gabbar and Gabbar Singh. The Court held in favour of the plaintiffs and further granted a sum of Rs. 10 Lacs as punitive damages against the defendants. (Read order here)
  6. PepsiCo vs. MSM Motion Pictures & Ors (Youngistaan)- Pepsico filed a suit in the Delhi High Court against the producers of ‘Youngistaan’ seeking a permanent injunction against the release of the movie and preventing the defendants from blatantly imitating PepsiCo’s registered trademark “Youngistaan” as a part of their movie title. The Parties however eventually agreed to settle the matter with the Defendants agreeing to provide a disclaimer to the effect that the movie was not related/ associated with/ sponsored or promoted by Pepsi’s Youngistaan campaign. (Read order here)
  7. Hamdard National Foundation and Anr v/s Hussain Dalal and Ors (Yeh Jawaani Hai Deewani)-The Plaintiffs, proprietor of the trade mark “Roohafza” had filed this suit before the Delhi High Court for infringement of trademark, passing off, commercial disparagement and tarnishing of goodwill and damages against the Defendants for releasing their film “Yeh Jawaani Hai Deewani” containing some dialogues showing their product “Roohafza” in a manner detrimental to the interests of the Plaintiffs as a proprietor. The Court directed the Defendants to restrain from releasing the home video version of the film “Yeh Jawaani Hai Deewani” or any other version of the film on cable television or television which contained the objectionable dialogue. (Read order here)
  8. Zandu Balm had issued a notice with respect to use of its brand name in the song ‘Munni Badnam Hui’ in the film Dabangg. The matter was eventually settled. [ Source: here]
  9. UK based Murphy Radiosued UTV over its production, Barfi, for depicting their mark ‘Murphy’ in poor light. [Source: here]
  10. Bata India Ltd had filed a suit against AM Turaz, Prakash Jha & Ors with respect to use of their trademark “Bata” in the song “Mehangai” of the film Chakravyuh [Read orders hereherehere and here].
  11. Britannia Industries Ltd had issued a legal notice to Vikram Bhatt for showing their product in poor light in a trailer of their film, ‘Ankur Arora Murder Case’. The biscuit manufacturer claimed 1 crore rupees as damages and an unconditional apology for loss of reputation and unauthorized visual representation of their mark. [Source: here]

 

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