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Using a Trademark in a movie

By Salome Bodaji, Associate

A trademark refers to a brand or logo and if it is properly used and promoted it can become the most valuable asset of a business. Trademarks serve as an indication of origin of goods and indicate quality. Therefore, unauthorised use of a trademark has several consequences as a trademark is indicative of the goodwill of the Company.

Dilution of Trademark
Dilution by ‘tarnishing’ is a well-recognized concept in trademark lawwhereby the owner of the trademark has the right to prevent others from using the mark on the ground that the usage is likely to devalue the reputation of the mark.

Below are a few examples where the concept of dilution of trademark has been explained in detail.

Jolly LLB 2
One of the recent cases of dilution of trademark was seen in the legal tussle which involved the film ‘Jolly LLB 2’ wherein Bata India Ltd. had sent a legal notice to the makers of ‘Jolly LLB 2’. Bata India Ltd. filed the case in the Delhi High Court and protested the use of their brand name ‘Bata’ in the film. Derogatory remarks were made about the brand. The film portrayed Bata shoes as ‘cheap shoes’ that are worn by the lower strata of the society and that one feels humiliated by wearing Bata shoes. Bata India Ltd. contented that this was a deliberate attempt to tarnish Bata’s brand image. In the end the Defendants agreed to remove the references made to ‘Bata’ from the film and the matter was resolved.

Dabangg and Zandu Balm
The makers of Zandu Balm, Zandu Pharmaceuticals, had sent a legal notice to the makers of the film ‘Dabangg’ for using their trademark Zandu Balm in a song. The owners of the brand claimed copyright infringement and not trademark infringement and stated that this was an attempt to defame the reputation of the product manufactured by Zandu Pharmaceuticals. Even though the parties eventually settled out of court, this case proved to be an expensive affair for the filmmakers.

Chakravyuh Controversy
Prakash Jha’s film ‘Charavyuh’ faced a similar controversy. The filmmaker received a legal notice from the Birla group of company over the controversial lyrics of a song in the film. The lyrics of the song ‘Mehngai’ included the names of companies such as Birla Group, Ambani Group, Tata group and Bata India Ltd. The Birlas sent a legal notice to the film maker stating that such use was putting the name of the company in bad light. The only reason why the petition filed by the Birla Group was in favour of the filmmaker is because the Birla Group was no longer interested in pursuing the matter. However, the filmmaker was not lucky when a case was filed by Bata India Ltd on the same grounds.
The Bata Group had filed a defamation case in the Delhi High Court against the filmmaker stating that the song ‘Mehngai’ was offending and showed Bata Group in bad light. The Court passed an interim order against the filmmaker and thereby restrained him from releasing the disputed song ‘Mehngai’ in the movie. The Judges, after having looked at the lyrics, were of the view that it was in poor taste and the wordings indicating the names of certain business houses could have been avoided. They further mentioned that a disclaimer should be added stating that the use of the names in this song is a mere example and that no injury or disrespect is intended to any brand.

There has been little consistency with which Indian courts have decided Trademark dilution cases. What can be considered as fair use and what trademark dilution is, is yet to be made clear as there is limited guidance on the scope of ‘due cause’ under Section 29(4) of the Trademark Act, 1999 and these cases are being decided on a ‘case to case’ basis. Even though Article 19(1)(a) of the Indian Constitution guarantees a wider right of free speech and expression there has been no categorical pronouncement that recognises speech as a defense for trademark infringement in India.