Citation: I.A. No.9089/2010 in CS (OS) 1407/2010
Court: Delhi High Court
Bench: Justice S. Ravindra Bhat
Facts:
Tata Sons Ltd (“Tata”) had been consistently using the trademark TATA since 1868. It claimed that the TATA mark had also acquired the status of a ‘well-known mark’. It was also the registered proprietor of several TATA formative trademarks. The Dhamra Port Company Limited (DPCL), a 50-50 joint venture project between Tata Steel Ltd (of which the Plaintiff was a promoter) and Larsen & Turbo was awarded a concession by the Government of Orissa to build and operate a port north of the mouth of river Dhamra in Bhadrak district. The NGO named Greenpeace International and Greenpeace India Society (“collectively “Greenpeace”) began raising concerns about the construction of the project endangering the surrounding mangrove forests and the wildlife, particularly the nesting and breeding of Olive Ridley Turtles.
As part of its campaigning activities aimed at creating awareness around environmental issues, Greenpeace launched a Pac-Man-inspired video game “Turtles versus Tata” to raise its voice against the construction project. The game made use of the TATA logos disguised as the antagonist which had to be destroyed by the turtles. The goal in the game was to help the yellow turtles eat as many little white dots as possible without running into Ratty, Matty, Natty, or Tinku”.
Tata) initiated a suit against Greenpeace objecting to the game and claiming trademark infringement of the TATA mark.
Issue: Whether Greenpeace's use of Tata’s trademark and logo was a parody or an infringement?
Laws Involved: Section 29 (4) of the Trade Marks Act, 1999
Analysis:
Tata argued that Greenpeace’s’ unauthorized use of the TATA trademark and the “T” device, although not in the course of trade, is trademark infringement of dilution or tarnishment as per the tests evolved by the United States Courts. Relying on Section 29 (4) of the Trade Marks Act, 1999, it contended that “use” of a trademark is not confined merely to the defendant engaging itself in a trade or commercial activity, but other forms of speech or representation, which would tarnish the Plaintiff’s mark. This was supported by the decisions in the cases of The Coca-Cola Company v. Gemini Rising Inc., 346 F.Supp 1183 (1972) and Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC; 507 F.3d 252 (4th Cir 2007).
Greenpeace refuted the above argument by saying that the trademark’s usage was not a case of infringement as it was not done in commercial usage, meant to profit or gain from the goodwill or reputation of such marks. It further alleged that as per Section 29 (4), the use of a registered trademark for purposes of criticism, fair comment and parody is justified under the grounds of freedom of speech and expression. The use of the marks in the game was done in a descriptive context to be in a position to criticize and protest against Tata, and not to take undue advantage of the TATA marks. It relied on the ruling in Esso Francaise SA v. Association Greenpeace France, 2003 ETMR 66, (the right to free speech could not be subjected to restrictions at the behest of third parties’ intellectual property rights). It also relied on the decision in the case of Laugh It Off Promotions CC v. Freedom of Expression Institute, 2006 (1) SA 144 (CC), where the South African Constitutional Court held that the parodic effect of trademark use cannot be de-contextualized by the Court while examining a claim for trademark infringement resulting in such use.
The Court held that a textual reading of the statute made it clear that a breach of Section 29 (4) would take place when another commercial/entrepreneurial body is exploiting that same trademark. In the present case, since Greenpeace was not involved in any profit-making endeavour or competitive business with Tata, the Court agreed that Greenpeace can make a reasonable comment, ridicule, and parody of the registered trademarks.
Further, it was emphasized that, if the user intends to focus on some activity of the trademark owners and is “denominative”, i.e, drawing the attention of the reader or viewer to the activity, then such use can prima facie constitute “due cause” under Section 29 (4). This will disentitle the Plaintiff to a temporary injunction. Therefore, the Court concluded that the use of the TATA mark, and the `T‟ device or logo, is clearly denominative, and the portrayal of the Tatas as demonic is hyperbolic and parodic.
Consequently, the Court dismissed Tata’s application for an interim injunction.
Conclusion:
This case brought up an interesting debate between freedom of speech and safeguarding intellectual property rights. It also highlighted the issue of the legal viability of a parody in the Indian context. The Delhi High Court’s decision in the case not only gave importance to the freedom of speech and expression but also reaffirmed that a Court “cannot sit in value judgment over the medium (of expression) chosen by the defendant since, in a democracy, speech can include forms such as caricature, lampoon, mime parody and other manifestations of wit.”
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