November 07, 2017
Delhi HC rules that Nokia is a Well-Known Trademark
Nokia Corporation & Ors vs Movieexpress & Ors.
Date of Judgment- November 03, 2017
In this recent case, the Delhi High Court ruled that NOKIA is a well-known trademark. The Court also restrained the defendants from using the Plaintiff’s mark NOKIA. In the case, the Court also condemned the practice of Defendants to deliberately stay away from the Court proceedings and evade the proceedings.
In the case, the Plaintiff i.e. Nokia Corporation approached the Court to secure order to restrain the Defendants from advertising, airing songs, publishing the impugned movie under the title Mr. NOKIA or deceptively similar mark and offering songs containing the reference to Plaintiff’s mark NOKIA or deceptively similar mark. The Plaintiff has in the case additionally prayed for declaring the Plaintiff’s mark NOKIA as a well-known mark in India.
See here for List of well-known trademarks in India.
Background of the case- The Plaintiff contended that its trademark NOKIA is a well-known mark and enjoys presence in virtually all countries. The Plaintiff further contended that the impugned mark was coined and adopted by the predecessors of the Plaintiffs way back in the year 1865 and since then it has been used by the Plaintiffs extensively worldwide.
The Plaintiff also submitted that it is registered proprietor of the trade mark NOKIA inter alia in class 41 which extends to entertainment services.
Plaintiff’s allegations– The Plaintiff alleged that the Defendant had approached the Plaintiff with the offer of In-Film branding and proposed title for the movie such as Mr. NOKIA, Connecting People. However, the Plaintiff expressed its denial to the Defendant’s offer. Later, the Plaintiff learnt about a press release for the movie by the name Mr. NOKIA by the Defendants. On learning this, the Plaintiffs also sent a Cease & Desist Notice to the production house, however the Defendants defied all notices and press releases were issued which stated that the impugned movie was being released under the name Mr. NOOKAYYA. In view of these circumstances, it has been was contended that inspite of giving number of opportunities to the Defendants to redress the Plaintiffs’ grievances and settle the matter amicably, the Defendant continued to use Plaintiff’s impugned trademark . Thus, the Plaintiffs’ approached the Court for grant of ex parte ad interim injunction. The Court granted injunction against the Defendants. However, the Defendants defied even the Court orders and press reports were published stating that the impugned movie was all set to release.
Thereafter, restrain order was also passed against the Defendants on account of contempt of court. However, the Defendants released the movie under the name Mr. NOOKAYYA in August, 2012.
Delhi High Court’s Order and Observation
- NOKIA is a well-known trademark– The Court in view of documentary evidences produced by the Plaintiff, like its registration in various jurisdictions, the expenses the plaintiffs have incurred on advertisements and promotion of the trademark and its products and various cases the plaintiffs have filed against the infringers in various jurisdictions concluded that the Plaintiff’s trademark is a well-known trademark.
- Infringement of NOKIA trademark by the Defendant– That the Defendant’s marks Mr. NOKIA or Mr. NOOKAYYA are deceptively and confusingly similar to the Plaintiffs well-known and registered mark NOKIA. The Court also opined that for comparing marks, the test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade. As the Plaintiff is the registered proprietor of the mark NOKIA in class 41 in relation to entertainment services, the use thereof by the defendant in relation to such services amounts to infringement under Section 29 (1) of the Trade Marks Act, 1999.
- Proof required for Infringement and Passing off Action compared– The Court in the case also substantiated on the difference between trademark infringement and passing off. The Court observed that in cases of Infringement u/s 29 (1) it is enough to show that impugned marks are deceptively similar to the registered marks of Plaintiff, even if, there are added matters to show a different trade origin. While expounding this legal principle, the Court also made reference to the case of In Kaviraj Pandit Durga Dutt vs. Navrattana Pharmaceuticals Laboratories, whereby the Supreme Court held that factors like colour, packaging and appearance which are of essence of the cause of action for relief on the ground of passing off play but a limited role in an action for infringement of a registered trade mark by the registered proprietor who has a statutory right to that mark. Thus, the use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement.
- Deliberate absence of the Defendant– The Court in the case made a scathing attack on the Defendants who deliberately stayed away from Court proceedings. It stated that a defendant who chooses to stay away from the proceedings of the Court should not be permitted to enjoy the benefits of evasion of Court proceedings.
In view of the aforesaid circumstances the Court held that the instant case was a fit case for awarding of damages due to the highly dishonest conduct of the defendants and awarded Plaintiffs damages to the tune of Rs.5.00 Lac against the defendants.
The case in detail can be accessed here.
Protection of Well-known Trademarks in India
Well-known trademarks in India enjoy extra-ordinary protection under the Trademark Act, 1999. The Act renders an exclusive definition of well-known trademark under Section 2(zg) of the Act and provides that a well-known trademark in relation to any goods or services, means 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 services 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.
One of the essential features of a trademark is that it is protected across all classes. In this context reference can be made to the case of Daimler Benz Aktiengesellschaft & Anr v. Hybo Hindustan. In the case, the Plaintiff, manufacturer of Mercedes Benz cars, alleged Defendant of using its mark BENZ for selling its undergarments. The Court restrained the Defendant from using the impugned mark and stated that there’s no valid reason as to why any trader in India should adopt the name “Benz”, which is associated with one of the finest engineered cars in the world, and use the same name with respect to ordinary goods, in this case undergarments, particularly underwears.
Similarly, in the instant case even if NOKIA had not secured trademark registration under class 41 it would still be entitled to protection with respect to entertainment services against infringement by virtue of being a well-known trademark.
 AIR 1965 SC 980