This article is written by Karan Singh Arora, a recent Law graduate from Symbiosis Law School, NOIDA.
There has always been constrained relations between the Intellectual property rights proprietors and the parody makers. There is a separate audience who enjoys parodies and thus there is a market for the same. There is no doubt that it takes effort, creativity and the wit to create a parody and it not merely a copy-paste of the original work. A parody can’t be created without using source material and most of the source material is protected by the IPR Law in India. Therefore there is a constant tussle on the part of parody creators to use the source material at optimum levels so that it does not attract IPR infringement. Now, this more easy and straight forward to understand in terms of copyrights but the same could also be understood in the case of Trademarks. It is pertinent to mention here that ‘parody’ is the defence of Trademark infringement which comes from Section 29(4) of The Indian trademark Act, 1999.
It is not very common that Indian Courts have discussed the Trademarks and their use in parodies but one case that has allowed the Indian Courts to delve into such issue is Tata Sons Ltd. v Greenpeace International. In this article, we will be discussing the same case and explore the peculiar relationship between Protected trademarks and their use in India.
Relevant Facts of the case
- Dharma Port Company Ltd. (DPCL), a 50-50 joint venture between Tata Steel Ltd. and Larsen & Toubro Ltd. bagged the project of build, maintain and operate a Port in Orissa on the mouth of Dharma River.
- DPCL had obtained all the necessary permissions and clearances to go ahead with the project including the permissions from environment regulatory and appellate authorities.
- Greenpeace International initiative protested against the construction of the Dam claiming long term harmful impact on the environment and the Sea Turtle ecosystem.
- Greenpeace International, as a part of the protest, launched a packman styled game on their website titled “TURTLE v. TATA” which allegedly used the “TATA” logo mark with the stylized version of its “T within a circle” device, and also made references to “Tata demons”.
- TATA Sons Limited initiated a trademark infringement suit against the Greenpeace international and Greenpeace India Initiative for using their Trademark without prior permission from the plaintiff.
- That the plaintiff is the rightful proprietor of the mark, TATA and has not licenced or permitted Greenpeace initiate to use it.
- That the use of plaintiff’s trademark, “TATA” and the mark: “T” within a circle device, by the defendant is unauthorised use and infringement of Intellectual property rights of the plaintiff.
- That the use of plaintiff’s Trademark though not in course of trade as per Section 29 but still amounts to dilution of the mark.
- That the project has received all the clearances and permissions from the environment regulatory and the appellate authorities.
- That the use of plaintiff’s TM in such manner amounts to defamation and is backed my malice.
Arguments of the Defendant
- The Greenpeace India claimed that intention behind creating the game was to raise awareness and draw attention to the impending issue via a peaceful means and not to infringe the trademark of the plaintiff.
- Further, It argued that the use of plaintiff’s TM is not an infringement as per the act, as it was not commercial usage meant for profit or gain.
- That the Trademark regime in India allows the use of registered trademark for the purpose of fair comment, criticism and parody.
- Greenpeace India argued that the lawsuit initiated is a strategic lawsuit to shut the plaintiff up and with the intention to censor and silence the plaintiff.
- The defendant further argued that.
- That the truth behind the defamation claim can only be decided after the trial therefore awarding interim injunction before the trail would be against the fundamental right of free speech.
Interim injunction not granted.
- The use of plaintiff’s trademark by the defendant is not in the course of trade as the use by the defendant is not in line of business of plaintiff.
- The use by the plaintiff is a denominative use with the intention of drawing viewer’s attention towards the cause, thus the use prima facie constitutes “due cause” under Section 29(4) of the Trademark Act and disentitle the plaintiff to an interim injunction.
- Bonnard Rule: Justice Bhat cited the 1891 precedent of Delhi HC, Bonnard v. Perryman, 1891 and explained how TATA’s allegation of defamation can only be tested in the trial and therefore granting an interim injunction would be premature, contrary to the established principles and against the fundamental freedom of free speech and expression.
- To create the defence of parody successfully, the parody must be clever enough, the parody must remind the original work and shall not create the confusion among the mind of the viewers as to what is original and what is parody. If the parody doesn’t adequately distinguishes it from the original work then its an infringement which is not the case in the given circumstances.
Cases Cited/mentioned in the judgement
- Bonnard v. Perryman,  2 Ch 269
- Fraser v. Evans,  1 QB 349
- Crest Homes Ltd. v. Ascott,  FSR 396
- Herbage v. Pressdram Ltd.,  1 WLR 1160
- American Cyanamid Co. v. Ethicon Ltd.,  AC 396
- Holley v. Smyth,  QB 726
- Martha Greene v. Associated Newspapers Ltd.,  EWCA Civ 1462
- Woodward v. Hutchins, 1977 (1) WLR 760
- Texas Beef Group v. Winfrey, 201 F.3d 680
- Express Bottlers Service Pvt. Ltd. v. Pepsi Inc., 1989-PTC-14
- Boehringer Ingelheim Ltd v. VetPlus Ltd.,  EWCA Civ 583
The tussle between the parodies and the intellectual property rights is not new to India but still in the realm of parody of trademark, Tata Sons Limited v Greenpeace International sets a precedent in favour of parody creator instead of IPR proprietor. This not only strengthens the fundamental right to free speech and expression but also clears the ambiguity over what is to be considered as a parody and what is to be considered as an outright infringement of the intellectual property rights. Few pointers that has to be kept in mind to determine same are:
i) The work of parody must prima facie remind the original work.
ii) It must be an entirely exclusive work of its own capable of distinguishing itself from the original work.
iii) if its creating a confusion in the minds of the viewer/consumer of parody as to what is original work and what is parody then it is an outright infringement of the IPR of the proprietor.
iv) The Parody must be presented in such a clever and witty form that it does not in minds of the consumer connects itself to the original work.
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