Showing trademark in film not equal to trademark use

In what is probably one of the first intellectual property matters heard by the principal district judge of North Goa, the court declined to grant an injunction in favour of Murphy Enterprises, which had sought to restrain UTV Software Communications and the directors/producers of the film Barfi! from using and displaying the Murphy Munna device, the Murphy Radio trademark, and the Murphy slogans “Delight the Home” and “We Set Standards” in the film.

Allegations and defence

Murphy had alleged that the Murphy trademarks are used all through the film, including in the “song” Ala Barfi and in three prominent scenes where close-up shots of the Murphy Munna device and the slogans are shown. Since such use was admittedly without permission, Murphy alleged that its trademark rights have been infringed.

In its defence, UTV submitted, firstly, that use of the Murphy trademarks in the film was not “use in the course of trade” as mandated under section 29 of the Trade Marks Act, 1999. UTV relied on the 2001 decision of Delhi High Court in Pepsi v Hindustan Coca-Cola to argue that the expression “in the course of trade” has a definite connotation – the defendants must be dealing or selling or in some other way trading in the goods or services bearing the offending mark.

Sneha Jain is an associate at Saikrishna & Associates. She can be contacted at sneha@saikrishnaassociates.com.