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IPR cases moved last-minute unfair to other litigants, must stop: Bombay HC while rejecting interim plea to injunct Zee from using
The Bombay High Court recently observed that it is unfair to other litigants when IPR cases are moved last minute, constraining the Court to push aside other matters to hear such a case at the eleventh hour.
“…parties in IPR matters cannot expect Courts to push aside all other cases. This happens repeatedly, whether it is movie releases or otherwise. It must stop. It is unfair to courts and it is unfair to other litigants waiting their turn.”
Bombay High Court
Justice GS Patel made the observation while rejecting an urgent interim application moved by Plex Inc. on Thursday to injunct Zee Entertainment Enterprises Ltd. (Zee) from using the word ‘PLEX’ in an online movie channel service which was to be launched on Friday.
Justice GS Patel heard the matter as the assigned Bench of Justice KR Shriram was unavailable.
Plex had moved the application to seek an injunction alleging passing off and damages for misleading the consumers to believe that Zee had tied up with Plex.
Justice Patel declined to grant those reliefs, noting that Plex had not registered its trademark with the Indian registry even when Zee had announced the launch of its new service, which was a month prior to moving Plex's application.
Justice Patel noted that the consumers are not likely to be misled as the manner of providing services for Plex and ZEEPLEX was very different.
He also observed that Plex failed to establish its reputation, registrations and sales at least within India.
He added that “In contrast, there is the much greater reputation and standing of Zee amongst subscribers across the length and the breadth of the country with a large number of channels in various languages.”
Further it was noted that Plex was unable to prove what injury will be caused to them as their user base in India and that its domestic sales were not able to show how Zee is acting in deceit to pass off its new channel as an association from Plex.
In terms of the question of delay in approaching the court, Patel observed that,
"Where a plaintiff has had enough notice and yet chooses to move at the eleventh hour — and makes no allowance at all for any adjustment that may be required — the plaintiff must be prepared to face the consequences."
Justice GS Patel
Justice Patel added,
"If something has happened in the last few days, then moving with pressing urgency is perfectly understandable; but not where a plaintiff indulges itself in taking time to bring suit and then seeks to impose on the court’s time to the unaccounted and unaccountable cost of others. I am letting it go this once, but will not be so minded in future."
Patel however specifically clarified that he was not rejecting ad-interim relief on the ground of delay. Rather, in addition to the above reasons, he observed that “the grant of the injunction Plex seeks would, on the other hand, cause immense and immediate financial loss and harm to Zee.”
Patel also clarified that the use of the Plex is subject to further orders in the interim application. The order was only for the limited purpose of deciding on the plea for ad-interim injunction.
Plex moved the interim application a month after Zee announced that they are launching a ‘cinema-to-home’ pay per view service.
Senior Advocate Virag Tulzapurkar, for Plex, pointed out to the Court that with the service of Plex, a subscriber could essentially share media content over a server which the subscriber could later ‘take wherever he went.’
Plex had obtained international trademark registration for the word 'Plex', but not in India.
Tulzapurkar proceeded to refer to a tweet to show how the two words were launched as disjunctive words, "ZEE PLEX." Later, Zee combined them into one word as "ZEEPLEX".
Senior Advocate Janak Dwarkadas pointed out to the Court that Zee used the word ‘Zee’ as a prefix which they invariably used for all their other offerings and marks.
He argued that 'plex' was used to specifically connote the niche or specialized service which Zee was offering to the subscribers on a pay-per-view basis.
Patel observed that in his understanding the matter is that Plex had a problem with Zee using Plex in any service and in any manner.
He pointed out that to get relief, Plex has to point out the domestic sales to give evidence of reputation and goodwill.
Tulzapurkar argued that Zee cannot use Plex just like it cannot use names like Sony, Disney or Hotstar.
Patel retorted that Plex will have to prove it has the same brand equity, recognition and reputation. He emphasised that, merely pointing to other established and reputed players in the field is not enough, adding that there is no one-size-fits-all-approach in these matters.
In line with an undertaking made by Zee to this effect, the Court has recorded that “Zee will not claim any equities arising from its use of the word or mark PLEX between now and the final hearing of the Interim Application.”
Leave was granted to Plex to amend the suit to which Zee sought time to reply. The Court granted leave to parties to file their appropriate proceedings and approach the assigned Bench.
Senior Advocate Virag Tulzapurkar with Advocates Ramesh Gajria, Gairav Mukherjee and Amol Dixit from Gajria & Co. appeared on behalf of Plex.
Senior Advocates Janak Dwarkadas and Sharan Jagtiani with Advocates Rashmin Khandekar, Vishal Narichania, Anushree Raut, Parul Sharma and Pranita Sahoo appeared for Zee.
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