[Intellectual Property] Bom HC | “Party moving for injunction at eleventh hour must be prepared to face consequences”:Court while refusing to restrain Zee from using “Plex” in new channel

Bombay High Court: G.S. Patel, J., refused to pass an interim injunction restraining Zee Entertainment from using the word “Plex” in its new pay-per-view channel.

Plaintiff sought restraint against the defendant’s use of the word ‘PLEX’ in an online movie channel service which was to be launched on 2-10-2020. Defendant (Zee) has a number of media channels and services including internet, OTT, DTH, Satellite, cable, etc.

On 1-10 2020, it announced its proposed launch about a month later of a ‘cinema-to-home’ pay-per-view service.

Plaintiff was represented by Tulzapurkar and claimed that it adopted this mark in May, 2008 in the United States. Further, Plex obtained international trademark registrations in several jurisdictions, but not India. It however claims that it had its first registered user in India on 23-07-2008.

Tulzapurkar, Advocate claimed that PLEX had built up a user or subscriber base of 5,50,00 users.

Bench stated it is concerned with domestic sales and these are used to provide prima facie evidence of reputation and goodwill.

Mr Tulzapurkar’s complaint is that despite the two words being used disjunctively in the actual branding Zee seems to have combined the two words into a single unit ‘ZEEPLEX’.

Court stated that the plaintiff had an objection to the use of ‘Plex’ by Zee for any service and in any manner, whether it is combined with Zee as one word or is used in conjunction with Zee as two words.

The question, therefore, is not about the use of Plex as the second of two words.

Question is whether the Plaintiff has been able to show any prima facie case in passing off.

“Passing off” is an action for damages in the tort of deceit, that is to say, deception by Zee in duping or misleading consumers as to the provenance and leading them to believe that Zee has somehow tied up with PLEX.

Plex must establish its reputation and must demonstrate that it has such brand recognition and awareness amongst even Zee’s consumers or digital consumers that such an association at least in India would readily be made.

Bench stated that it does not see sufficient material from Plex to be able to establish its reputation at least within India, whatever may be its reputation, registrations and sales in other jurisdictions.

There is musch greater reputation and standing of Zee amongst subscribers across the length and breadth of the country with a large number of channels in various languages.

Mr Dwarkadas pointed out that the word Plex was being used by Zee to specifically connote the niche or specialized service now being offered, i.e. a variety of regional and other licensed films being streamed on a pay-per-view basis to the subscribers.

To show deception and especially to show deception to obtain a quia timet injunction the Plaintiff must be able to show considerably more.

High Court stated that merely pointing to other established and reputed players in the field is not enough, and it is hardly a credible argument to say that “if Sony provides content and has a reputation, since I, too, provide content, I must be presumed to have an equivalent reputation. So if Sony could maintain such action and get an order, so must I.”

Every claimant in a passing-off action stands or falls on his own merits and case.

“…parties in IPR matters cannot expect Courts to push aside all other cases.”

Court added that it repeatedly happens, 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.

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.

In the present matter, bench found no prima facie case.

The grant of the injunction Plex sought would cause immense and immediate financial loss and harm to Zee — it says it has already spent more than Rs 11 crores (rather more than Plex’s combined India sales for the last five years) on this new channel.

Hence, the Court found no reason to grant an ad-interim injunction. [Plex, Inc v. Zee Entertainment Enterprises Ltd., 2020 SCC OnLine Bom 989, decided on 01-10-2020]

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