Contributed by : Aruna Mukundd
The present case decided by the Calcutta High Court on 12th Novemberis based on violation of an unregistered mark “Na-Hanya′te” . “Na- Hanyate” is a novel wriiten by Maitraye Devi.The Petitioner alleged that the Respondents have adopted the said word mark and used the same in their film with a view to create an impression that the said film is based on the novel. The main issue involved in the case was “Is the defendant selling goods so marked as to be designated or calculated to lead purchasers to believe that they are the plaintiff’s goods”? The petitioner argued that the words “Na-Hanya′te.” is associated with Maitraye Devi and any feature film with the same title would give an unmistakable impression to the viewers that such feature film is based on the novel ‘Na-Hanya′te. Further the posters, hoardings and other advertising materials of the film, when compared with the novel creates an impression that the said film is based on the novel ‘Na-Hanya′te. It was also alleged that the respondents have knowingly chosen the said title with a view to make unjust enrichment and tried to exploit the goodwill acquired by the said novel since its first publication in 1974.
The court, while deciding the case held that, “An act of passing off is an act of deceit. In order to establish passing off the petitioner would be required to establish a prima facie case, balance of convenience and irreparable loss of injury in the absence of grant of injunction“. Pointing to the fact that there was nothing substantial to show that the said mark has acquired considerable goodwill in the market, the Court clarified that mere prior use of the mark since 1974 without any evidence of sale and goodwill would not be sufficient to get an injunction on the basis of a unregistered mark.
However, taking account of the fact that the mark “Na- Hayante” is not commonly used and the fact that the the manner in which the film has been projected and advertised is similar to that of the novel, the court opined that it certainly gives an impression to the discerning mind at least that the film could be based on the said novel.
The Court granted an injunction restraining the respondents from using the word mark “Na-Hanya′te”in the same or similar manner as it is appearing in the cover of the book.
The Court also directed the Respondents to publish a disclaimer prominently displaying that the film is not based on the novel “Na-Hanya′te” written by Maitraye Devi, in all advertisements, publicity materials, compact discs, DVDs and other publicity materials associated with the said film.