delhihighcourt

HIMALAYA WELLNESS COMPANY & ORS. vs PRK PRODUCTIONS LLP

$~45
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 15th December, 2023
+ CS(COMM) 844/2023 & I.A. 23488/2023
HIMALAYA WELLNESS COMPANY & ORS. ….. Plaintiffs
Through: Mr. Pravin Anand, Ms. Prachi Agarwal, Mr. Ridhie Bajaj & Ms. Kanupriya Chawla, Advs. (M: 9958045858)
versus

PRK PRODUCTIONS LLP ….. Defendant
Through: Ms. Samapika Biswal, Ms. Nidhisha Garg & Mr. Aman Kumar Yadav, Advs. (M:8104694675)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
2. The present suit has been filed by the Plaintiffs-Himalaya Wellness Company and two group companies who are aggrieved by the depiction of the mark ‘VIMALAYA’ along with various other products of the Plaintiffs in the Kannada feature film titled ‘Aachar & Co’ (hereinafter, the film).
3. The Plaintiffs are stated to have been involved in the manufacture and distribution of ayurvedic medicaments since 1930. The Plaintiffs operate under the umbrella brand Himalaya, since 1930. Over the years, the Plaintiffs offer a diverse range of health and wellness products, cosmetics etc., under the name ‘Himalaya’.
4. Some of the products of the Plaintiffs sold under the Himalaya brand include ‘Liv.52’, ‘GERIFORTE’, ‘EVECARE’ etc. The product ‘Liv.52’, is stated to be the flagship brand of the Plaintiffs and a top selling herbal medicine synonymous with the Plaintiffs’ Himalaya brand.
5. It is averred that the Plaintiffs sell a range of products, including ‘Liv.52’, ‘GERIFORTE’ and ‘EVECARE’ and its formative marks along with the mark Himalaya and other several label marks. It pertinent to note that the marks ‘Liv.52’, ‘GERIFORTE’ and ‘EVECARE’ (including its associate and formative marks) of the Plaintiffs is exclusively associated with the ‘HIMALAYA’ brand.
6. It is also averred that the artwork underlying various stylistic representations of the Plaintiffs’ mark ‘HIMALAYA’, ‘Liv .52’, ‘GERIFORTE’, ‘EVECARE’ trade marks as well as the associated trade dress, constitute original artistic works within the meaning of Section 2(c) of the Copyright Act, 1957. The Plaintiffs claim to be the first owner of the copyright in each of the said artwork/label/logo by virtue of Section 17 of the Copyright Act, 1957.
7. The Plaintiffs are the owners of several trade mark and copyright registrations in the name HIMALAYA as well as the marks and product names.
8. The Plaintiffs’ grievance is that in the film, the protagonist posing as a sales representative, is going door-to-door, attempting to sell products to the customers. In the film, the protagonist uses dialogues/script/contents using similar/identical names to the Plaintiffs’ registered ‘HIMALAYA’, ‘Liv.52’, ‘GERIFORTE’, ‘EVECARE’. The name ‘VIMALAYA’ is employed in lieu of ‘HIMALAYA’, and the Plaintiffs’ brands depicted in the film are also not accurately represented in terms of the product packaging. Some of the photographs displaying the manner of use by the Defendant are as follows:

9. Ld. Counsel for the Plaintiffs submits that there is a complete distortion of the Plaintiffs’ name ‘HIMALAYA’ to ‘VIMALAYA’ in the film, and the Plaintiffs’ products are incorrectly depicted.  The film misleadingly represents that the products displayed under the mark ‘Liv.52’, ‘GERIFORTE’ & ‘EVECARE’ are emanating from ‘VIMALAYA’ and whereas, in fact, all the said brands are registered trade marks of the Plaintiffs. 
10. Heard. The film – ‘Aachar & Co.’ was released in July, 2023 and upon realizing the incorrect usage of the Plaintiffs’ house mark ‘HIMALAYA’, trade marks and brands, the Plaintiffs issued a notice to the Defendant, who is the producer of the film.  A legal notice dated 29th August, 2023 was issued calling upon the Defendant to remove the references and scenes featuring the products of the Plaintiffs from all media platforms.  As the film is available on Amazon Prime, the notice was also sent to Amazon Sellers Services Pvt. Ltd. (hereinafter ASSPL) and to PRK Productions LLP- the producers of the film. 
11. Subsequently, a reply was received from ASSPL, dated 5th September, 2023, stating that, in the present case, Amazon is simply a licensee of the film from the producer. Accordingly, the details of the producer were furnished.  ASSPL asserted that any grievances and remedies should be directed toward the licensor, as ASSPL is only exercising its rights based on the agreement with PRK Productions LLP. It was also mentioned that ASSPL promptly informed the Defendant about the Plaintiff’s claims.
12. On behalf of the producer, vide reply dated 21st September, 2023, it was alleged that neither ‘Liv.52’, nor ‘GERIFORTE’& nor ‘EVECARE’ are registered trade marks of the Plaintiffs.  The Defendant merely relied upon a disclaimer, which appears in the film to justify its conduct.
13. It is submitted by ld. Counsel for the Plaintiff that such denial is completely contrary to the record, as the Plaintiff has registered trade marks for all the said brands.  The same is set out below:

S. No.
Trade Mark
Reg. No.
User Date
Date of Appl.
Class
1.
THE HIMALAYA DRUG COMPANY
1940877
01/01/1975
24/ 03/2010
1
2.
HIMALAYA DRUGS
973355
01/01/1930
27/ 11/2000
5
3.
HIMALAYA
1004753
1930
20/04 /2001
5
4.
THE HIMALAYA DRUG
1940878
1975
24/03/2010
3
5.
LIV.52
180564
Proposed to be Used
10/ 07/1957
5
6.
GERIFORTE
302174
Proposed to be Used
17/01/1975
5
7.
EVECARE
780581
Proposed to be Used
02/ 12/ 1997
5

14. Vide order dated 24th November, 2023, this Court issued summons to the Defendant in the suit. The relevant extract of the said order is as follows:
“…
24. A perusal of the screenshots of the film placed on record, leaves no manner of doubt that the entire allusion in the film is to the Plaintiffs and its products. There is very little difference between the word ‘HIMALAYA’ and ‘VIMALAYA’, and thus the similarity between the two is noteworthy.  Moreover, the trade mark registrations of the Plaintiffs for all these products have also been placed on record.
25. Under such circumstances, the denial by the Defendant is not justified. However, considering the mandatory nature of relief which is being sought, i.e., to remove references to the Plaintiff’s name and brands or at least to blur the same, and the fact that the film itself has been released in July, 2023, it is deemed appropriate to issue summons and notice to the Defendant in order to enable the Defendant to appear and place its stand before the Court. ”

15. Today, the Defendant has entered appearance.  Ms. Biswal, ld. Counsel submits that the Defendant is willing to carry out changes in the feature film so that the Plaintiffs’ grievances are adequately addressed.  Without prejudice to its rights, the Defendant proposes as under:

S. No.
Timestamp (Amazon Video)
Description
Proposal
1.
42.33 – 43.30
(57 seconds)
A survey agent is seen wearing a cap and carrying a bag with the name ‘Vimalaya’ printed thereon.
Computer Graphics will be deployed to make sure the Vimalaya logo is not visible.
2.
43.40-.43.50
(10 seconds)
A writing pad with the name ‘Vimalaya’ printed is shown.
Computer Graphics will be deployed to make sure the Vimalaya logo is not visible.
3.
44.07: 44.20
(13 seconds)
The protagonist is seen wearing the cap and holding the writing pad with the name ‘Vimalaya’ printed.
Computer Graphics will be deployed to make sure the Vimalaya logo is not visible.
4.
47.08-48.12
(64 seconds)
The protagonist is seen wearing the cap and holding the writing pad with the name ‘Vimalaya’ printed.
Computer Graphics will be deployed to make sure the Vimalaya logo is not visible.
5.
48.14-48.28
(14 seconds)
The protagonist displays the product range bearing the labels ‘Geriforte’, ‘Liv 52’ and ‘Evecare’.
Scene will be deleted.
6.
48.50- 49.30
(40 seconds)
The protagonist is seen with the writing pad with the name ‘Vimalaya’ printed.
Computer Graphics will be deployed to make sure the Vimalaya logo is not visible.

16. As is evident from the above table, there are six instances in the said film where the name ‘VIMALAYA’, along with the Plaintiffs’ products have been used.  The Defendant’s position is as follows:
* Regarding serial nos.1 to 4 and 6, the Defendant has undertaken to deploy computer graphics to ensure that the ‘VIMALAYA’ logo is not visible. 
* For serial no.5 is concerned, since three other products of the Plaintiffs are being displayed in the said scene, the Defendant has agreed to delete it.
17. The above proposal made by the Defendant is acceptable to the Plaintiffs. 
18. Accordingly, let the Defendant implement the proposed changes within 15 days, and provide a pen-drive containing the edited version of the film to the ld. Counsel for the Plaintiffs for confirmation. The ld. Counsel for the Plaintiff submits that if the proposal recorded above is given effect to, no further reliefs are pressed against the Defendant in the present suit.
19. Ms. Biswal, ld. Counsel, submits that after 15 days, the edited film shall be submitted to the Censor Board of Film Certification (‘CBFC’) for its approval in accordance with the Cinematograph Act, 1952 and the Cinematograph (Censorship) Rules, 1958. Furthermore, immediately upon receiving approval, the version of the film currently broadcasted on Amazon Prime shall also be replaced with the new version featuring the agreed deletions and the blurring of images.
20. The CBFC shall consider the approval of the proposed alterations of the Defendant’s film- ‘Aachar & Co.’ bearing certification no. Central Board of Film Certification: DIL/1/12/2023-BAN.’ under Cinematograph Act, 1952 and the Cinematograph (Censorship) Rules, 1958 on an urgent basis. The proposed changes are being carried considering the fact that the Defendant has agreed to give effect to this Court’s order and implement the proposed changes. In any case, it is directed that the alterations proposed by the Defendant in the said film ‘Aachar & Co.’ shall be approved by 15th March, 2024 and thereafter only the duly CBFC certified modified version shall be carried on the OTT platform or any other platforms post 15th March 2024.
21. If either of the parties has any outstanding grievances, they are free to move an application before the Court.  In view of the fact that the suit is being resolved on the second date of hearing, full court fee is refunded to the Plaintiffs in terms of the provisions of the Court Fees Act, 1870.
22. Let the decree sheet be drawn up. The suit is decreed in the above terms.  All pending applications are disposed of.

PRATHIBA M. SINGH
JUDGE
DECEMBER 15, 2023
dj/dn

CS(COMM) 844/2023 Page 2 of 2