India: Court grants damages of INR 5 Lakhs for infringement of the mark ‘Nokia’

Source : www.delhihighcourt.nic.in

Recently, the Delhi High Court, in the case of Nokia Corporation & Others vs Movie Express & Others, awarded Nokia Corporation (hereinafter referred to as the Plaintiffs’) damages to the tune of INR 5 Lakhs, payable jointly by MovieExpress and Others (hereinafter referred to as the Defendants), for trying to obtain wrongful advantage of the Plaintiff’s trademark.

Brief Background

• Plaintiff no. 1 is a Finnish multinational communications, information technology and consumer electronics company, founded in 1865 and headquartered in Espoo, Uusimaa, and Plaintiff no.2 Nokia India Private Limited is a Company incorporated under the Companies Act, 1956. and is headquartered in New Delhi. The Plaintiff is the registered proprietor of the trademark NOKIA in various classes inter alia in Class 41 under no. 1237567 which extends to entertainment services.
• The Defendant No. 1, Moviexpress is an advertising agency involved in promotion, sponsorship for new movies and mass media communication such as short films, ad-films and audio-visual aids. The Defendant No. 2, Shailendra Cinemas is a production house and is involved in producing movies and the Defendant No. 3, Mr. D. S. Rao, is a film producer.
• In 2011, an in-film branding opportunity in the upcoming movie of Shailendra Cinemas was proposed by the Defendants. The movie was titled ‘Mr. Nokia, Connecting people’, which was communicated through email to the Plaintiffs.
• The proposal was rejected. In June 2011, they were informed of a press release of ‘Mr. Nokia’ movie under the banner of the Defendants.
• The movie was referred as ‘Mr. Nokia’ everywhere and was slated to be released in February, 2012. Even the songs were launched.
• A cease and desist notice was sent to the Defendant. Defendant no.3 acknowledged the superior trade mark rights of the Plaintiffs' in the mark NOKIA, and offered to change the title of the movie to Mr. Nav-kia via email.
• A communication was also sent to the South India Film Chamber of Commerce requiring a confirmation regarding the press release, and no title was registered.
• The movie was planned for an early release and was still titled ‘Mr. Nokia’. A legal notice was sent to the Defendants, but nothing happened.
• Thus, a suit was filed against the Defendants on February 3, 2012, and an ex parte ad interim injunction was granted by the Court on February 6, 2012.
•  Right after this the Plaintiffs caught hold of some press releases issued by the Defendant No. 3 stating that the movie is being released on March 7, 2012 under the name Mr. NOOKAYYA.
• However, the order was deliberately and openly violated by the Defendants. Thus, the Plaintiffs filed an application under Order 39 Rule 2 and under 2A, of the Code of Civil Procedure, 1908, read with Section 12 of the Contempt of Courts Act, 1971.
• The Court passed a restraining order on March 7, 2012. Despite this, the movie was released under the name Mr. NOOKAYYA on March 8, 2012. Further, even in 2013 and 2014 CDs of the movie were available on various e-commerce portals.

Plaintiffs Arguments-

• It was contended that Nokia is a term coined by Plaintiff’s and was a well-known mark. As it was adopted in 1865 and since then it has been used by the Plaintiffs extensively worldwide.
• It was contended that the marks used by the Defendants were similar to the Plaintiff’s mark. Further, it was argued that since the Plaintiff is the registered proprietor of the mark Nokia, the use of this trademark by the Defendants’ amounts to infringement.

Defendants Contentions -

• Defendants did not appear on record and the decision proceeded ex-parte.

Court’s Decision-

• The Court was of the view that the trademark of the Plaintiff has earned a global goodwill and reputation, and therefore, the mark falls under the category of a well-known trademark. Further, talking about the two marks the courts stated that ‘there can be no dispute to the fact that the Defendant's marks Mr. NOKIA and/or Mr. NO.KEYIA and/or Mr. NAV-KIA and/or NOOKAIAH are deceptively and confusingly similar to the Plaintiffs well-known and registered mark NOKIA’. 
   
• The Court came up with a test for two similar marks. It stated that the test is “whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade?.” It also stated that ‘Infringement u/s 29 (1) does not require confusion in the minds of public/ consumers with regard to trade origin. It is enough to show that impugned marks are deceptively similar to the registered marks of Plaintiff, even if, there are added matters to show a different trade origin.’ And in this case since ‘the Plaintiff is the registered proprietor of the mark NOKIA in class 41 under no. 1237567 in relation to entertainment services, the use thereof by the Defendant in relation to such services amounts to infringement under Section 29 (1) of the Trade Marks Act, 1999’.
   
• The case also brought to light the difference between trademark infringement and passing off. It observed that for infringement it is enough to show that impugned marks are deceptively similar to the registered marks of the Plaintiff, even if, there are added matters to show a different trade origin. Therefore, the Defendants have committed an act of infringement.
  
• Also, the Court mentioned that a Defendant who chooses to stay away from the proceedings of the Court should not be permitted to enjoy the benefits of evasion of Court proceedings.

Thus, in the light of above reasons, a decree of permanent injunction restraining the Defendants from publishing or airing the movie or content carrying expression which is deceptively similar to the mark ‘NOKIA’ was passed and a sum of INR 5 lakh (USD 7754 approx.) as monetary damages were awarded to the Plaintiff.