CHAPTER 6

³1R RG\F n claim

exclusive right
to use any generic word,
abbreviation, or acronym
which has become
SX OLFLMXULV´340

CHARACTER MERCHANDISING IN INDIA ± A

LEGISLATIVE & JUDICIAL PERSPECTIVE

340 SBL Limited v. Himalaya Drug Company, 1997 PTC (17) 540 (para 25.3)

193
 CHAPTER ± 6
CHARACTER MERCHANDISING IN INDIA ± A LEGISLATIVE
& JUDICIAL PERSPECTIVE

Unauthorised publicity of Celebrities by free riders can cause substantial

harm, disrupt the lives, hurt their feelings and also decrease their ability to profit
from their names, likeness or other attitudes. Free riders promote goods or services
by hijacking the name, voices and likenesses of the Celebrities; their look-alikes,
sound-alikes and millions of cheap memorabilia bear their portrait. It is this
exploitation which paves the way of misappropriation of their personas and
commercial valuable reputation. This sort of free-riding is harmful to the Celebrities,
leading them to knock the doors of court either under copyright laws, trademark law
or by pushing the boundaries in the tort of Passing Off. It is in this light, a separate
Personality Right is in the demand. However, the existing statutory provisions in
India has to be reviewed to check on the requirement or need for a separate statute.

Celebrities from different walks of life allow unique traits of their persona to
be used in association with their products and services. From a business perspective,
associating Celebrities with consumer goods serves dual purpose: firstly, the
consumers can instantly recognise and relate to the products endorsed by their
favourite personalities and secondly, consumers tend to buy the products that
VXSSRVHGO\ IRUP D SDUW RI WKH &HOHEULWLHV¶ OLIHVW\OH (DUOLHU¤ WKH &HOHEULWLHV ZHUH

neither permitted to flaunt their popularity nor seek any economic benefit from the
name and fame they have acquired. But now, Celebrities claim paradoxical rights
the Right to Privacy and the Personality Right and they seek exclusive rights to
exploit the name and fame they have acquired through hard labour. But to what
extent their success of enforcement lies in India poses a big question, as this concept
has not developed much in the Indian scenario. In fact, the public itself is not
conversant with this concept and neither are the personalities, who are unaware of
the legislation for enforcement.

194
6.1 STATUTES PROTECTING PERSONALITY RIGHTS OF
CELEBRITY

In the last two decades, the Celebrity industry has grown remarkably in power,
organisation and sophistication. As WKHXVHRIRQH¶VLPDJHRUSHUVRQDOLW\IRU
the marketing of goods and services has become more and more valuable LW¶VORSVLGH
has lead to vulnerability. As the costs involved in celebrity production have soared, the
pressure for illegal commodification of personas has also intensified. In India, as of date,
neither has there been any judicial precedent recognizing or rejecting
µ3HUVRQDOLW\5LJKWV¶QRULVWKHUHDQ\OHJLVODWLRQH[SUHVVO\JUDQWLQJVXFKDULJKW7KH

importance of Personality Rights is to secure the financial benefits gained from the
use of the property by the Celebrity and this is generally understood to be justified as
a reward or incentive for the Celebrity. The said right is assignable, licensable,
inheritable and prevents unjust enrichment and deceptive trade practices in the USA.
But in a way, it is a negative right, as it allows only a certain group to reap the
EHQHILWVDQGWKHUHVWDUHSUHYHQWHGIURPXVLQJWKHµ&HOHEULW\¶VWDWXV

In India, protection of Personality Rights can take the following forms:

An action for violation of the tort of Privacy with requests for an injunction
and damages
An action for Passing Off and infringement
An action for breach of confidence with requests for an injunction and
damages
An action for defamation, civil or criminal. A civil suit may seek an
injunction and damages.
An action for breach of contract where the plaintiff Celebrity has a subsisting
contract with a third party to commercially exploit his image / likeness in any
manner

195
 Presently, there is no specific provision under the trademark law to protect the
image right of Celebrities and absence of a specific provision, forces the Celebrity to
seek relief under the law of Passing Off.

6.1.1 Emblems and Names (Prevention of Improper Use) Act, 1950

This act was enacted to prevent the improper use of certain emblems and
names for professional and commercial purposes and protects unauthorised use of
few dignitaries name by prohibiting the use of the names given in its schedule.
Section 3 of the Act stipulates, µQRWZLWKVW QGLQJ Q\WKLQJFRQW
LQHGLQ Q\O ZIRU the time being in force, no person, shall, except in such cases
and under such conditions as may be prescribed by the Central Government, use or
continue to use, for the purpose of any trade, business, calling or profession, or in
the title of any patent, or in any trade mark or design any name or emblem specified
in the Schedule or any colourable imitation thereof without the previous permission
of the Central Government or of such officer of Government as may be authorised in
this behalf by the Central Government.¶

This section spells that there cannot be use of any name or emblem or any
imitation of the same as a trademark in the course of trade or business without the
prior permission of the Government. Usage of the name specified in the Schedule or
any name which is identical or too nearly resembles the name or gives an impression
of patronage of the Central or State Govt is also strictly prohibited under the Act.
The penalty for contravention of the provisions of this Act is dealt in Section 5 of
the Act.

Similarly, an obligation is cast upon Government entities not to register any

company or firm which bears any name or emblem as a trademark or design. This is
laid down in Section 4, which states that no authority shall (a) register any
company, firm or other body of persons which bears any name or (b) register a
trademark or design which bears any emblem or name or (c) grant a patent in

196
respect of an invention which bears a title containing any emblem or name, if the
use of such name or emblem is in contravention of Section 3.

341
A remarkable case under this head was filed in the Kerala High Court in Montblanc case in 2009 ,

when Montblanc International GmbH, a Swiss luxury giant, a multinational company, released luxury, special-

edition pens in India entitled µ0DKDWPD *DQGKL /LPLWHG (GLWLRQ §µ¶ DQG µ0DKDWPD *DQGKL

/LPLWHG

(GLWLRQ¶ZKLFKFDUULHGWKHHQJUDYLQJVRIDµODWKLZLHOGLQJ¶0DKDWPD*DQGKL¶V

portrait on the nib. Mr. Tushar Gandhi, the great grandson of Mahatma Gandhiji, had
granted exclusive marketLQJ ULJKWV WR WKH FRPSDQ\ WR XVH
0DKDWPD *DQGKL¶V image in their advertisements.

However, his contract was considered as a blasphemy as it hurts the

sentiments of the general public who have been respecting Mahatma Gandhi, as the
Father of our nation. Also, the use of the name Mahatma Gandhi is specifically
prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950,
which was enacted to prevent the improper use of certain emblems and names for
professional and commercial purposes. Tushar Gandhi, had to ultimately withdraw
from the contract yielding to public pressure. Consequently, Montblanc was forced
to withdraw its advertising campaign and the pens in question from the market.

The Schedule to the Act mentions a few dignitaries names that are prohibited
from being used in trade or business - 9A specifically includes the names and
pictorial representation of Chhatrapati Shivaji Maharaj, Mahatma Gandhi, Pandit
Jawaharlal Nehru, Smt Indira Gandhi and the Prime Minister of India and an
exception to use the pictures on calendars is granted where only the names of the
manufacturers and printers are given and the calendars are not used for advertising
goods. This legislation, as such, affords no protection to Celebrities, but to certain
dignitaries, whose names are listed in the Schedule to the said act.

341 Court issues notice on Mahatma pens; http://www.thehindu.com/todays-paper/article153395.ece;

Assessed on 10.10.2013

197
 343
(International) Ltd. v. Arvee Enterprises

6.1.2 Constitution of India

Personality Rights in India arise from the Right to Privacy and stem from the
notion of human dignity, as enshrined in Article 19 (Freedom of Speech and
Expression) and Article 21 (Right to Life) of the Constitution. The media considers
that it is their fundamental right to publish and inform the public about all the
matters that are of public interest or public concern under Article 21 of the
Constitution, wherein the freedom of press is embedded. This freedom has been
consistently challenged by the Celebrities on the ground that the media has misused
WKHLU IUHHGRP DQG XQGHU WKH JXLVH RI JLYLQJ QHZV µLQ WKH
SXEOLF LQWHUHVW¶ KDV interfered with their privacy rights.

The Right of Privacy was first recognised by the Apex court in R Rajagopal
342
v. State of Tamil Nadu , where the court asserted that Right to Privacy, being a
constitutional right implicit in the right to life and liberty guaranteed to the citizens
by Article 21 of the Constitution. The court held µNone can publish anything
concerning matters on family, marriage, procreating, motherhood, child bearing
and education among others without the consent of the individual, whether truthful
or otherwise and whether laudatory or critical. If he does so, he would be violating
the right to privacy of the person concerned and would be liable in an action for
G P JHV¶ This is the first case where the court opined that Right to Privacy would be violated
where, for exDPSOH¤ D SHUVRQ¶V QDPH RU OLNHQHVV LV XVHG ZLWKRXW KLV

consent, for advertising or non advertising purposes or for any other matter.

Subsequently, the Delhi High Court in the case of ICC Development

is the only authority on the nature of

Rights of Publicity where, by way of Obiter Dicta, the Delhi High Court held that in
respect of events, Rights of Publicity do not extend to an entity. It was held that an
individual is entitled to profit from the Rights of Publicity. The court, for the first
µWKH ULJKW RI SX OLFLW\ K V HYROYHG IURP WKH ULJKW RI SULY F\ QG F Q
time held,
LQKHUH RQO\ LQ Q LQGLYLGX O RU LQ Q\ LQGLF RI LQGLYLGX O¶V SHUVRQ OLW\ OLNH KLV

342 1994 SCC 632

343 Delhi High Court 2003 PTC (26) 228

198
name, personality traits, signature, voice, etc., An individual may acquire the right
of publicity by virtue of his association with an event, sport, movie, etc., However,
that right does not inhere in the event in question, that made the individual famous,
nor in the corporation that has brought about the organization of the event. Any
effort to take away the right of publicity from the individuals, to the organiser (non
human entity) of the event would be violative of Articles 19 and 21 of the
Constitution of India. No persona can be monopolized. The right of publicity vests in
an individual and he alone is entitled to profit from it. For example, if any entity,
Z V WR XVH . SLO 'HY RU 6 FKLQ 7HQGXON U¶V Q PHSHUVRQ LQGLFL LQ FRQQHFWLRQ ZLWK

WKH µ:RUOG &XS¶ ZLWKRXW WKHLU XWKRUL] WLRQ¤ WKH\ ZRXOG K YH Y OLG and

enforceable cause of action.

This case elucidates the Right of Publicity enshrined in the Constitution

(besides the Right to Privacy). In fact the court had provided detailed explanation on
how an individual acquires Right of Publicity and the resultant invasion of his/her
rights in case of breach of the same. The court had also expressed the use of
D &HOHEULW\¶V QDPH LQ DQ\ HQGRUVHPHQW ZLWKRXW WKHLU DXWKRULVDWLRQ DPRXQWV WR

infringement of Publicity rights. In fact, there cannot be a better case and such
detailed explanation of the court on the Right of Publicity.

Though, the Rights of Publicity comes under the purview of Article 21, this
right is not absolute, but subject to reasonable restrictions in the public interest under
Article 19(5). The courts have restricted the Right to Privacy of the celebrities in
case the event reported is newsworthy or if the public has got legitimate interest in
the event. Freedom of press under Article 19 of the Constitution is upheld and hence
all the aforesaid rights of the individual is subject to the rights of Press. Similar is
the provision in the USA where the press is granted privileges under the First
Amendment and the courts are prepared to uphold free speech even for commercial
344
use of names and images .

344 First Amendment in the US Constitution protects free speech or promotional speech if it is solely for
non commercial purpose.

199
 The object of Article 21 is to prevent encroachment upon personal liberty and
deprivation of life, except according to procedure established by law. It clearly
means that this fundamental right has been provided against State only. If an act of
private individual amounts to encroachment upon the personal liberty or deprivation
of life of other person, such violation would not fall under the parameters set for the
Article 21. In such a case the remedy for aggrieved person would be either under
Article 226 or under the relevant statute or general law. Nevertheless, if such act of
an individual supported by the State infringes the personal life and liberty of an
345
individual, it will fall squarely under the ambit of Article 21 . As the study
involves misappropriation or unauthorized use of the name, image, or likeness of the
Celebrity in merchandising / promotion of goods or services by individuals or
entities, the Celebrity cannot take shelter under Article 21.

6.1.3 Trademarks Act, 1999

Under the Trademarks Act, 1999 it is possible to have the essential

personality features of any fictional cartoon character or real person protected as
trademarks. Not only name of a character, but his image, signature, character
designs, voice, catch-phrases used by him, and the like, could be protected. In
accordance with the provisions of the Act, some Celebrities, have registered their
names, likeness or nicknames as trademark under section 2(1)(zb) of the Trademarks
Act, 1999 to grant misuse of their names. Celebrity names which have over the years
acquired secondary meaning and also obtained goodwill and are capable of
distinguishing the goods and services of one person from those of others are also
capable of protection under the said Act.

This is also not all the more difficult since, the definition of mark in Section
2(m) of the Trademarks act, 1999 does include ³ GHYLFH¤ U QG¤ KH GLQJ¤ O
HO¤ ticket, name, signature, word, letter, numeral, shape of goods, packaging or
combination of colours or any combination tKHUHRI´. Though, the definition

345 Maheshwari Vidhan; Article 21 of The Constitution of India - The Expanding Horizons;
http://www.legalserviceindia.com/articles/art222.htm;

200
provided for registration of names as trademark, the task is quite cumbersome. The
Celebrity has ensure that the mark is capable of being registered graphically and
distinguishing the goods or services, as per Section 2(1)(zb) of the Act. Besides, the
Celebrity has to ensure that registration does not fall under Section 9 (Absolute
grounds for refusal of registration) and Section 11 (Relative grounds for refusal of
registration) of the Act.

A trademark can be refused registration under section 9 if the trademark is (i)

devoid of any distinctive character or consists exclusively of marks or indications
which serve to designate the kind, quality, quantity, intended purpose, value,
geographical origins or the time of production of the goods or services or the
characteristics. Section 9 of the Act inter alia may also be invoked to refuse
registration if the trademark is of such a nature as to deceive the public or cause
confusion [Section 9(2)(a)], its use is prohibited under the Emblems and Names
(Prevention of Improper Use) Act, 1950 [Section 9(2)(d)].

Section 11 of the Act qualifies the grounds for refusing registration of the
mark, which are not absolute. A trademark can be refused registration under section
11 if the trademark is (i) similar or identical to an earlier trademark for the same or
similar goods or services or (ii) similar or identical to an earlier trademark in respect
of different goods or services. Assuming the Celebrity files for registration of his/her
name as a trademark, the Class under which the mark has to be registered needs to
be spelt out and the trademark is protected only for that Class under which the mark
is registered. Assuming an infringer passes off the goods using the Celebrity name
or likeness unauthorisedly in some other Class, the Celebrity has no right under
infringement but only a Passing Off action.

Despite the hurdles, Celebrities have been filing applications for registration
of their names as trademarks. One such instance is that of Kajol, who in a bid to
check such misuse, has made various applications to trademark her name. Similarly,
&HOHEULW\&KHI6DQMHHY.DSRRUZKRLVWKHDXWKRURIWKHERRNµ.KD]DQD¶UHDOLVHGWKH

YDOXH RI WUDGHPDUNV WR UHJLVWHU µ.KD]DQD¶ ZKHQ KH FDPH DFURVV a boy selling

201
Khazana of Chinese Recipes at a traffic signal. Sachin Tendulkar, Kajol, Shahrukh
Khan, Baba Ramdev, chef Sanjeev Kapoor, Amitabh Bachchan, Jaya Bachchan,
Katrina Kaif, Kareena Kapoor, etc., have registered their names as trademarks. Few
of the English footballers such as Alan Shearer, Paul Gascoigne and David Beckham
have also registered trademark in their names. We also understand that Amitabh
Bachhan and Sunny Deol have sought for registration of their voices under
trademark law to avoid misuse.

Here is a list of Celebrities who have registered / filed applications for UHJLVWUDWLRQ
RI WKHLU QDPHV DV µWUDGHPDUNV¶ XQGHU the following Classes in the
346
Trademarks Act, 1999 .

Class 9 Scientific, nautical, surveying, electric, photographic,

cinematographic, optical, weighing, measuring, signalling, checking,
life saving, and teaching apparatus and instruments; apparatus for
recording, transmission or reproduction of sound images, magnetic
data carriers, recording discs, automatic vending machines and
mechanisms for coin-operated apparatus, cash registers, calculating
machines, data processing equipment and computers, fire
extinguishing apparatus.
Class 28 Games and playthings, gymnastics, sporting articles not included in
other classes, decorations for Christmas tree
Class 35 Advertising, business management, business administration, office
functions
Class 42 Education, providing of training, entertainment, sporting and cultural
activities

Name of the Conflicting Trademark / Class / Statusof

Proprietor Device Journal Registratio
No. n

Sachin Tendulkar Sachin Tendulkar (Signature) 28 ; 1338 Registered

346 http://ipindiaservices.gov.in/tmrpublicsearch/frmmain.aspx

202
Sachin Tendulkar Sachin Tendulkar 28 ; 1460 Registered
Sachin Tendulkar Sachin Tendulkar (Device) 28 ; 1497 Registered
Sachin Tendulkar (2 Sachin Tendulkar (Device) 35 ; 1647 Registered
$SSOQ¶V

CSE Consulting LLP Virat Kohli (Superhero 35 Pending

avatar)

CSE Consulting LLP Virat Kohli (Cricketer avatar) 35 Pending

Novak Djokovic Novak Djokovic (Wordmark) 99 Objected
(International Regn (Multiclass
with WIPO) Appln);

BCI Holding GmBH Boris Becker (Name with 28 Registered

Device)

Shah Rukh Khan Shah Rukh Khan(Wordmark) 35 ; 1427 Registered

Aamir Khan Aamir Khan Production Pvt 9 ; 1333 Registered
Production Pvt Ltd Ltd

Amitabh Bachchan Amitabh Bachchan 9 ; 1291 Registered

Corporation Ltd (2
$SSOQ¶V

Amitabh Bachchan Jaya Bachchan 9 ; 1291 Registered

Corporation Ltd

Lata Mangeshkar Lata Mangeshkar 99 Pending

(Wordmark) (Multiclass
Appln);

Axis Advisors Pvt Ltd 6DQMHHY .DSRRU¶V :RQGHU 35 ; 1442 Registered

Chef (Wordmark with
Device)

Divya Yog Mandir Baba Ramdev 35 ; 1391 Registered

(Trust)

Divya Yog Mandir Swami Ramdev 35 ; 1391 Registered

(Trust)

Patanjali Yogpeeth Swami Ramdev Vidyalaya 35 ; 1439 Registered

(Trust)

203
 Patanjali Yogpeeth Ramdev Vedic College 35 ; 1433 Registered
(Trust)

Katrina Kaif (3 Katrina Kaif 35 Objected ;

$SSOQ¶V technical
error

Kareena Kapoor Kareena Kapoor 35 Objected ;

technical
error

Kajol Devgan Kajol (Label) 35 ; 1428 Registered

As stated in the definition a name, signature, numeral, word, etc., can be

registered. We have seen a number of Celebrities registering their names as
trademark. As far as number is concerned, there is no such registration by the
Celebrity. In one instance, to honour the greatness of little master, Sachin, Indian
Premier League franchise µMumbai Indians¶ decided that they will not allow
anyone to wear Sachin's trademark No. 10 T-shirt. Fans of the cricketer have even
requested Board of Control for Cricket in India
µ%&&,¶
 347
not to give the No. 10 T-Shirt to any other cricketer . As long as the
number is not distinctive, it cannot be registered.

Though once registered, trademarks can go on for years and years, without
falling into public domain, one restriction is laid down in Section 47 of the Act, i.e.
Removal from register and imposition of limitations on ground of non-use. A
registered trade mark may be taken off the register in respect of the goods or
services in respect of which it is registered on the grounds that (a) the trade mark
was registered without any bona fide intention on the part of the applicant and (b)
that the mark had not been used up to three months prior to the application or if the
mark was not used on the goods for more than five years starting the three months
prior to the application. Thus, having registered his/her name as a trademark and if

347 When Sachin Tendulkar gifted his famous No. 10 T-shirt to Narendra Modi;

http://daily.bhaskar.com/news/GUJ-OTC-when-sachin-tendulkar-gifted-his-famous-no-4429127-PHO.html

204
the Celebrity is unable to make continuous use of the mark, the registration is
subject to cancellation.

Further, Section 14 of the Trademarks Act, 1999 envisages, µZKHUH Q

application is made for the registration of the trademark which falsely suggest the
connection with a living person, or a person whose death took place within 20 years
prior to the date of application for registration of the trademark, the registrar, may
before proceeding with the application require the application to furnish the consent of
such living person or as the case may be, the legal heirs of the deceased person in WKH
FRQQHFWLRQ SSH ULQJ RQ WKH P UN¶ This section protects third parties
from registering names of celebrities in connection with their products and is a welcome
step to all celebrities whose names are sought to be registered by third parties.

Certain marks are not registrable under the direction of the Central
Government which includes the words, Sri Sai Baba, Lord Buddha, Sri
Ramakrishna, Swami Vivekananda, The Holy Mother alais Sri Sarada Devi, the
Sikh Gurus and Lord Venkateshwara.

Besides names, some sports club have protected their trademark registered
by them under the Trademarks Act, 1999. As under the Act, a proprietor can apply
for registration under various classes of goods and services in relation to which the
trademarks are being used, Kolkata Knight Riders, apart from being a cricket team,
also sells merchandise in the form of caps, t-shirts, etc., T-shirt which falls under the
category of clothing, can be registered under Class 25 in India, as per the
classification of goods in India and mugs can be registered in Class 21 under
porcelain and glass ware. Protection of trademarks can also be sought internationally
by marking an application under the Madrid system which allows the applicant to
apply the trademark registration under multiple jurisdictions and file infringement
suit against misuse of such trademarks.

Section 2(1)(i)(v) on false trade description expressly lays down µ Q\ I OVH

name or initials of a person applied to goods or services in such a manner as if such

205
name or initials were a trade description in any case where the name or initials (a)
is or are not a trademark or a part of a trademark and (b) is or are identical with or
deceptively similar to the name or initials of a person carrying on the business in
connection with goods or services of the same description or both and who has not
authorised the use of such name or initials and (c) is or are either the name or
initials of a fictitious person or some person not bona fide carrying in the business
in connection with such goods or services.

6.1.4 Passing Off Action

Since, there are restrictions on registration of names of Celebrities under the

Trademarks Act, 1999, the Celebrities chose to file an action for Passing Off against
DQ\ XQDXWKRUL]HG H[SORLWDWLRQ RI D SHUVRQ¶V 3HUVRQDOLW\ 5LJKWV¤ LQFOXGLQJ JRRGZLOO

RUµIDPH¶E\IDOVHO\LQGLFDWLQJHQGRUVHPHQWRIJRRGVE\WKHSHUVRQ:HFRXOGVHH prior to the

release of the moviH µ%DED¶ LQ §¤ FLQH VWDU 5DMQLNDQWK LVVXHG OHJDO QRWLFHSURKLELWLQJDQ\

RQHIURPLPLWDWLQJKLVµFKDUDFWHU¶ZKLFKKHSRUWUD\HGLQWKH

movie for commercial gain. The legal notice restrained anyone from emulating his
screen persona or using the character of "Baba" for exchange gain, including by way
of commercial advertisements, broadcasts, promulgations and replication by mimics
on television.

The legal notice went an extra mile and prohibited endorsements using
Rajnikanth's physiognomy or habiliment in the film, such as head-scarves, pendants,
etc., Following this was in the year July 2008, where BCCI has issued a legal notice
to Kothari Products Ltd for unauthorised use of footage and photographs of the
348
Indian cricketers in their advertisement for Pan Parag , and now the recent
FRQWURYHUV\ RQ WKH PRYLH µ0DLQ +RRQ 5DMQLNDQWK¶ ZKHUH WKH FLQH VWDU KDV DOOHJHG

that his name (as titled in the movie) and the scenes in the movie was a mere
imitation / copying of his character from his other films. Another controversy was
where actress Sridevi has issued legal notice in the year October 2014 against the

348 http://timesofindia.indiatimes.com/sports/india-in-sri-lanka/top-stories/BCCI-issues-legal-notice-to-
Pan-Parag/articleshow/3231758.cms?

206
7HOXJXILOP3URGXFHU5DP*RSDO9HUPDIRUXVLQJKHUQDPHµ6ULGHYL¶IRUWKHWLOHRI the
349
movie in his upcoming film, without taking her consent.

Successful claims of Passing Off could also be brought for enforcement of

common law proprietary rights by the owners of fictional characters in case essential
features of their characters' personality are used without their authorization.
Obtaining statutory trademark protection is additionally beneficial in bringing
rightful claims of trademark infringement against misuse and is also a stepping stone
350
for a successful claim .

In India, unlike West, we have few cases where Celebrities Personality Rights have
351
been acknowledged by the courts. In, DM Entertainment Pvt Ltd v. Baby Gift House ,
the plaintiff company was incorporated in 1996 to manage the career of popular singer Daler
Mehndi. The plaintiff had also been assigned the ULJKWV¤ WLWOH DQG
LQWHUHVW LQ 0HKQGL¶V SHrsonality inherent in his rights of publicity,
DORQJ ZLWK KLV WUDGHPDUN µ'$/(5 0(+1',¶ 7KH GHIHQGDQW KDG D VXFFHVVIXO

EXVLQHVV VHOOLQJ GROOV EHDULQJ 0HKQGL¶V OLNHQHVV DQG VLQJLQJ YRLFH¤ DQG

consequently cashed in on his popularity.

Aggrieved by the deIHQGDQW¶V XQODZIXO DFWV¤ WKH SODLQWLII ILOHG

IRU infringement of his publicly rights and false endorsement leading to Passing Off
DFWLRQ,WZDVFRQWHQGHGWKDWWKHXQOLFHQVHGXVHRI0HKQGL¶VSHUVRQDE\DQ\SDUW\

would leave a false impression on the public that the goods or services originated
IURP 0HKQGL¤ KLV VSRQVRUV RU OLFHQVRUV DQG DV VXFK¤ WKH GHIHQGDQW¶V DFWLYLW\

constituted false endorsement and Passing Off claim. It was contended that the use
RIWKHVWDU¶VSHUVRQDOLW\WRSURPRWHDFRPPHUFLDOSURGXFt was not only illegitimate

but also amounted to a dilution of the uniqueness of the personality and gave rise to
a false belief.

349 http://www.ibmtimes.co.in/savitri-controversy-sridevi-sends-legal-notice-ram-gopal-varma-
611080

350 Indus Law; Chacha Choudhary and Character Merchandising;

http://www.mondaq.com/india/x/361128/Trademark/Chacha+Chaudhary+And+Character+Merchand ising
(assessed on 18.08.2015)
351 ([CS(OS) 898/2002)

207
 The evidence of plaintiff had gone un-rebutted which includes loss of business,
reputation and goodwill in market and amounted to Passing Off. It also amounted to a
clear dilution of the uniqueness of such Personality. In view of these arguments, the
court granted the plaintiff a permanent injunction against the defendant as well as
ordering damages. The court further observeG¤µLQWKHSUHVHQW instance, the
commercial use of an individual's identity is intended to increase the sales of product by
fusing the Celebrity's identity with the product and thereby the Defendant's were selling
those dolls, on the basis of publicity value or goodwill in
WKHDUWLVWVSHUVRQDLQWRWKHSURGXFWLHGROO¶1RRQHZDVIUHHWRWUDGHRQDQRWKHUV

name or appearance and claim immunity. The Delhi High Court passed an order of
permanent injunction in favour of Daler Mehendi and also awarded Rs. 1 lakh as
damages. This judgment marked a key development in the case law pertaining to
Character Merchandising in India.

352
In 6RQX 1LJDP¶V FDVH , Sonu filed a case against Mika for
unauthorised publishing of his image and infringing his Personality Rights, his
performer's rights as well as his exclusive rights to publish and exploit his images in
the Mirchi Music Awards. The dispute was regarding the publicity of the Mirchi
Music awards. Though Mirchi Music Awards had obtained consent from Sonu, the
hoardings put up by the defendants were different from the official hoardings put up
by Mirchi Music Awards itself. The Bombay High Court imposing a heavy fine of
Rs. 10 lacs on the defendant, made it clear that no third person should be
commercially profited by using images of the Celebrities without their consent,
exploiting the Personality Right of the Celebrities and observed that the heavy fine
so imposed would act as a deterrent to people who intend to engage in such acts.

In the case of endorsement by Amitabh Bachcan and his wife Jaya Bachchan of a
jewellery, the plaintiff had asked Celebrity couple Amitabh Bachchan and Jaya Bachchan to
endorse and advertise its range of diamond jewellery sold under the
EUDQGQDPHµ7DQLVKT¶7KHFRXSOHKDGDVVLJQHGDOOWKHrights in their
personality to the plaintiff to be used in advertisements in all media, including print and video.

352 Sonu Nigam v. Amrik Singh (alias Mika Singh) & Anr, (372/2013; Bombay High Court)

208
The plaintiff had invested huge sums of money in the promotional campaign. The
defendant, a jeweller dealing in goods identical to those of the plaintiff was found to
KDYHSXWXSDKRDUGLQJUHVHPEOLQJWKHSODLQWLII¶VLQFOXGLQJWKHVDPHSKRWRJUDSKRI

WKH&HOHEULW\FRXSOHGLVSOD\HGRQWKHSODLQWLII¶VKRDUGLQJ6LQFH¤WKHGHIHQGDQWKDG

neither sought permission from the couple to use their photograph, nor been
authorised to do so by the plaintiff, the court held it liable for misappropriation of
WKHFRXSOH¶V3HUVRQDOLW\5LJKWV

Here the court observed that, "when the identity of a famous personality is
used in advertising without their permission, the complaint is not that no one should
not commercialize their identity but that the right to control when, where and how
their identity is used should vest with the famous personality. The right to control
353
commercial use of human identity is the right to publicity "

In another recent controversy surrounding the erstwhile cricketer before the

Calcutta High Court, where Sourav Ganguly, a popular cricketer and former captain
of the national team, discovered that Tata Tea Ltd was cashing on his success by
promoting its tea by offering consumers an opportunity to congratulate him through
354
a postcard which was included in each one kilo packer of tea . Though, Ganguly
was the employee of the Company, he had not authorised the company to market its
tea in association with him in any manner. Ganguly successfully challenged the case
in the court before settling the dispute amicably.

Similarly, the Bollywood actress Katrina Kaif, recently sued a hygiene

355
products company for violation of her image rights . She had endorsed one of the
FRPSDQ\¶VSURGXFWVIRUDVPDOODPRXQWDQGDIWHUDFTXLULQJVWDUVWDWXV¤VKHHQGRUVHG

another personal beauty product (similar to the product she endorsed for the earlier
company) apparently for a large sum. Controversy began when the earlier company
reintroduced the old advertisement on television running simultaneously with the

353 Titan Industries Ltd. v. M/S Ramkumar Jewellers ; 2012 (50) PTC 486 (Del)
354 Saurav Ganguly v. Tata Tea Ltd;
355 Titan Industries Limited v. Ramkumar Jewellers; Are Image Rights Going the Guernsey Way?;

http://www.lexmantis.com/pdf/Aug-2013-LexMantis-Image%20Rights-Going-the-Guernsey-Way.pdf

209
new advertisement. She has sought an order from the Bombay High Court against
the earlier company restraining it from using the old advertisement featuring her. All
said, the law relating to Personality Right is in its nascent stage, with no precedents
and codified law.

356
In Sahara One Media and Entertainment & Ors v. Sampat Pal & Ors ,
Sampat Pal, the plaintiff filed a suit for permanent injunction and damages in the
Delhi High Court claiming infringement of privacy and defamation against the
defendant. The suit was filed to restrain Sahara One Media & Entertainment & Ors
for rHOHDVLQJ WKH ILOP ³*XODDE *DQJ´ ZKLFK VKH FODLPHG ZDV
DQ DGDSWDWLRQ RI KHU life story into a movie. She claimed that the
portrayal of the characters in the film defamed her and degraded her along with the
others members of the organization. She further alleged that the film defamed her
and portrayed her work in bad light and in a horrific manner with swords and sickles.

The Single Judge of the Delhi High Court passed an order restraining the ILOP¶V UHOHDVH XQWLO

WKH QH[W GDWH RI KHDULQJ IURP EURDGFDVWLQJ, distributing and

SURPRWLQJWKHILOP³*XODDE*DQJ´LQLWVFHQVRUHGRUXQFHQVRUHGSULQWV7KHUHDIWHU¤

on appeal before the Division Bench, the Court allowed the release of the film with a
condition in the Disclaimer that Sahara Media and Entertainment can show the film
by stating that it has nothing whatsoever to do with the life and works of Sampat Pal
and her organization.

We have seen that the Indian courts, have far and wide, protected personality rights
of Celebrity to the maximum possible extent and JUDQWHG UHOLHI¶V $OVR¤
XQOLNHWKHFRQFHSWRIµFRPPRQILHOGRIDFWLYLW\¶ZKLFKSUHYDLOHGLQWKH8.
XQWLOWKH

passing of Mirage case) where the Celebrity had to be in the similar field of activity
to seek relief, there is no such precedent in India. India, had always recognised
Celebrity and have come to their rescue in times of need and hence there has not
been a necessity felt for a specific statutory relief for enforcing the Right of publicity
in India. Needless to mention that the procedure for registration of names of

356 CS(OS) No. 638 of 2014, Delhi High Court.

210
&HOHEULW\ DV D µWUDGHPDUN¶ LV VWLOO FXPEHUVRPH DQG LW FRXOG EH VHHQ WKDW RQO\

%ROO\ZRRGDFWRUVKDYHVRIDUPRYHGIRUUHJLVWUDWLRQRIWKHLUQDPHVDVµWUDGHPDUNV¶¤

unlike the South Indian stars. Also, registration of names or their signatures in a
particular class, restricts the action of infringement suit to that class only and they
need to move only under a passing off action for other classes. Probably, this could
also be one reason for not registering the names, as at times, the entire procedure
ends in vain.

6.1.5 Consumer Protection Act, 1986

6HF §

µ
U
 RI WKH &RQVXPHU 3URWHFWLRQ $FW¤ µ GHILQHV µ8QIDLU WUDGH SUDFWLVH¶ DV D

WUDGH SUDFWLVH¤ ZKLFK IRU WKH SXUSRVH RI SURPRWLQJ WKH VDOH¤ XVH RU

supply of any goods or for the promotion of any services, adopts any unfair method
or unfair or deceptive practice, including any of the practices mentioned in the said
section. The relevant section for the Research reads as, µrepresents that the seller or
supplier has a sponsorship or approval or affiliation, which such seller or supplier
does not have¶

Though this Act is consumer friendly and protective and also falls under unfair
competitive acts, it has certain lacunae. Here, tKHGHILQLWLRQRIµFRPSODLQDQW¶

LVUHVWULFWHGWRDµFRQVXPHU¶¤DVSHUVHFWLRQ§

µ
E
DQGZLWKUHVSHFWRIµGHILFLHQF\RI VHUYLFH¶ LQ UHVSHFW RI WKH JRRGV RU VHUYLFHV

SXUFKDVHG DV SHU VHFWLRQ §

µ
J
¤ WKH µ&HOHEULW\

¶FDQQRWVHHNIRULQPLVDSSURSULDWLRQRIKLVKHUQDPHLQWKHSURPRWLRQRI goods or

services, though iW VTXDUHO\ IDOOV XQGHU WKH GHILQLWLRQ RI µXQIDLU WUDGH SUDFWLVH¶

6.1.6 Laws Regulating Advertising Practices

The contents of the advertisements are governed by various regulatory codes.

One such being, the Advertising Standards Council of India, a non statutory tribunal,
established to ensure ethical advertising practices for advertisers. It is a self regulating
code, and ³&UH WLQJ $GYHUWLVLQJ ZLWK &RQVFLHQFH´ is the principle of

211
tKH $GYHUWLVLQJ 6WDQGDUGV &RXQFLO RI ,QGLD
³$6&,´
¤ D QRQ VWDWXWRU\¤ self regulatory voluntary organization established in the
year 1985, with the objective of promoting responsible advertisements and ensuring the
protection of the interests of consumers. ASCI was formed with the support of all four
sectors connected with Advertising, viz. Advertisers, Ad Agencies, Media (including
Broadcasters and the Press) and others like PR Agencies, Market Research Companies
etc., In fact, the Information and Broadcasting Ministry also grants support to the ASCI.

The Code of ASCI provides that µ GYHUWLVHPHQWV VKRXOG

FRQW LQ QR reference to any individual, firm or institution which confers an
unjustified advantage on the product advertised or tends to bring the person, firm on
institution into ridicule or disrepute. If and when required to do so by ASCI, the
advertiser and the advertising agency shall produce explicit permission from the
357
person, firm or institution to which references are made in the advertisement ¶

The advertisements should also adhere to the provisions of Indecent

Representation of Women (Prohibition) Act, 1986. This Act prohibits indecent
portrayal of women in advertisements in print and electronic media and on
hoardings.

If a consumer or even the industry, feels that an advertisement contravenes

the codH¤ D FRPSODLQW FDQ EH VHQW WR $6&, ,Q IDFW¤ $6&,¶V DGYHUWLVHPHQWV H[KRUW

consumers to complaint, whenever they come across advertisements which they

WKLQNLVIDOVHRUPLVOHDGLQJRUXQHWKLFDO³,IDQDGLVZURQJ¤ZHZLOOVHWLWULJKW´-³LI

an ad is misleadiQJ¤ZHZLOOVHWLWULJKW
´¤³LIDQDGLVGLVKRQHVW¤ZHZLOOVHWLWULJKW´ says ASCI in its advertisements issued
358
at regular intervals . As the ASCI is an advisory and a mere regulatory body, rather than quasi-
judicial or statutory authority, the decisions of ASCI is not binding on the parties, but are merely in
the paper form, with least significance.

357 Chapter 1 Clause 3, Code

358 Girimaji Pushpa; Misleading Advertisements and Consumers;
http://consumereducation.in/misleadingeng.pdf; Indian Institute of Public Administration; New Delhi;
Assessed on 23.11.13

212
 Though, ASCI's role has been acclaimed by various agencies including the
Government, it lacks the force of legal recognition. The Government of India has at
last, taken note of this and by one stroke on 2nd August 2006 vide a notification in
The Gazette of India: Extraordinary {Part II Section. 3(i)}, made sure that at least as
far as TV Commercials are concerned, they abide by ASCI code. The amendment
made in Cable Television Networks Rules, 1994 through a Notification dated
August 2nd, 2006 now states: "(9) No advertisement which violates the Code for
Self-Regulation in Advertising, as adopted by the Advertising Standards Council of
India (ASCI), Mumbai for public exhibition in India, from time to time, shall be
carried in the cable service".

The mechanism should be such that it acts as a deterrent for those who
misuse advertising. For such effective implementation, ASCI should be given the
power to grant hefty punishment in case of non compliance and also power to
blacklist for a specific period in cases of misleading or fraudulent endorsements.
Also, as a preventive measure, a certification clearance by a committee, before
release of an advertisement, would also be a preventive measure to avoid misleading
or false endorsement advertisements, as being the practice in Censor Board of Film
Certification. This is of prime significance and has to be considered in the light of
emerging rise in Celebrity cases. This has to be considered in the light of emerging
rise in the conflicting advertisements in the media and would act as a deterrent to
mislead the consumer.

6.2 STATUTES PROTECTING CELEBRITY IN CYBERSPACE

With Globalisation, technological advances having expanded the Personality

Rights of a Celebrity and enhanced the commercial value of personalities. With the
development of internet, e-commerce business transactions have become common
and the manufacturer and his goods or services are identified by the domain name
and website address. In fact, domain name is the internet address used by a company
or an individual. As the name, appearance or character of a Celebrity is

213
 endorsed in a product, domain names have been created retaining the names of such
personalities, misleading the public to believe that those websites are being operated
by the respective Celebrity. This has become another tacit method of promoting
sales in e-commerce. Obtaining fraudulent registration with an intent to sell the
domain name to the lawful owner of the name at premium is called
359
Cybersquatting.

The Delhi High Court while granting permanent injunction against Arno
360
Palmen from using the trademark / domain name www.tatainfotech.in, and decreeing
cancellation of the domain name, reiterated that the principles of Passing Off would
fully apply to an infringement of a domain name. In this case the defendant registered
the domain name and wrote to the plaintiff hoping to sell the domDLQ QDPH WR
WKH SODLQWLII¶V (cybersquatting) or take unfair advantage of the

GLVWLQFWLYHFKDUDFWHUDQGUHSXWDWLRQRIWKHSODLQWLII¶VWUDGHPDUN¤ZKLFKZDVVWHPPH

G out by the court.

361
In the famous Mark and Spencer PLC v. One in a Million Limited , the
defendant dealt with domain names and had registered a number of names incorporating
the names of well-known English companies. The Judge at first instance did not accept
that the mere registration of domain names constituted Passing Off. On appeal, Aldous
L.J held that the registration of domain names could give rise to an action in Passing Off
on two grounds; firstly, if the placing of
GRPDLQQDPHVRQDUHJLVWHUZRXOGµPDNHDfalse representation to all
those persons who consult the register, and make an assumption that the registrant is
connected or associated with the name registered and thus is the owner of the goodwill.

6HFRQGO\

¤LIWKHGRPDLQQDPHZRXOGFRQVWLWXWHDQµLQVWUXPHQWRIIUDXG¶LQWKHKDQGV RI DQ\

RQH¤ RWKHU WKDQ WKH µWUXH RZQHU¶ 7KHVH LQVWDnces give rise to an action in

Passing Off.

359 Manish Vij v. Indra Chugh; AIR 2002 Del 243

360 Tata Sons Ltd & Anr v. Arno Palmen & Anr ; 2013(54) PTC 424 ( Del)
361 British Telecommunications Plc & Others v. One in a Million Limited & Others [1999] 1 ETMR
61

214
6.2.1 Registration of Domain Names

The authority to register domain names was earlier vested with NIC in USA,
which is till date responsible for handling the day to day administration of the
domain name system. The entity now responsible for assigning domain names in
Network Solutions Inc (NSI) acting on behalf of Inter NIC is ICANN (Internet
Corporation for Assigned Names and Numbers) regulated by WIPO is in charge of
registering top-level domain names on the World Wide Web. Top level domains
include <.com>, <.org>, <.net>, and much more. The ICANN is an internationally
organized, non-profit corporation that has responsibility for Internet Protocol (IP)
address space allocation, protocol identifier assignment, domain name system
362
management, and root server system management functions .

The outcome of the consultation between ICANN and WIPO resulted in the
setting up not only of a system of registration of domain names, but also the
363
evolution of UDNDR Policy by ICANN .

The system of assigning domain name was on first-come first-registered

basis. Rule 2 of the UDNDR Policy requires that a party before applying for
registration of a domain name has to verify that to its knowledge, the registration of
the domain name will not infringe or violate the rights of any third party and that it
will not knowingly use the domain name in violation of any applicable laws or
regulations and also that domain name is neither identical nor similar to a trade mark
364
or service mark . With the growing awareness of the internet, the Companies Act,
1956 and the Listing Agreement have made it mandatory for companies to make
substantial disclosures of internet address on their websites, as a matter of corporate
governance.

362 http://www.etsi.org/WebSite/AboutETSI/GlobalRole/ICANN.aspx
363 Taraporevala V J, Law on International Property, Published by V J Taraporevala, Mumbai,
Edition December 2005; Printed by Inkwell Printers, Mumbai, pg 398
364 Mohta, V.A, Trade Marks Passing Off and Franchising, 1st Edition, Published by All India
Reporter Pvt Ltd, Nagpur, 2004, pg 156

215
6.2.2 Celebrity in Cyberspace ± A Fragment of Personality Rights

The most prominent category of disputes involving personal names in the

GRPDLQ VSDFH UHYROYHV DURXQG &HOHEULWLHV¶ QDPHV ,Q DM Entertainment v.

365
Jhaveri, Daler Mehndi , a famous singer, composer and performer, brought an action
against a party who had registered the domain name µG OHUPHKQGLQHW!¶. The
Delhi High Court prohibited the defendants from using the mark and domain name, thus
UHFRJQLVLQJ WKH IDFW WKDW DQ HQWHUWDLQHU¶V QDPH PD\ KDYH
WUDGHPDUN significance. In the Indian perspective, Celebrities can claim both Right
to Privacy and Right of Publicity against use of their domain names. However, the law
relating to Right of Publicity is in its nascent stage, with no precedents and codified law.

Some sportsmen individually have their own website like www.kapildev.in,

www.sachintendulkar.in and so on. These domain websites are registered with
ICANN. Enormous information is disseminated and events are being broadcasted
including online games through internet which has acquired a huge market value in
branding. As domain names have their own significance, most disputes on personal
domain names are currently brought under the UDNDR Policy, where a third party
creates a domain name with the name of the Celebrity, thereby bringing a false
imagination in the minds of the public tht the said website is being run by the
Celebrity.

As per the UDNDR Policy, an action can be brought by any person before
the dispute resolution body of ICANN which authorizes domain name registrars,
366
provided the following elements must be established by the complainant ;

A. The domain name(s) are identical or confusingly similar to a trademark in

which the complainant has rights;
[(Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))]

365 1147/2001
366 Uniform Domain Name Disputes Resolution Policy;
https://www.icann.org/resources/pages/policy-2012-02-25-en; Assessed on 24.06.2014

216
 B. The Respondent has no right or legitimate interests in respect of the domain
name(s);
[(Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))]
C. The domain name(s) were registered and are being used in bad faith.
[(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))]

Here again, the categories elucidated in the UDNDR Policy are linked to the
criteria for a Passing Off action. Thus, for success in domain cases, the complainant
VKRXOG GHWHUPLQH WKH H[LVWHQFH RI ³EDG IDLWK UHJLVWUDWLRQ DQG XVH´¤ ZKLFK VKDOO

include registering the domain name with the primary purpose of subsequently
selling it at a profit or for the purpose of disrupting the business of the competitor or
to prevent the owner of the trademark from reflecting the mark in a corresponding
domain name or E\ FUHDWLQJ D OLNHOLKRRG RI FRQIXVLRQ ZLWK
367
WKH FRPSODLQDQW¶V trademark.

368
In a judgement delivered in Ms Barkha Dutt v. Easy ticket Kapavarapu Vas , the WIPO
governing internet domains has held that µ QXQ XWhorised use of I PRXV SHUVRQ¶V Q
PH LV QRW RQ ILGH XVH QG LI VXFK Q PH LV XVHG WR OXUH

users, it does not confer rights or legitimate interests on the infringer and it has
HHQIXUWKHUKHOGWK WWKHULJKWWRFRPPHUFL OO\XVHRUH[SORLWRQH¶VRZQQ
Pe, vests with the person who has worked to create the fame and can lawfully restrict any

RWKHUWKLUGS UW\IURPH[SORLWLQJWK WI PHIRUFRPPHUFL OSXUSRVHV¶.

The UDNDR Policy requires the complainant to establish a trademark

interest in his/her personal name. This applies equally to famous celebrities,
politicians, public figures and private individuals. Unless it is established that the
complainant has an interest in the domain name and that the domain names are
confusingly similar and is being used in bad faith, no remedy would be available to
the complainant, whose personal name is being used in the domain name. Further, if
WKHDVSHFWRIµEDGIDLWK¶LVQRWLQYROYHG¤WKHUHPHG\LVEOXUUHG
367
Joy Shine Domain Name, Cyber Squatting and domain Name Dispute Resolution;
http://www.manupatrafast.com/Articles/PopOpenArticle.aspx?ID=ef5c95f8-7cd4-4591-80d2-
94f8c378680d&txtsearch=Intellectual Property Rights; ass on 03.05.2012
368 Case No. D2009-1247

217
 Also, the UDNDR Policy is geared at protecting marks in cyberspace against
unauthorised commercial uses likely to confuse consumers as to the source or origin
of goods or services. In personal domain name conflicts, the unauthorised use of a
personal domain name will be commercial and some will be for commentary
purposes whether it be idolatry, parody or criticism or a combination.

6.2.3 WIPO Dispute Resolution ± Its Effectiveness

Though, each country has its own laws governing protection of domain
names, in case of international conflict, WIPO Arbitration and Mediation Centre
plays a vital role. WIPO Arbitration and Mediation Centre, established in 1994, as a
XQLW RI :,32¶V ,QWHUQDWLRQDO %XUHDX¤ RIIHUV DOWHUQDWLYHV WR
369
FRXUW OLWLJDWLRQ IRU resolution of commercial disputes between private parties .

The WIPO Centre plays a leading role in the design and implementation of
tailor-made dispute resolution procedures, the most prominent being Uniform
Domain Name Dispute Resolution, which is based on the recommendation made by
WIPO to address certain abusive practices in the domain name system. The domain
names are allocated on a first-come, first-serve basis by ICANN and disputes
arising, if any are to be decided as per UDNDR Policy, approved by ICANN of
which WIPO is one of the organisation which entertains domain name disputes.

The first case decided by the WIPO was World Wrestling Federation
370
Entertainment Inc., v. Michael Bosman , where the respondent had registered
the domain name of the complainant only to sell them at US $ 10,00,000. The
administrative panel ordered the respondent to transfer the ownership of the domain
name to the complainant.

369
Mukherjee, Sunando - Passing Off in Internet Domain Names A Legal Analysis; Journal of
Intellectual Property Rights, Volume 9, March 2004, pp 136-147; JIPR9(2)136-147; Available
www.niscair.res.in/sciencecommunication/.../jipr/jipr2k4/jipr_mar04 ; Assessed on 20.12.2012 370
WIPO Case No D99-0001; Joy Shine Domain Name, Cyber Squatting and domain Name Dispute
Resolution; http://www.manupatrafast.com/Articles/PopOpenArticle.aspx?ID=ef5c95f8-7cd4-4591-
80d2-94f8c378680d&txtsearch=Intellectual Property Rights; ass on 03.05.2014

218
 A Celebrity will be concerned if an unauthorised website is utilising his/her
personal name as a domain name. In such case, the trademark-focussed laws would
obviously not help the Celebrity at all unless she could establish a trademark interest
in her personal name. Assuming the Celebrity could establish such an interest, they
would have to establish that the website in question was confusing consumers for a
trademark infringement action, was dilutive of her name in commerce for a dilution
action, or was registered and used in bad faith for a UDNDR Policy dispute. An
unauthorised website is probably not confusing to consumers provided that it is not
passing itself off as an authorised website of the Celebrity. Celebrities want to
control relevant domain names to prevent unjust enrichment. The injury to
Celebrities is similar as to owners in trademark cases: the Celebrity cannot
communicate to fans and there is misuse of his name by the cybersquatter.

Besides the Uniform Domain Name Disputes Resolution Policy, which aims at
protecting domain name disputes, the Anti Cybersquatting Consumer Protection $FW
µ$&3&$¶
 ZDV HQDFWHG LQ µ WR DGGUHVV VRPH RI WKH PDMRU
FRncerns of trademark holders in relation to cybersquatting. It mainly protected
trademarks in cyberspace, although it does make some specific provision for personal
names the only law to have done so in the Internet context. The ACPA inserted two new
provisions into the Lanham Act one directed at the prevention of Cybersquatting with
respect to trademarks, and the other at the prevention of Cybersquatting with respect to
personal names. However, the personal name provision - Section 1129(1)(A) - is
available to people who are concerned about cybersquatters registering their names as
domain names. The only limitation in this act is that it could not be invoked if the
domain name is not used for cybersquatting, unlike the UDNDR Policy which has a
comprehensive coverage. The Right of Publicity can
VHUYHWRYLQGLFDWHWKH&HOHEULW\¶VLQWHUHVWLQVXFKDFDVH

371
In the <Madonna.com> dispute 0DGRQQD¶V ZHEVLWH
www.madonna.com was registered by third party and was further linked to a pornographic
site. Later Madonna had the domain name transferred in her favour by contesting before the

371 Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com"; WIPO Case No. D2000-0847

219
WIPO and obtaining an order in her favour. The initial registrant of that domain
QDPH ZDV REYLRXVO\ D F\EHUVTXDWWHU DQG KDG UHJLVWHUHG D µ0DGRQQD¶ WUDGHPDUN LQ

Tunisia in order to argue that he had a legitimate trademark interest in the domain name,
later however, the name was transferred to the popular singer Madonna who had to
register the name. The Oscar winning actress Julia Roberts fought for control of the
372
<juliaroberts.com> domain name. Julia Roberts filed a WIPO complaint alleging
that an American dealer had registered a domain name as µ-XOLD5REHUWVFRP¶
In 2000, a WIPO complaint was filed by Julia Roberts, the popular Oscar winning
actress, who claimed that a dialer had registered a domain name as <julia roberts.com>
Though the dealer justified its stance by stating that he
KDGVHOHFWHGWKHQDPHDVµDWULEXWHWRWKHDFWUHVVDQGWKDW-XOLD5REHUWVKDGQRWUDGH

mark registered in her name, the WIPO tribunal ruled that the dealer had neither
right nor legitimate interest in the domain name and that the dealer had registered it
in bad faith and ordered for transfer of the domain name in favour of Julia Roberts.

The WIPO did not heed to the defense and the dealer was ordered to transfer the domain
name in favour of Julia Roberts. Similarly, in the <hillaryclinton.com> case, the Senator Clinton
was regarded as having an unregistered trademark right in her personal name in connection with
373
both her political activities and her career as an author of a number of books Though the
ultimate victory was in favour of the celebrities, however the path to victory was laborious, as
the Celerity needs to prove WKDWWKHF\EHUVTXDWWHUKDVDµVSHFLIic intent to
profit from such name by selling the
GRPDLQQDPHIRUILQDQFLDOJDLQ¶

374
Coming to few Indian cases, in Tata Sons Ltd. v. Ramadasoft , the renowned
industrialist, Ratan Tata, filed a complaint before the World Intellectual Property
Organization (WIPO), seeking the transfer of domain names consisting of the name Tata as
the cRPSODLQDQW¶VWUDGHPDUNDQGQDPHµ7$7$¶LVKLJKO\UHSXWHG and
distinctive and if anyone proceeds to operate a websites under the impugned

372 Julia Fiona Roberts v. Russell Boyd ; WIPO Case No. D2000-0210
373 Hillary Rodham Clinton v. Michele Dinoia, National Arbitration Forum Claim No.
FA0502000414641, March 18, 2005
374 Case No. D2000-1713 ; http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-
1713.html

220
domain names, the same would result in confusion and users are likely to assume
some nexus, affiliation or endorsement by the complainant with such websites. The
WIPO Arbitration Panel allowed the complaint and directed for transfer of the listed
domain names in favour of the Complainant.

Similarly, in another case filed by Tata, the defendant sent out mass emails
posing as an institution fighting against cancer with the endorsement of Tata Sons
/WG¤ LWV &KDLUPDQ 5DWDQ 7DWD DQG LWV GRPDLQ QDPH µWDWDFRP¶ 7KH GHIHQGDQW KDG

been sending out emails requesting donations for three years before Tata found out
about his activities. Tata, contended that it was in no way associated with the
GHIHQGDQW- QRU GLG LW HQGRUVH WKH FRQWHQWV RI WKH GHIHQGDQW¶V HPDLOV ,W IXUWKHU

contended that the defendant had made multiple misrepresentations by putting the
email into wide circulation, thereby sending out a false message which would be
understood by a significant number of recipients as an endorsement, recommendation
or approval by the plaintiff of the defenGDQW¶VDFWLYLWLHV7KHFRXUW
DJUHHG ZLWK 7DWD¶V FRQWHQWLRQV DQG UHVWUDLQHG WKH GHIHQGDQW IURP FLUFXODWLQJ DQ\

misleading material bearing the endorsement of Tata, the name of its chairman or its
375
domain name .

376
In Jaitley v. Network Solutions Private Limited, Arun Jaitley was
successful in filing a complaint before the WIPO against misuse and transfer of
domain name using his personal name, <www.arunjaitley.com> A case was also
filed before the Delhi High Court, where the Court went to the extent of permanently
restraining the defendants from using, promoting, advertisement or retaining or
parting with the said domain name namely arunjaitley.com and further restraining
them from adopting, using the mark, name in any of the extensions of the domain
377
name in cyberspace wherein the name Arun Jaitley forms one of the feature . The
Delhi court went far ahead in directing the necessary governing body under the
ICANN rules to block this domain name and immediately transfer this domain name
to the complainant and requisite charges and formalities. But whether

375 Tata Sons Ltd v. Chak; ([CS(OS) No 392/2004)

376 [181 (2011) DLT 716]
377 Arun Jaitley v. Network Solutions Private Limited & Others; CS(OS) 1745/2009

221
ICANN will be bound by the court order to block the domain name is something
which remains unaddressed.

378
In Barkha Dutt v. Easyticket Kapavarapu Vas the domain name
³%DUNKD'XWWFRP´ZDVUHJLVWHUHGE\0U9DV.DSDYDUDSX7KH&RPSODLQDQW¤%DUNKD

Dutt, who works with the NDTV News Channel as Group Editor and was an
anchor/host for various PrimeTime shows filed a complaint before the WIPO
challenging the domain name <barkhadutt.com> and alleging that her name was
UHJLVWHUHG LQ µEDG IDLWK¶ 7KH &RPSODLQDQW DVVHUWV WKDW GXH WR WKH IDPH DVVRFLDWHG

with her name, she enjoys the status of a Celebrity, and it is well-known that
celebrities have the right to restrain third parties from exploiting their name and
fame and also that the use of her name causes deception and confusion to users. The
5HVSRQGHQW FRQWHVWHG VWDWLQJ WKDW WKH ZRUGV ³%DUNKD´ DQG
³'XWW´ DUH 6DQVNULW ZRUG« WKH OLWHUDO GLFWLRQDU\ PHDQLQJ RI
WKH FRPSRVLWH WHUP ³%DUNKDGXWW´ LV ³DGDSWLRQRIUDLQOLIHJLYLQJ´

The Respondent further claimed that he had registered the disputed domain
name two years ago with the intention of developing it into a fan site or blog
dedicated to rains and rain harvesting. WIPO, the international agency governing
internet domains, observed that an unauthorized use of a famous person's name is
not a bonafide use and if such name is used to lure users, it does not confer rights or
legitimate interests on the infringer and it has been further held that the right to
commercially use or exploit one's own name, vests with the person who has worked
to create the fame and can lawfully restrict any other third party from exploiting that
fame for commercial purposes. And as all the elements were held to be present in
the said matter, the WIPO Panel ordered that the domain name <barkhadutt.com> be
transferred to the Complainant.

In all the cases, despite absence of a specific statute, the ICANN had
recognised the personality rights of Celebrity, provided, the Celebrity was capable of
proving the criteria laid down by UDNDR Policy. But the agony of going

378 Case No. D2009-1247, WIPO

222
through the procedures is cumbersome and till the date the domain name gets
transferred, much damage had been caused to the Celebrity.

Further, another important disadvantage of resolving disputes through

UDNDR Policy is that unlike courts which grant a blanket and perpetual relief to the
complainant not to use the name or similar trade name in any of its goods or
services, such exhaustive remedy is not available to complainant, who files the
FRPSODLQW EHIRUH WKH :,32 7KH :,32¶V UROH ZLWK UHVSHFW WR GRPDLQ QDPH

disputes is limited to reviewing the issue of rightful ownership of the disputed

domain names. In fact, Paragraph 4(i) of the UDNDR Policy expressly states that the
remedies available to a complainant pursuant to any proceedings before the WIPO
panel shall be limited to requiring the cancellation of the domain name in question,
or the transfer of the domain name registration to that of the complainant.

6.2.4 Personal Domain Name Dispute ± A Legal Necessity

A purely expressive website, even in the <name.com> space, should perhaps be

protected where there is no unfair or unauthorised commercial gain being made
IURPVRPHRQHHOVH¶VSHUVRQD7KXV, a Celebrity should be entitled to some
control to the <name.com> space which is likely the most closely associated with the idea
RIWKH&HOHEULW\¶VDXWKRULVHGRQOLQHSHUVRQD,WFRXOGQRWEHGHQLHGWKDWDSHUVRQDOLW\

right based framework for personal domain name disputes that allows unauthorised
expressive uses of <name.com> names, while prohibiting unauthorised commercial
uses, might achieve a better theoretical focus than the existing UDNDR Policy. A
PDNDR Policy could also remove the requirement of the complainant to establish
trademark rights in his/her personal name, or to establish cybersquatting as opposed
to other kinds of commercial profit motives by the registrant. It is also needless to
say that greater protection would be afforded to both the personhood and proprietary
DVSHFWVRIDQLQGLYLGXDO¶VSHUVRQD

223
 It is needless to state from the above cases that WIPO has been an effective
tool in resolving disputes concerning personal names, especially when it comes to
Celebrities. In most of the cases, WIPO has ordered for transfer of domain names in
favour of the Celebrity. But the path to prove is quite cumbersome, as the
complainant needs to prove that the respondent has neither right nor legitimate
interest in the domain name and that same was registered in bad faith. The
complainant will be entitled to remedy upon strict proof of the above. But if there is
a scenario where the respondent also derives his name as that of the Celebrity and
the domain name was registered in good faith, there is no probability of success to
the complainant. Besides, the relief granted is restricted and not preventive against
future uses of domain name of the personality. This loophole will provide ample
cause of action, in respect of the same personality and also against the same
respondent. For example, instead of using <name.com>, the respondent in another
case may use <name.in> or <name.org> and so on.

Now considering the need of a PDNDR Policy which would be in

accordance with the UDNDR Policy but for the prime focus on personal domain
name disputes, it is well suggested that instead of a separate enactment, the existing
UDNDR Policy provisions could be subject to amendments to include disputes on
personal names. A separate chapter on what constitutes personal domain name
infringement should be clearly drafted.

&RPPHUFLDOSXUSRVHVKRXOGEHOLQNHGWRµWKHXVHRIDQDPHRIDSHUVRQDOLW\

(i) on or in connection with a product, merchandise, goods, services or commercial

activities, or (ii) for advertising or soliciting purchase of products, merchandise,
goods, services or for promoting commercial activities or (iii) for the purpose of
IXQG UDLVLQJ $Q\ RI WKH DERYH DVSHFWV ZKLFK OLQNV WKH SHUVRQDOLW\¶V GRPDLQ QDPH

should be considered for the purpose of dispute. There needs to be a mechanism

specifically and appropriately tailored for personal domain name disputes which
would be a simple and easy task for ICANN in practice. The power of relief granted
to the complainant should also be extended taking into account repetitive cause of
action by the same personality.

224
6.3 STATUTES PROTECTION FICTIONAL CHARACTERS

In India, the concept of Character Merchandising could be said as being

prevalent before the Disney era. Indians have been selling the statutes and images of
Gods and Goddesses for many years and had been marketing the goods using the
names and images of the deities, exploiting the commercial value of religion. Hence,
the need for protection against the unauthorised commercial exploitation of the
characters or image of a Celebrity was not felt.

As characters gain phenomenal popularity, the trademark owner, who is the

inventor of such character, exploits the character by way of licensing the character
with its name, appearance, etc., The exploitation of the characters leads to
engrossing the image of the character in costumes, toys, utility products (ranging
from stationery goods to consumer durables such as mugs, plates, back packs,)
clothing, shoes, food products, etc., Some examples from India include the use of
images of Mickey and Minnie on Cadbury chocolates, the images of Spiderman and
Superman on apparels, school bags and so on.

6.3.1 Protection of Fictional and Cartoon Character under Trademark Law

& Passing Off

The legal protection of a fictional character is generally governed by name,

appearance and physical attributes and personality traits i.e. the characterisation. While
traders agree on taking up license by paying royalty to the trademark owner for using
the character in its goods, others engross the image of the character in their goods
unlawfully and misrepresent to the consumers and also deprive the trademark owner of
his/her legitimate rights. This leads to Passing Off action (if the character is
unregistered) or infringement claim (if the character is registered) under trademark law.
Hence protection of the character assumes significance under trademark law. The
complexity of legal protection afforded to cartoon and fictional characters under
Intellectual Property law and ownership of the rights that rest in such characters is to be
examined under the Indian Copyright and the Trademark law. However, this

225
Research analyses only in regard to the protection afforded under the Trademark
Act, 1999.

Under the provisions of the Indian trade mark law the name of a character may
be registered as a word mark and the images may be protected by registering them as
trademark devices and thus the commercial value of the same may be protected
exclusively. Under the Trademarks Act, 1999, a ³WU GHP UN´ is defined as
³ P UN F S OH RI HLQJ UHSUHVHQWHG JU SKLF OO\ QG
ZKLFK LV F S OH RI
distinguishing the goods or services of one person from those of others and may
379
LQFOXGHVK SHRIJRRGV¤WKHLUS FN JLQJ QGFRP LQ WLRQRIFRORXUV´ . The term

µPDUN¶ LV defined in Sec 2 (1) (m) of the Trademarks Act as to include ³ GHYLFH¤
brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods,
S FN JLQJRUFRP LQ WLRQRIFRORXUVRU Q\FRP LQ WLRQWKHUHRI´380

As Graphical representation is a sine qua non for a trade mark registration in

India, the same is defined in the Trade Mark Rules, 2002, as ³UHSUHVHQW WLRQ
381 th
RI trade mark for goods or services in paper form´ . In .HUOH\¶Vµ Edition, EDM,
SDUD§¤WKHZRUGV³FDSDEOHRIGLVWLQJXLVKLQJ´PXVWEHFRQVWUXHGE\UHIHUHQFHWR

the essential function of a trade mark. In this connection, this is what European
382
Courts of Justice held :

³«WR JX U QWHH WKH LGHQWLW\ RI WKH RULJLQ RI WKH P UNHG SURGXFW WR WKH

consumer or end-user by enabling him, without any possibility of confusion, to

distinguish the product or service from others which have another origin, and for
the trade mark to be able to fulfil its essential role in the system of undistorted
competition which the Treaty seeks to establish, it must offer a guarantee that all the
goods or services bearing it have originated under the control of a single
XQGHUW NLQJZKLFKLVUHVSRQVL OHIRUWKHLUTX OLW\«´

379 Sec 2 (1) (zb), Trademarks Act, 1999

380 Section 2 (1) (m) Trade Marks Act, 1999
381 Rule 2 (1) (k)
382 Phillips-Van Heusen Corp v OHIM; (T-292/01) [2003] ECRII 4335 ;
http://ipindia.nic.in/tmr_new/TMR_Manual/DraftManual_TMR_23January2009.pdf; Assessed on
04.12.12

226
 The distinctiveness of a mark essentially means that the mark must be such
383
that it identifies a product from a particular undertaking.

Trademark law can be used to protect distinct names, identifiable traits, sounds
phrases associated with the character etc., of a fictional character, if the same are capable of
being represented graphically and distinguishing goods and / or services being provided.
7KXV¤DVORQJDVWKHPDUNFDQEHµJUDSKLFDOO\UHSUHVHQWHG¶¤ even 3-
384
dimensional marks and sound marks can be registered. But to what extent it is practically
feasible, is for the Registries to answer.

The owner of a trademark, has the exclusive rights over the same, including
the right to commercially exploit it and to further license the trademark as a means
of commercial exploitation. As per Section 29 of the Act, a registered owner of a
trademark can prevent others from using an identical or deceptively similar mark
without permission on their goods or services for sale, offering or advertisement and
can also prevent import of goods with such marks in India.

Where a fictional character has been granted such trademark protection and
acquired such goodwill and the character has come to be identifiable in the minds of
the public and be associated with that particular character itself, the owner of the
trademark has the exclusive right to benefit from the use of the character on the
goods and services. Further, any claim of infringement must show that use of such
fictional character or its protected elements, if not restrained, would cause a
likelihood of confusion, thereby diluting the commercial viability, reputation or
brand equity of the trademark in question.

The trademark owner has the exclusive ownership rights over the same,
including the right to commercially exploit it and to further license the trademark as
a means of commercial exploitation, when the character functions as a form of
identification of a product or service and commands public acceptance and
recognition. Trademark laws will not permit a graphic character to be protected

383 Nestle SA T.M. Application; 2004 FSR 16, 27

384 Ty Nant Spring Water Application (1999) RPC 392

227
unless such character is associated with a product or a service and such product or
service uses the character as a mark.

If the fictional and cartoon character deserves to be fitting into the definition
RIµWUDGHPDUN¶¤DQGZKHUHVXFKFKDUDFWHUKDVDFTXLUHGJRRGZLOO¤ZKHUHWKHFKDUDFWHU

has come to be identifiable in the minds of the public and is being associated with
that particular character itself, the character will be granted trademark protection and
the owner of the trademark has the exclusive right to benefit from the use of the
character on the goods and services.

For a fictional or cartoon character to be granted trademark protection, it is

385
essential that the character acquires secondary meaning and distinctiveness . If
such character does not satisfy the criteria for protection, the same would not be
registered under trademark law. However, the rights under the common law of
Passing Off would always be available to the owner, where the owner is capable of
proving likelihood of confusion thereby diluting the commercial viability, reputation
and brand equity of the trademark in question and resulting in injury to the owner.

Apart from the above, identity of the mark provides for quality control
provisions to maintain market goodwill. Section 50(1)(d) provides for removal of a
registered user of a trademark where such registered user does not maintain the
requisite quality of goods produced under a trademark.

Sections 102 and 103 are the penal provisions of the said Act states that,
where falsifying a registered trademark or falsely applying a registered trademark on
goods and services without approval of the owner is an offence and is punishable
with imprisonment and penalties. Where a person wishes to use a registered
trademark in relation to his goods or services, he has to seek permission from the
registered proprietor of the trademark or become a permissive user of the mark
under the Act.

385 Legal Era, February 2014, Fictional Characters & Copyright law

228
6.3.2 Limitations on Protection

But the present trademark law does not provide an overall protection of the
image rights of the character. Though the registered names of the characters may be
sought to be protected, the whole process is complex. Indian courts have upheld the
Passing Off rights granted to the characters, when a likelihood of confusion can be
determinate, especially when such trademark infringement is with respect to the use
RIILFWLRQDOFKDUDFWHURQJRRGVVHUYLFHV:KLOHGLVFXVVLQJWKHXVHRIµ+DUL3XWWDU¶DV

the name of cinematographic film vis-à-vis, the protection granted to the character
µ+DUU\ 3RWWHU¶¤ WKH FRXUW KROGLQJ RXW WKDW QR likelihood of confusion existed as
it

VWDWHGWKDWµeven after assuming there is any structural or phonetic similarity in the

ZRUGV³+DUU\3RWWHU´DQG³+DUL3XWWDU´¤ZKDWKDVWREHERUQHLQPLQGLVWKDW+DUU\

Potter films are targeted to meet the entertainment needs of an elite and exclusive
audience who is able to discern the difference between a film based on a Harry
Potter book on the one hand and a film which is a Punjabi comedy on the other, the
chief protagonist of which is Hariprasad Dhoonda.

It is not a case of consumer goods or products, which stands on an entirely

different footing. Necessarily, the yardstick must also differ, bearing in mind the fact
that a consumer product such as a soap or even a pharmaceutical product may be
purchased by an unwary purchaser or even an illiterate one, but the possibility of an
unlettered audience viewing a Harry Potter movie are remote, to say the least. To put
it differently, an illiterate or semi-literate movie viewer, in case he ventures to see a
film by the name Hari Puttar would never be able to relate the same with a Harry
Potter film or book. Conversely, an educated person who has poured over or even
browsed through a book on Harry Potter or viewed a Harry Potter film, is not likely
386
to be misled .

Protection of trademark rights is not really adequate, as the trademark rights

prohibit the unauthorised usage of a trademark, a trademark right holder cannot
prohibit the unauthorised use of a title or the name of a character by free riders

386 Warner Bros Entertainment Inc. and Anr. v. Harinkder Kohli and Ors., 2008(38)PTC185(Del)

229
XQOHVV LW LV XVHG µDV D WUDGHPDUN¶ )RU H[DPSOH¤ LI D FKDUDFWHU LV UHJLVWHUHG DV D

WUDGHPDUN LQ FRQQHFWLRQ ZLWK WKH JRRGV µVKLUW¶¤ FDQ WKH WUDGHPDUN ULJKW KROGHU

prohibit free riders from selling shirts with the picture of the same character shown
at a large size on the front side? There may be difficulty in this argument, because
the character shown at a large size on the front side of shirts is used as a design of
WKHVKLUWV¤EXWQRWWRLQGLFDWHWKHVRXUFHRIWKHJRRGVµVKLUWV¶7KHUHIRUH¤LWPD\QRW

387
be thought to be used µDV D WUDGHPDUN¶ . This is how many traders go
scot free without being punished for infringement or Passing Off action.

In addition, a trademark registration is cancelled if the registered trademark

is not used, which is a significant problem from the perspective of merchandising
rights. Under Section 47 (Removal from register and imposition of limitations on
ground of non-use), a registered trade mark may be taken off the register in respect
of the goods or services in respect of which it is registered on the grounds that (a)
the trade mark was registered without any bona fide intention on the part of the
applicant and (b) that the mark had not been used up to three months prior to the
application or if the mark was not used on the goods for more than five years
starting the three months prior to the application. For example, even if a free rider is
using without permission the name of the character for which the trademark is
registered for stationery product, the free rider can cancel the trademark registration
LQ FRQQHFWLRQ ZLWK WKH JRRGV µVWDWLRQHU\ SURGXFWV¶ XSRQ UHTXHVW LI WKH WUDGHPDrk

right holder (or its licensee) has not used the character in connection with goods
µVWDWLRQHU\ SURGXFWV¶ IRU ILYH \HDUV RU PRUH 2QFH WKH WUDGHPDUN LV FDQFHOOHG¤

needless to say, no infringement of trademark rights will be constituted.

Indian courts KDYHLQWHUSUHWHGWKDWµXVH¶GRHVQRWQHFHVVDULO\PHDQDQGLPSO\

actual physical sale; even mere advertisement without having even the existence of

WKHJRRGVFDQEHVDLGWREHDµXVH¶RIWKHPDUN+RZHYHU¤Whe determination whether a mark has been

abandoned is a question of fact which requires not only showing of non-use of the mark but also proof of intent not to

resume use of the mark. In such cases, onus is on the trademark owner to rebut such presumptions.

387 Osaka District Court Decision, February 1976, Collection of Court Decisions 828.69

230
 Besides the above section, where the earlier trademark owner has acquiesced
for a continuous period of five years in the use of a registered trade mark, being
aware of that use, he shall no longer be entitled on the basis of that earlier trade
mark (a) to apply for a declaration that the registration of the later trade mark is
invalid, or (b) to oppose the use of the later trade mark in relation to the goods or
services in relation to which it has been so used, unless the registration of the latter
trade mark was not applied in good faith. This is captured in section 33 of the Act.
But most trademark owners are not aware of their character marks being affixed on
the local goods and sold in the market. Failure to take up action, will result in losing
their rights.

6.3.3 View of the Indian Judiciary ± An Analysis

In India, Celebrities and commercial partners can obtain some protection

from trademark law but such protection may be limited in scope. Courts in India
have accorded protection to film titles, characters and names under trademark laws.
The first case that dealt with character merchandising was in Star India Private
388
Limited v. Leo Burnett India (Pvt) Ltd . This case discussed thoroughly the
essentials of Character Merchandising in India where the Bombay High Court
explained the position thus,

µ«&K U FWHU 0HUFK QGLVLQJ LQYROYHV WKH H[SORLW WLRQ RI ILFWLRQ O

characters or the fame of Celebrities by licensing such famous fictional characters

to others. The fictional characters are generally drawings in which copyright
subsists, etc., cartoon and celebrities are living beings who are otherwise very
famous in any particular filed, example, film stars, sportsmen. It is necessary for
Character Merchandising that the characters to be merchandised must have gained
some public recognition that is, achieved a form of independent life and public
recognition for itself independently of the original product or independently or the
milieu/area in which it appears. Only then can such character be moved into the
area of Character Merchandising. This presumes that the character has

388 2010 (43) PTC 616

231
 389
Ltd v. M/s Ishan Apparels and others

independent of the goods or services to which it is attached or the field/area in

ZKLFKLWRULJLQ OO\ SSH UVR W LQHGSX OLFUHFRJQLWLRQ¶

The Bombay High Court has clearly explained the concept of Character
Merchandising as that involving fictional characters and fame Celebrities. Though
copyright subsists in the form of music, cinematography, literature, etc., the
trademarks involving around these characters are in the form of images / pictures
engrossed on the goods sold. $V VWDWHG E\ WKH FRXUW¤ µSXEOLF
UHFRJQLWLRQ¶ LV DQ important aspect revolving around Character
Merchandising and only those Characters / Celebrities who have gained / acquired
reputation among the public are being exploited.

A similar view was expressed by the Delhi High Court in Chorion Rights

where the famous cartoon character

µ12''<¶ ZDV XVHG RQ GLIIHUHQW DUWLFOHV ZLWKRXW DQ\ DXWKRULVDWLRQV 7KH SODLQWLII

claimed to be the owner of the worldwide trademark rights LQµ12''<¶¤LQFOXGLQJ

the NODDY name and character image and expanded its use of the NODDY word and
image mark through a range of merchandise in India and filed suit against the defendant
who was manufacturing, selling and marketing cheap and low quality readymade
children' s apparel under the identical trade name NODDY in Delhi and National Capital
Region. Though the court held that the case at hand is clearly one involving Character
Merchandising, however, plaintiff's claim for trade mark was with effect from 1997
while defendants were users since 1995. The plaintiff had established its huge sales in
India and abroad for the period during 2000 and 2008, however the plaintiff failed to
establish user of the mark prior to 1995, as the SODLQWLII¶VZHUHQRt the prior
registered owner of the trademark in India.

6.3.4 A Preview of ,QGLDQ&DVHVRQµ'LVQH\¶&KDUDFWHU

Under trademark law, a mark does not protect the rights in the fictional
character, but only their embodiment in a distinctive mark, usually in relation to the

389 MANU/DE/1071/2010

232
goods or services for which the mark is registered. Disney Enterprises Inc., a
corporation organized and existing under the laws of the State of Delaware in the US
KDVILOHGDVZHOOREWDLQHGWUDGHPDUNUHJLVWUDWLRQVIRUWKHWUDGHPDUNµ',61(<¶DQG

µ'LVQH\¶GHYLVHPDUNVLQPRUHWKDQFRXQWULHVLQWKHZRUOG,QGLDQ-XGLFLDU\KDV DOZD\

VIDYRXUHG'LVQH\¶LUUHVSHFWLYHRIWKHPDUNµSHQGLQJ¶RUµUHJLVWHUHG¶GXHWRLWV

well known mark stature.

To examine a few case, in a Disney case before the Delhi High Court, the
GHIHQGDQW KDG DGRSWHG WKH WUDGHPDUN µ',61(<¶ DQG µ'LVQH\¶ FKDUDFWHUV ZLWK D

mala fide intent to pass off their goods as those of the plaintiff. Court ordered in
favour of the plaintiff and held that the plaintiff had full right to their exclusive use
and to restrain use of any identical or deceptively similar marks by unauthorized
SHUVRQV DQG WKH SODLQWLII¶V WUDGHPDUNV DUH HQWLWOHG WR SURWHFWLRQ DFURVV DOO FODVVHV¤

even for classes for which it holds no registration or for goods or services it has yet
to enter. Plaintiff was also entitled to compensatory and punitive damages, besides
390
injunction .

In another notable case, Disney Enterprises Inc., v. Gurmeet Singh &

391
Ors ¤ WKH SODLQWLII¶V ZKR ZHUH HQJDJHG LQ WKH EXVLQHVV RI
PHUFKDQGLVLng and licensing of distinctive elements of famous fanciful characters like Mickey
Mouse, Minnie Mouse, Donald Duck, Daisy Duck, Goofy, Pluto and Winnie the Pooh and Tiger as
well as the characters from 'DISNEY' trademark, sued the defendant for infringemHQW RI WKHLU
WUDGHPDUN µ'LVQH\¶ DQG WKH FRXUW FRQFOXGHG that the
SODLQWLII¶V WUDGHPDU µ:$/7 ',61(<¶ DQG'LVQH\ FKDUDFWHUV KDYH DFTXLUHG

tremendous reputation and goodwill throughout world including in India and

KDYH EHHQ KHOG WR EH µZHOO QRZQ PDU V¶ and RSLQHG WKDW
WKW SODLQWLII¶V trademarks are entitled to be protected across all classes, even
for classes for which it holds registration or for goods or services, it has yet to enter.

In another case, the defendants were engaged in selling counterfeit party hats
DQGRWKHUSDUW\GHFRUDWLRQSURGXFWVEHDULQJWKH',61(<¶FKDUDFWHUVDQGSDVVLQJRII

390 Disney Enterprises Inc., v. Rajesh Bhartia & Ors; MANU/DE/0454/2013

391 MANU/DE/6834/2011

233
their goods as that of the plaintiff, the Court while stating that the plaintiffs are the
proprietor of the trademark in question and the said trademarks have been infringed
by the defendants, awarded damages to the tune of Rs. 2,00,000/- against the
392
defendants .

TKHSODLQWLII¤ZKRZDVHQJDJHGLQWKHOLFHQVLQJRILWVWUDGHPDUNµ',61(<
¶

filed suit against the defendant seeking for unauthorized use of the trademark
FKDUDFWHU µ',61(<¶ LQ LWV SDSHU DUWLFOHV¤ SULQWHG PDWHULDO¤ WHDFKLQJ
PDWHULDO¤

stationery etc., in the course of their business. Injunction was ordered in favour of
the plaintiff besides appointment of a local commissioner to visit the premises of the
393
defendants and seize the infringing products at the premises of the defendants .

The Delhi High Court in another case held that the plaintiff had exclusive
right to use, authorize usage or issue licenses related to trademarks and copyrights.
As the defendants have unauthorizedly applied the trademarks of the plaintiff
characters on its products, with mala fide intent to ass of their goods as those of the

SODLQWLII¶V DQG WR FDVK XSRQ JRRGZLOO DQG UHSXWDWLRQ

394
HQMR\HG E\ WKH SODLQWLII¤ WKH court ordered in favour of the plaintiff .

In another similar case of Passing Off and infringement in Disney

395
Enterprises Inc. & Anr v. Balraj Muttneja & Ors., the characters of the
plaintiffs were affixed by defendants on their goods without permission or consent
of the plaintiff and injunction was granted.

Thus in cases of Passing Off / infringement using fictional cartoon character

in merchandising, there is a wrongful gain caused to the infringers and loss to the
creator of the character, as he is deprived of his royalty on creativity. However, if
the fictional cartoon character has gained prominent significance like that of Disney,
imitation of fictional characters on goods and services is well recognised by the
courts (as seen in the above cases). However, cases of Passing Off are rarely getting
392 Disney Enterprises Inc. & Anr v. Harakchand Keniya & Ors.; MANU/DE/4123/2011
393 Disney Enterprises Inc. & Anr v. Gurucharan Batra and Ors.; , MANU/DE/4122/2011
394 Disney Enterprises Inc. & Anr v. Santosh Kumar & Anr; MANU/DE/1382/2014
395 MANU/DE/0547/2014

234
reported (except from reputed corporate) in which case it becomes difficult to crack
the offence and punish the offenders. Proper mechanisms needs to be made by the
government to prevent Passing Off of characters on goods and stringent action /
enforcement is the need of the hour, where suggestions have been made below.

6.3.5 Fictional Characters that have fallen into Public Domain ± Effect of
Trademark Law

7KH H[SUHVVLRQ ³3XEOLF GRPDLQ´ LV JHQHUDOO\ XVHG ZLWK UHIHUHQFH

WR Whe works that belong to everyone and are available for public use. The concept stems from

Copyright law. It identifies those creative works that are not protected by copyright or the protection term

gets expired and thus may be used freely by the public. SLPLODUO\

¤LQWUDGHPDUNVODZ¤ZKHQWKHPDUNEHFRPHVµJHQHULF¶IDOOLQJLQWR the public

domain, everyone gains access to it. Besides, the Registrar forbears from registering marks which are

already in the public domain, as no exclusive protection can be granted.

The main advantage of protection under trademark regime is a potentially perpetual

protection (unlike in the case of Copyright). Courts have approved the use of mark-based
laws to protect characters in the public domain. Unlike Copyright laws which have a fixed
term (sixty years after the death of the creator), trademark registration protects the fictional
characters from falling into public domain perpetually. Trademark rights can go on virtually
forever as long as the use qualifies, or the mark is QRW µDEDQGRQHG¶ RU KDV QRW
EHFRPH µJHQHULF¶ DQG WKH DSSURSULDWH renewals are made periodically.
That is how Disney characters have survived
VXUSDVVLQJ WKHLU FUHDWRU¶V FRS\ULJKW WHQXUH RU IDOOLQJ LQWR SXEOLF GRPDLQ ,I DQ\

fictional character falls into public domain, it is the indicative functions which
doctrinally are still subject to protection. For such characters, the trademark
applicant has to show that, through extensive use and marketing and other evidence,
that the public identifies that public domain character with a particular source. In
effect, fictional character becomes, like any other trademark logo or design, subject
to common law protections and restrictions that apply to non-character marks.

235
 7R XQGHUVWDQG EHWWHU¤ OHW XV H[DPLQH ZKDW µ*HQHUDOLW\¶ PHDQV XQGHU WKH

context of trademark law. Trademarks which were once valid will become generic
through misuse. This typically occurs when the mark is not used to exclusively
identify the products or services of a particular business or where a mark falls into
disuse entirely, or where the trademark owner does not take swift action in enforcing
396
his rights through actions of Passing Off or trademeark infringement.

Section 25 (Duration): The registration of a trademark shall be for a period of

ten years, but may be renewed from time to time in accordance with the provisions
of this section.

Section 47 (Removal from register and imposition of limitations on ground

of non-use): A registered trade mark may be taken off the register in respect of the
goods or services in respect of which it is registered on the grounds that (a) the trade
mark was registered without any bona fide intention on the part of the applicant and
(b) that the mark had not been used up to three months prior to the application or if
the mark was not used on the goods for more than five years starting the three
397
months prior to the application. In J N Nicholas Ltd v. Rose and Thistle , Indian
FRXUWV KDYH LQWHUSUHWHG WKDW µXVH¶ GRHV QRW QHFHVVDULO\ PHDQ DQG LPSO\ DFWXDO

physical sale; even mere advertisement without having even the existence of the
goods can be said WREHDµXVH¶RIWKHPDUN

The determination whether a mark has been abandoned is a question of fact

which requires not only showing of non-use of the mark but also proof of intent not
to resume use of the mark. In such cases, onus is on the trademark owner to rebut
such presumptions.

Section 33 (Effect of Acquiescence): Where the earlier trademark owner has

acquiesced for a continuous period of five years in the use of a registered trade
mark, being aware of that use, he shall no longer be entitled on the basis of that
earlier trade mark (a) to apply for a declaration that the registration of the later trade

396 Generic Trademark; http://en.wikipedia.org/wiki/Generic_trademark;

397 1993 (II) CHN 395 (Cal)

236
mark is invalid, or (b) to oppose the use of the later trade mark in relation to the
goods or services in relation to which it has been so used, unless the registration of
the later trade mark was not applied in good faith.

While Section 33 waives the right of the owner to legally or oppose on the
use of his trademark by another having remained silent for a continuous period of
five years, under section 47, the owner uses his right over the mark if he fails to use
the said mark for continuous period of five years. Both the sections lead to the
owner losing the trademark for his own act or omission.

7KH H[SUHVVLRQ ³3XEOLF GRPDLQ´ LV JHQHUDOO\ used with

reference to the works that belong to everyone and are available for public use. The concept
comes from copyright law. It identifies those creative works that are not protected by
copyright or the protection term gets expired and thus may be used freely by the
SXEOLF6LPLODUO\¤LQWUDGHPDUNVODZ¤ZKHQWKHPDUNEHFRPHVµJHQHULF¶IDOOLQJLQWR

the public domain, everyone gains access to it. but in certain cases, the courts have
upheld the character despite falling into public domain owing to the recognition of
the character among the public.

On analyzing the aforesaid sections of the Trademarks Act, 1999, the

legislature had while drafting the enactment kept all checks and balances in place to
prevent infringement cases. For example, continuous non-use of the mark for a
period of more than five years is subject to removal from the Register. Also, if the
mark is not renewed within the stipulated period, it is subject to cancelled, and so
on. These are few instances where the marks get into public domain. In India, as
long as the mark is distinctive, it could remain in the Registry. Efforts have to be
taken up by the trademark owners to ensure that their mark does not fall into the
public domain.

The courts have also in the interest of the owners, ensured that their marks do
not fall into public domain, unless excepted in rare circumstances. In the
%RVWRQ¶V FDVH¤ the court upheld mark-based protection against
unauthorised,

237
expressive uses of graphic trademarks. Plaintiffs brought unfair competition, trademark
infringement and section 43(a) infringement actions against a manufacturer of emblems
that replicated their marks. Though the district court concluded that such protection
would create a copyright monopoly for non copyrighted designs, but the circuit court
reasoned otherwise and stated, unlike mark-based laws, copyright provided that works
would eventually enter the public domain and held, µWKH WU GHP UN O ZV UH
VHG RQ WKH QHHGHG SURWHFWLRQ RI WKH public and business interests
and there is no reason why trademarks should ever
S VVLQWRWKHSX OLFGRP LQ \WKHPHUHS VV JHRIWLPH¶.

The court further reasoned that after the expiration of the copyright, the
creation becomes part of the public domain, which is otherwise in the case of
trademark laws. In the case of a trademark, however the process is reversed. The
individual selects a word or design that might otherwise be in the public domain to
represent his business or product. If that word or design comes to symbolise his
product or business in the public mind, the individual acquires a property right in
the mark. The acquisition of such a right through use represents the passage of a
word or design out of the public domain in the protective ambits of trademark
398
OZ¶ .

Similar view was expressed in Frederick Warne & Co v. Book Sales

399
Inc , the Judge Sofaer, in Southern District of New York, concluded that even
though the contents of the century-old Peter Rabbit books had long since passed into
the public domain, the cover illustration, might still be protected trademarks,
identified with the publisher and its goodwill and reputation. Thus, a public domain
status does not strip a fictional character of its ability to function as an indicator of
source.

398
%RVWRQ3URIHVVLRQDO+RFNH\$VV¶QY'DOODV&DS (PEOHP0IJ- 510 F.2d 1004
(5th Cir.), cer. denied, 423 U.S. 868 (1975)
399 481 F Supp 1191 (SDNY 1979)

238
 400
In the famous tale for children entLWOHG µ3LQRFFKLR¶ created by
Collodi (Carlo Lorenzini), in 1940, Walt Disney adapted the work of Collodi and
created cartoon movie, besides making trademark registrations in France for the names
and images of those characters, covering inter alia, goods in Class 16 (magazines). In

µ¤:DOW'LVQH\LVVXHGDPDJD]LQHHQWLWOHGµ3LQRFFKLR0DJD]LQH¶DQGODWHUIRXQG

RXWWKDWDSXEOLVKLQJFRPSDQ\ZDVDOUHDG\SXEOLVKLQJPDJD]LQHVHQWLWOHGµ3LQRFFKLR

0DJD]LQH¶ DQG µ3LQRFFKLR 3RFKH¶ %HIRUH WKH FRXUW¤ WKH

SXEOLVKLQg company claimed that the trademark registration of Walt Disney
were void because the copyright of Collodi had fallen into the public domain.

The court held, anybody could reproduce the literary work of Collodi for re
publication or even for an adaptation, but that the adaptation should follow the
essential and characteristic features of the original work and not those resulting from
the cartoon adaptation made by Walt Disney. But in certain other cases, the public
domain characters like Little Miss Muffet, Little Red Riding Hood and similar
characters were denied trademark protection, because the public did not identify
those characters with a particular source but instead merely as literary characters.

Thus, character protection under trademark law can exist concurrently with
such protection under copyright law or can exist after the expiration of rights under
the copyright law, since an extensive protection is granted to trademarks, as long as
the mark is being put to use by the registered holder and renewed periodically. Also,
unlike copyright, trademarks do not have an expiry date and fall into the public
domain.

6.4 INTERNATIONAL CONVENTIONS PROTECTING PRIVACY

RIGHTS

7KH 5LJKW WR SURWHFW RQH¶V GLJQLW\ LV WKH IXQGDPHQWDO ULJKW WKDW DQ\

individual seeks for protection. This right includes the right to be protected from

400 Tribunal de grande instance de Lyon, March 23, 1981

239
intruding into the private life, and the right to exploit the name and fame acquired by
a person. Various international conventions have recognised the inherent value of
this right.

6.4.1 United Nations Charter

The United Nations is an international organisation with 193 signatories to it as Members. It

was found in the year 1945. The preamble to the UN charter states ³ZH WKH SHRSOHV RI WKH
8QLWHG 1DWLRQV GHWHUPLQHG «« 7R UHDffirm faith in the IXQGDPHQWDO
KXPDQ ULJKWV LQ WKH GLJQLW\ DQG ZRUWK RI WKH KXPDQ SHUVRQV «´

Article 13 (b) of the Charter postulates in promoting international cooperation and

assisting in the realisation of human rights and fundamental freedom. Similar
powers are entrusted to the Economic and Social Council of the United Nations.

6.4.2 Universal Declaration of Human Rights, 1948

The Universal Declaration of Human Rights is considered as a milestone in the history

of human rights. The preamble beings ZLWK³ZKHUHDVUHFRJQLWLRQRIWKH inherent
dignity and the equal and unalienable rights of all members of the human
IDPLO\ LV WKH IRXQGDWLRQ IUHHGRP MXVWLFH DQG 3HDFH LQ WKH ZRUG« WKLV GHFODUDWLRQ

shall strive to promote respect for these rights and freedoP´Article 12 states that
µ1RRQHVK OO HVX MHFWHGWR U LWU U\LQWHUIHUHQFHZLWKKLVSULY F\ ¤I PLO\
¤KRPH

or correspondence nor to attacks upon his honour and reputation. Everyone has the right to
the protection of the law against such interference oU WW FNV¶. The
µDUELWUDULQHVV¶LQWKLV$UWLFOH is intended to guarantee that even
interference provided by the law should be in accordance with the provisions, aims and
401
objectives of the covenant and in any event, reasonable in the practical circumstances .

This Article clearly stipulates an obligation upon the States to enact laws
which will protect against the invasion of privacy rights of individuals.

401 Article 17; adopted on 4 August 1988; para 8; http://www.law-democracy.org/wp-

content/uploads/2011/10/Charter-Commentary.pdf

240
6.4.3 International Covenant on Civil and Political Rights
In recognising Article 12 of the UDHR principles,Article 17 of

International Covenant on Civil and Political Rights states, µµ1R RQH VK OO H

subjected to arbitrary or unlawful interference with his privacy, family, home or
WW
FRUUHVSRQGHQFHQRUWR FNVXSRQKLVKRQRXU QGUHSXW WLRQ¶

6.4.4 European Convention of Human Rights

ECHR seeks to balance the privacy rights of an individual with the rights of
the media to publish personal information of individuals. Article 8 provides
emphasis on the following:

µ(YHU\RQHK VWKHULJKWWRUHVSHct the private and family life, his

home and his correspondence;

There shall be no interference by a public authority except such as is in

accordance with law and is necessary in a democratic society in the interests
of national security, public safety or the economic well being of the country,
for the protection of health or morals or for the protection of the rights and
IUHHGRPVRIRWKHUV¶

This convention affords maximum protection against invasion of privacy

rights of an individual, however subject to national interest and in the larger interest
of the public.

6.4.5 The Constitution of the United States of America

The First, Fourth and Fourteenth Amendments of the Bill of Rights

interpreted to include Right to Privacy from unwarranted search or seizure and due
process right for protecting right to privacy of person within family, marriage,
motherhood, procreation, etc.,

241
6.4.6 The UK Constitution

The Human Rights Act, 1998 incorporated the European Convention of

Human Rights in UK law & Data Protection Act, 1998 regulates receiving,
processing, retention etc., of personal data. However, there is no express Right to
Privacy Law in UK.

There are quite many conventions which recognise the Right to Privacy. In
all the conventions, the protection of human rights and dignity is of primary concern.
The UK Human Rights Act was drafted in accordance with the ECHR, which
provides ample protection in Article 8. It is in accordance with the conventions of
the human rights, each country has framed in its constitution the right to privacy.
The Indian Constitution has in its protection Article 19 and 21. However,
comparatively to the individual rights, the rights of the society at large matters more
and hence exceptions are provided in the said AUWLFOHV OLNH µH[cept
DFFRUGLQJWRWKHGXHSURFHVVRIODZ¶

242