Plaintiff moving the Court at the eleventh hour in IPR cases must face the consequences
Justice G.S. Patel, of the Bombay High Court refused to pass an interim injunction restraining Zee Entertainment from using the word "Plex" in its new pay-per-view channel. He added, "Where a plaintiff has had enough notice and yet chooses to move at the eleventh hour — and makes no allowance at all for any adjustment that may be required — the plaintiff must be prepared to face the consequences."
Plex, Inc. (Plaintiff) moved the Bombay High Court seeking restraint against the Zee Entertainment's (defendant) use of the word 'PLEX' in an online movie channel service which was to be launched on 2-10-2020. Zee has a number of media channels and services including internet, OTT, DTH, Satellite, cable, etc.
On 1 September, 2020, Zee announced its proposed launch about a month later of a 'cinema-to-home' pay-per-view service.
Plex, Inc claimed that it had adopted this mark in May, 2008 in the United States. Further, Plex obtained international trademark registrations in several jurisdictions, but not India. It however claims that it had its first registered user in India on 23 July, 2008. Plex also claimed that it had built up a user or subscriber base of 5,50,00 users.
The plaintiff contended that there is then an official release in print by Zee which speaks of the launch of 'Zee Plex' — two words — and said to be 'India's first Cinema2Home or C2H service on television and digital platforms'. The counsel for Plex stated that despite the two words being used disjunctively in the actual branding Zee seems to have combined the two words into a single unit 'ZEEPLEX'.
The Court stated that the plaintiff had an objection to the use of 'Plex' by Zee for any service and in any manner, whether it is combined with Zee as one word or is used in conjunction with Zee as two words. The question, before the Court was therefore, not about the use of Plex as the second of two words.
According to the Court, the question is whether the Plaintiff has been able to show any prima facie case in passing off and in order to show such a prima facie case, Plex must establish its reputation and must demonstrate that it has such a brand recognition and awareness amongst even Zee's consumers or digital consumers that such an association at least in India would readily be made.
Further, according to the Court, "Passing off" is an action for damages in the tort of deceit, that is to say, deception by Zee in duping or misleading consumers as to the provenance and leading them to believe that Zee has somehow tied up with PLEX.
The Court stated that it does not see sufficient material from Plex to be able to establish its reputation at least within India, whatever may be its reputation, registrations and sales in other jurisdictions. It also stated that there is much greater reputation and standing of Zee amongst subscribers across the length and breadth of the country with a large number of channels in various languages.
Senior Advocate Janak Dwarkadas appearing for Zee Entertainment pointed out that the word Plex was being used by Zee to specifically connote the niche or specialized service now being offered, i.e. a variety of regional and other licensed films being streamed on a pay-per-view basis to the subscribers.
When the counsel for the plaintiff argued that Zee can no more use Plex than it could use Sony or Disney or Hotstar to which the Justice Patel stated that merely pointing to other established and reputed players in the field is not enough, and it is hardly a credible argument to say that "if Sony provides content and has a reputation, since I, too, provide content, I must be presumed to have an equivalent reputation. So if Sony could maintain such action and get an order, so must I."
Justice Patel said that there is no one-size-fits-all approach in IPR matters. Every claimant in a passing off action stands or falls on his own merits and case. "…parties in IPR matters cannot expect Courts to push aside all other cases."
The Court added that it repeatedly happens, whether it is movie releases or otherwise. It must stop. It is unfair to courts and it is unfair to other litigants waiting their turn.
Justice Patel said, "If something has happened in the last few days, then moving with pressing urgency is perfectly understandable; but not where a plaintiff indulges itself in taking time to bring suit and then seeks to impose on the court's time to the unaccounted and unaccountable cost of others. I am letting it go this once, but will not be so minded in future."
The Court observed that the grant of the injunction Plex sought would cause immense and immediate financial loss and harm to Zee as Zee had already spent more than Rs. 11 crores (more than Plex's combined India sales for the last five years) on this new channel.
The Court thus refused to grant an ad-interim injunction.