Indian High Court opens the door to the own name defence

Indian High Court opens the door to the own name defence Abstract Gautam Gambhir v DAP and Co & Anr, Delhi High Court, CS (Comm.) 395/2017, 13 December 2017 The Delhi High Court has ruled on the contours of personality rights to determine whether Indian cricketer Gautam Gambhir could obtain a permanent injunction against a restaurant owner operating multiple restaurants using the tagline ‘by Gautam Gambhir’. Legal context In the absence of relevant legislation, Indian courts have traditionally displayed a proclivity to read rights pertaining to an individual and his/her self as part of the fundamental rights conferred by the Constitution of India. The conception of personality rights has followed a similar path. In 2003, the Delhi High Court in ICC Development v Arvee Enterprises [2003 (26) PTC 245 (Del)] held that personality rights (right of publicity) have evolved from the right of privacy which has been interpreted to form part of the fundamental right to life guaranteed under Article 21 of the Indian Constitution. The Gautam Gambhir case is an addition to the limited—yet evolving—jurisprudence on personality rights in India. Indian courts have, in the past, recognized that the right of an individual to control the commercial use of one’s own identity or any indication of his/her personality such as his/her name, voice, signature etc. warrants protection. In a large number of cases preceding Gautam Gambhir, courts have ruled in favour of the claimant and bolstered the protection of personality rights. For instance: (i) in Arun Jaitley v Network Solutions [2011 (47) PTC 1 (Del)], it was held that a person is entitled to restrict the use of popular personal names based on fulfilment of the principles surrounding well-known marks under trade mark law and also in light of his/her personal right and entitlement over the use of his/her name; (ii) in Titan Industries v Ramkumar Jewellers [2012 (50) PTC 486 (Del)], the view was that ‘no one [is] free to trade on another’s name or appearance and claim immunity’; and (iii) In Shivaji Rao v Varsha Productions [2015 (62) PTC 351 (Mad)], it was observed that infringement of an individual’s right of publicity does not require any proof of confusion, deception or falsity, particularly in circumstances wherein a celebrity is identifiable. The important distinguishing factor in the present case is the implicit acceptance of the own name defence. The courts have, in the past, recognized that personality rights ought to be protected from misappropriation by a third party. However, prior to Gautam Gambhir, the courts did not offer a definitive stance, for when a celebrity’s personality rights may coincide with the honest use of one’s own name. Facts The defendant operates four restaurants in Delhi, and each of them conspicuously displays the tagline ‘by Gautam Gambhir’ alongside the name. The owner, an individual named Gautam Gambhir, opened the first of these restaurants, akin to restobars, ‘Blu Wavs’, in 2014, and ‘Play Reloaded’, ‘Ghunghroo’ and ‘Hawalat’ were opened in the years that followed. The plaintiff, Gautam Gambhir, is a well-known cricketer of international repute associated with the Indian national cricket team since 2003. Incidentally, he is also from Delhi and has played for Delhi in the Ranji Trophy which has tremendous following. In November 2016, the plaintiff discovered that the defendant was promoting his restaurants with the tagline ‘by Gautam Gambhir’. On the ground that such tagline would give the impression that the restaurants were associated with the cricketer, litigation ensued before the Delhi High Court to restrain the defendant from using the tagline. Analysis The ruling relies on three factors: (i) while the celebrity status of the plaintiff was not disputed, it was also not disputed that the defendant is known by his own name ‘Gautam Gambhir’; (ii) the defendant did not commit any overt act to represent that the plaintiff owned the restaurants; and (iii) there was insufficient evidence regarding public confusion due to the tagline and none with respect to loss of goodwill of the plaintiff. The court focused on the defendant’s use of his ‘own’ name and pictures, and his ‘own’ identity to promote his ‘own’ business on all forums, including advertisements, social media, merchandises, stationery etc. The defendant had not used any pictures of the plaintiff that would cause confusion regarding the ownership of the restaurant. The court, therefore, was of the view that the defendant’s tagline was not in contravention of the settled principle that no individual is entitled to carry on business in such a way that it is likely to be confused to be the business of another, or connected with the business of another. The actions of the plaintiff were found to be lacking on the following counts: (i) to support the plaintiff’s contention regarding public confusion, a singular incident evidencing confusion caused to one individual was placed on record, which the court deemed insufficient; (ii) there was nothing on record to illustrate loss of goodwill to the plaintiff due to the defendant operating restaurants under his own name; and (iii) the plaintiff had not challenged the registration of the trade mark ‘Hawalat Lounge by Gautam Gambhir’ by the Trade Mark Registry in December 2016. While dismissing the suit, the court made it amply clear that an individual has the right to carry on his/her business under his/her own name provided that: (i) nothing more is done to cause confusion with respect to the business of another; and (ii) the use is honest and bona fide. Practical significance The judgment is, perhaps, like a mistimed shot. The court tacitly made room for the own name defence but it did not situate it in the context of passing off. The facts of this case provided fertile ground for a discussion on passing off but no reference was made to the action. Interestingly, the judgment is replete in reference to the own name defence but the defence is not expressly characterized as such. The desired connection between passing off and the own name defence, therefore, remains ambiguous. The court addressed two elements of passing off, without addressing them as such, namely, misrepresentation and loss of goodwill. The reasoning in respect of misrepresentation echoes the view taken by the Court of Appeal in Asprey and Garrard v WRA (Guns) [[2001] EWCA Civ 1499]. In Asprey, two conditions were laid down for the own name defence to apply: first, nothing more should be done to cause confusion with the business of another and, secondly, the use of the name must be honest. Another pertinent aspect of the case that the judgment is silent on, is the question of innocent misrepresentation, particularly in case of common names. The commonality of a name is bound to be a recurring topic of debate in cases involving the own name defence. The plaintiff contended that his is a rare name. However, a simple search on Facebook or LinkedIn reveals that it is perhaps not. Arguably, the court would have benefited from explaining that the own name defence must be accepted, provided there is no significant deception and there is only a minimal degree of confusion, as was observed in Reed Executive v Reed Business Information [(2004) EWCA Civ 159]. This view would have resulted in the same outcome in Gautam Gambhir, since as per the evidence the only potentially confusing factor was the name. The defendant had otherwise used his own pictures on all forms of advertising. However, a discussion on the nuances of innocent misrepresentation or the acceptable degree of confusion in context of the defence would have lent greater precedential value. There are several Indian cricketers who have ventured into the restaurant business, such as Sachin Tendulkar and Sourav Ganguly, so the confusion is not entirely implausible. However, what may have tilted the scales in favour of the defendant alongside honest use, is the lack of conceptual similarity between his field of work as compared to the plaintiff’s. If there was conceptual similarity, there would have been a greater likelihood of the defendant being required to either: (i) refrain from relying on the own name defence; or (ii) take further steps to distinguish his business to avoid a likelihood of confusion as was done in Titanic Spa v Titanic Hotel [(2016) EWHC 3103 (Ch)]. Which path will be taken by Indian courts in defining the extent to which the own name defence would be allowed in cases involving conceptual similarity remains to be seen. The Gautam Gambhir case sets the ball rolling but falls short of hitting it out of the park. While it implicitly introduces the own name defence in the Indian context, the absence of a specific mention of passing off, limits its impact. The precedential value of this case will, therefore, be determined by its interpretation in the future. © The Author(s) 2018. Published by Oxford University Press. All rights reserved. This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/about_us/legal/notices) http://www.deepdyve.com/assets/images/DeepDyve-Logo-lg.png Journal of Intellectual Property Law & Practice Oxford University Press

Indian High Court opens the door to the own name defence

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Oxford University Press
Copyright
© The Author(s) 2018. Published by Oxford University Press. All rights reserved.
ISSN
1747-1532
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1747-1540
D.O.I.
10.1093/jiplp/jpy065
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Abstract

Abstract Gautam Gambhir v DAP and Co & Anr, Delhi High Court, CS (Comm.) 395/2017, 13 December 2017 The Delhi High Court has ruled on the contours of personality rights to determine whether Indian cricketer Gautam Gambhir could obtain a permanent injunction against a restaurant owner operating multiple restaurants using the tagline ‘by Gautam Gambhir’. Legal context In the absence of relevant legislation, Indian courts have traditionally displayed a proclivity to read rights pertaining to an individual and his/her self as part of the fundamental rights conferred by the Constitution of India. The conception of personality rights has followed a similar path. In 2003, the Delhi High Court in ICC Development v Arvee Enterprises [2003 (26) PTC 245 (Del)] held that personality rights (right of publicity) have evolved from the right of privacy which has been interpreted to form part of the fundamental right to life guaranteed under Article 21 of the Indian Constitution. The Gautam Gambhir case is an addition to the limited—yet evolving—jurisprudence on personality rights in India. Indian courts have, in the past, recognized that the right of an individual to control the commercial use of one’s own identity or any indication of his/her personality such as his/her name, voice, signature etc. warrants protection. In a large number of cases preceding Gautam Gambhir, courts have ruled in favour of the claimant and bolstered the protection of personality rights. For instance: (i) in Arun Jaitley v Network Solutions [2011 (47) PTC 1 (Del)], it was held that a person is entitled to restrict the use of popular personal names based on fulfilment of the principles surrounding well-known marks under trade mark law and also in light of his/her personal right and entitlement over the use of his/her name; (ii) in Titan Industries v Ramkumar Jewellers [2012 (50) PTC 486 (Del)], the view was that ‘no one [is] free to trade on another’s name or appearance and claim immunity’; and (iii) In Shivaji Rao v Varsha Productions [2015 (62) PTC 351 (Mad)], it was observed that infringement of an individual’s right of publicity does not require any proof of confusion, deception or falsity, particularly in circumstances wherein a celebrity is identifiable. The important distinguishing factor in the present case is the implicit acceptance of the own name defence. The courts have, in the past, recognized that personality rights ought to be protected from misappropriation by a third party. However, prior to Gautam Gambhir, the courts did not offer a definitive stance, for when a celebrity’s personality rights may coincide with the honest use of one’s own name. Facts The defendant operates four restaurants in Delhi, and each of them conspicuously displays the tagline ‘by Gautam Gambhir’ alongside the name. The owner, an individual named Gautam Gambhir, opened the first of these restaurants, akin to restobars, ‘Blu Wavs’, in 2014, and ‘Play Reloaded’, ‘Ghunghroo’ and ‘Hawalat’ were opened in the years that followed. The plaintiff, Gautam Gambhir, is a well-known cricketer of international repute associated with the Indian national cricket team since 2003. Incidentally, he is also from Delhi and has played for Delhi in the Ranji Trophy which has tremendous following. In November 2016, the plaintiff discovered that the defendant was promoting his restaurants with the tagline ‘by Gautam Gambhir’. On the ground that such tagline would give the impression that the restaurants were associated with the cricketer, litigation ensued before the Delhi High Court to restrain the defendant from using the tagline. Analysis The ruling relies on three factors: (i) while the celebrity status of the plaintiff was not disputed, it was also not disputed that the defendant is known by his own name ‘Gautam Gambhir’; (ii) the defendant did not commit any overt act to represent that the plaintiff owned the restaurants; and (iii) there was insufficient evidence regarding public confusion due to the tagline and none with respect to loss of goodwill of the plaintiff. The court focused on the defendant’s use of his ‘own’ name and pictures, and his ‘own’ identity to promote his ‘own’ business on all forums, including advertisements, social media, merchandises, stationery etc. The defendant had not used any pictures of the plaintiff that would cause confusion regarding the ownership of the restaurant. The court, therefore, was of the view that the defendant’s tagline was not in contravention of the settled principle that no individual is entitled to carry on business in such a way that it is likely to be confused to be the business of another, or connected with the business of another. The actions of the plaintiff were found to be lacking on the following counts: (i) to support the plaintiff’s contention regarding public confusion, a singular incident evidencing confusion caused to one individual was placed on record, which the court deemed insufficient; (ii) there was nothing on record to illustrate loss of goodwill to the plaintiff due to the defendant operating restaurants under his own name; and (iii) the plaintiff had not challenged the registration of the trade mark ‘Hawalat Lounge by Gautam Gambhir’ by the Trade Mark Registry in December 2016. While dismissing the suit, the court made it amply clear that an individual has the right to carry on his/her business under his/her own name provided that: (i) nothing more is done to cause confusion with respect to the business of another; and (ii) the use is honest and bona fide. Practical significance The judgment is, perhaps, like a mistimed shot. The court tacitly made room for the own name defence but it did not situate it in the context of passing off. The facts of this case provided fertile ground for a discussion on passing off but no reference was made to the action. Interestingly, the judgment is replete in reference to the own name defence but the defence is not expressly characterized as such. The desired connection between passing off and the own name defence, therefore, remains ambiguous. The court addressed two elements of passing off, without addressing them as such, namely, misrepresentation and loss of goodwill. The reasoning in respect of misrepresentation echoes the view taken by the Court of Appeal in Asprey and Garrard v WRA (Guns) [[2001] EWCA Civ 1499]. In Asprey, two conditions were laid down for the own name defence to apply: first, nothing more should be done to cause confusion with the business of another and, secondly, the use of the name must be honest. Another pertinent aspect of the case that the judgment is silent on, is the question of innocent misrepresentation, particularly in case of common names. The commonality of a name is bound to be a recurring topic of debate in cases involving the own name defence. The plaintiff contended that his is a rare name. However, a simple search on Facebook or LinkedIn reveals that it is perhaps not. Arguably, the court would have benefited from explaining that the own name defence must be accepted, provided there is no significant deception and there is only a minimal degree of confusion, as was observed in Reed Executive v Reed Business Information [(2004) EWCA Civ 159]. This view would have resulted in the same outcome in Gautam Gambhir, since as per the evidence the only potentially confusing factor was the name. The defendant had otherwise used his own pictures on all forms of advertising. However, a discussion on the nuances of innocent misrepresentation or the acceptable degree of confusion in context of the defence would have lent greater precedential value. There are several Indian cricketers who have ventured into the restaurant business, such as Sachin Tendulkar and Sourav Ganguly, so the confusion is not entirely implausible. However, what may have tilted the scales in favour of the defendant alongside honest use, is the lack of conceptual similarity between his field of work as compared to the plaintiff’s. If there was conceptual similarity, there would have been a greater likelihood of the defendant being required to either: (i) refrain from relying on the own name defence; or (ii) take further steps to distinguish his business to avoid a likelihood of confusion as was done in Titanic Spa v Titanic Hotel [(2016) EWHC 3103 (Ch)]. Which path will be taken by Indian courts in defining the extent to which the own name defence would be allowed in cases involving conceptual similarity remains to be seen. The Gautam Gambhir case sets the ball rolling but falls short of hitting it out of the park. While it implicitly introduces the own name defence in the Indian context, the absence of a specific mention of passing off, limits its impact. The precedential value of this case will, therefore, be determined by its interpretation in the future. © The Author(s) 2018. Published by Oxford University Press. All rights reserved. This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/about_us/legal/notices)

Journal

Journal of Intellectual Property Law & PracticeOxford University Press

Published: Apr 27, 2018

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