Relief For Actor Vijay, Madras High Court Refuses To Restrain His Party Flag For Alleged Trademark Infringement

The Madras High Court on Monday dismissed an application seeking interim injunction to restrain actor Vijay's Tamilaga Vetrri Kazhagam party from using the party flag, over alleged infringement of a Trust's trademark.Justice Senthilkumar Ramamoorthy rejected the plaintiff's claim that the usage of the flag by Vijay's party amounted to copyright infringement, trademark infringement, and passing off. The court, however, added that these were tentative observations and the matter would be dealt with in September. The interim orders were passed in a petition filed by G.B. Pachaiyappan, trustee of the Thondai Mandala Saandror Dharma Paribalana Sabai.The plaintiff argued that the flag of Vijay's TVK party was deceptively similar to that of the Trust's trademark. It was submitted that by adopting a similar and identical flag, with a yellow and red colour combination and three stripes, the party had imitated the Trust's unique, distinctive mark, causing confusion and deception, and thus amounting to trademark violation.The plaintiff had argued that they had registered their mark in November 2023 and had been using it since. It was argued that since both the plaintiff and the defendant were engaged in similar activities, there was a possibility of confusion. The plaintiff pointed out that both the party's flags used similar colour schemes. When the judge questioned if the colour combination had been specifically registered, the plaintiff pointed out that as per the new Trademark Act, when a mark was registered in colour, it was assumed that the colour scheme was also registered. The plaintiff also claimed that its flag would come under the definition of an "artistic work" and would thus be eligible for protection as such. On the other hand, Senior Advocate Vijay Narayan, appearing for the party, argued that since neither the plaintiff nor the defendants were engaged in any trade or commerce, they could not claim relief under the Trademark Act. It was argued that a trademark was always associated with a good and service and here, no connection had been shown.While Narayan admitted that there were similarities in the colour scheme, he submitted that the total getup, look and style of the two marks were totally different and there was no possibility of any confusion. Narayan also pointed out that the plaintiff, in his pleadings, had failed to show that he had suffered loss and that the defendant had made unjust gains from the use of the allegedly similar mark. Thus, he argued that no case had been made out for granting an injunction. On the allegation of copyright infringement, the court proceeded on the basis that the plaintiff's flag qualified as an artistic work. The court observed that in order to succeed in an action for copyright infringement, it was necessary to establish that there was substantial copying. The court also reiterated that there was no necessity for the two flags to be identical. In the present case, the court held that the TVK party's flag was not a substantial copy of the plaintiff's flag and thus rejected the claim in that regard. "In the present case, both flags used red/maroon followed by yellow in the middle and red/maroon at the lower end. Apart from the use of this colour combination, the two flags also contain central devices. The plaintiff's flag contains a circle or sphere. Within such circle, the image of a fish is seen on the left and the image of a leaping tiger is seen on the right. The image of a bow and arrow is seen at the upper end. The word elements 'Valarga Thalamurai' is seen beneath the fish and tiger. In comparison, in the yellow segment of the defendant's flag, an oval device is seen. At the centre, on either side, an image of elephants in motion is seen. It cannot be said that the defendant's flag is a substantial copy of the plaintiff's flag. Therefore, I reject the claim for relief with respect to the claim of alleged copyright infringement," the court said. With respect to the claim of trademark infringement, the court noted that the word 'trade' had not been defined in the Act and was not inclined to enter any findings on whether the plaintiff's mark would qualify as a trademark at the present stage. Even assuming that the plaintiff's mark qualified as a trademark, the court opined that the colour scheme could not be characterised as an essential feature and thus, it could not be said that the mark would confuse the minds of the people. "On the assumption that the plaintiff's trademark is entitled to protection by virtue of registration, at least for interlocutory purposes, the next question arises whether the plaintiff's trademark has been infringed or not. It is no doubt true that essential features of the mark may be considered, notwithstanding the anti-dissection rule. Even so, on prima facie comparison, I find that the colour scheme cannot be characterised as the essential features. While minute comparison is not warranted, even when examined from the...

Relief For Actor Vijay, Madras High Court Refuses To Restrain His Party Flag For Alleged Trademark Infringement

Upasana Sajeev

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