Bombay HC Deprecates Practise Of Eleventh Hour Action In IPR Matters; Declines Injunction Against 'Zee-Plex'

Justice GS Patel was hearing an interim application filed by Plex Inc seeking passing off action against 'Zee', a large multi media conglomerate for using the word 'Plex' in their new platform that was scheduled to be launched on October 2. Zee announced its proposed launch of the 'cinema-to-home' pay-per-view service on September 1. The bench noted-

"I do believe and maintain - and I have said this before - that parties in IPR matters cannot expect Courts to push aside all other cases. This happens repeatedly, 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. 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."

According to the plaintiff, they adopted the mark 'Plex' in May 2008 in the United States. 'Plex' is essentially software or combination of software and hardware that allows a user/subscriber to share media content over what is called a media server.

Senior Advocate Virag Tulzapurkar appeared on behalf of Plex and submitted that the plaintiffs obtained international trade mark registrations in several jurisdictions, but not India. However he claimed that it had its first registered user in India on July 23, 2008. In the time since, it has built up a user or subscriber base of 550,000 users and there are very high sales in India between 2015 and 2019, Tulzapurkar contended.

Justice Patel however did not agree-

"I have some reason to question this. The plaint itself seems to indicate—in more than one place—that the sales of the Plaintiffs in any given year were rarely more than US$ 24,000 to 30,000. Whatever may be the sales internationally, we are concerned with the domestic sales and these are used (as is common in such actions) to provide prima facie evidence of reputation and goodwill."

Further, Tulzapurkar argued that the two platforms, ie, the plaintiff and the defendant are similar and pointed out certain details. He drew the Court's attention to some documents including an article that appeared in The Hindu newspaper on September 1, 2020 which describes 'Zeeplex' as a cinema-to-home pay-per view movie service. This immediately shows the difference in the two services, and this may possibly have some bearing on the question of 'passing off', Court noted.

Plex claims to have 'curated content', but that seems to apply to content to which Plex affords access. In addition, a Plex user can share his or her own content, either accessing it remotely or sharing it with others. The Zee Plex service does not seem to be like this at all. It has a list of movies. A subscriber selects the movie of choice and then must pay to view it. I presume that there will be some timing restrictions. Prima facie this may have some bearing on the question of deceit and confusion, Justice Patel said.

However, Sr Adv Tulzapurkar argued that the Zee services were described in The Hindu article as 'Zee Plex', and that the two words are being used disjunctively. Then there was a tweet at page 462 by Zee, Justice Patel quipped-

"But I think I should let that pass on the basis that today perhaps the less said of tweets the better for all concerned."

On the other hand, Senior Advocate Janak Dwarkadas appeared on behalf of the defendant Zee. He submitted that the word Plex is 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. Apart from this service being entirely different from the kind that is being offered by Plex natively (i.e. carrying one's media wherever one goes), the use of the word Plex, is suggested by the name of the service itself, i.e. multiple movie offerings on a single channel. This is the logical reason for using the word Plex and it provides a complete answer, Dwarkadas said.

After Adv Tulzapurkar on the question of reputation argues that Zee can no more use Plex than it could use Sony or Disney or Hotstar. Justice Patel noted-

"There, Plex's reach probably exceeds its grasp, and that is possibly stretching things a bit far. It puts Plex on the same brand recognition, brand equity and reputation pedestal as Sony, Disney and Hotstar. I believe Plex has to do quite a bit more to be able to sustain that argument. 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 an action and get an order, so must I." There is no one-size-fits-all approach in these matters. Every claimant in a passing off action stands or falls on his own merits and case."

Court finally concluded that there is no 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. In contrast, there is the much greater reputation and standing of Zee amongst subscribers across the length and the breadth of the country with a large number of channels in various languages, Justice Patel observed.

Thus, the Court declined ad-interim injunction.

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