- (1.) The plaintiff is the daughter-in-law of the much acclaimed novelist Maitraye Devi. The instant suit is based on an alleged violation of an unregistered mark "Na-Hanya'te" by the respondent. In such an action of passing off the principal grievance of the petitioner appears to be that the respondents notwithstanding the popularity and eminence of the said book, adopted the said word mark and use the same in the film with a view to create an impression that the said film is based on the novel written by Maitraye Devi.
(2.) The soul is immortal and some feelings may not die perhaps was the essence of the said novel.
(3.) Mr. Joydeep Kar, learned counsel for the petitioner, submits that the words "Na-Hanya'te." is associated with Maitraye Devi and any feature film with the same title would give an unmistakable impression to the viewers that such feature film is based on the novel 'Na-Hanya'te.' It is submitted that the artistic work on the cover of the book was designed by none other than Mr. Satyajit Ray and if the posters, hoardings and other advertising materials of the said film are compared with 'Na-Hanya'te' as portrayed in the cover of the book, there cannot be any doubt that it would give an impression that the said film is based on the novel 'Na-Hanya'te.' It is submitted that the respondents have knowingly chosen the said title with a view to make unjust enrichment and tried to exploit the goodwill acquired by the said novel since its first publication in 1974. Mr. Kar has relied upon the following decisions in support of his contention that this Court should injunct the defendants from releasing the said film under the title 'Na-Hanya'te': (Cadila Health Care Ltd. vs. Cadial Pharmaceuticals Ltd., 2001 5 SCC 73) (Laxmikant V. Patel vs. Chetanbhai Shah & Anr., 2002 3 SCC 65) (T. V. Venugopal vs. Ushodaya Entp. Ltd. & Anr., 2011 4 SCC 85) in Cadila the dispute was between the two pharmaceutical companies in relation to use of a brand name 'Falcitab.' The appellant contended that the use of the brand name 'Falcitab' by the respondent was similar to the drug sold by it under the brand name 'Falcigo.' After considering the rival contention, the Hon'ble Supreme Court laid down the following principles in considering an action of passing off on the basis of unregistered trademark. "35. Broadly stated, in an action for passing-off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered: (a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works. (b) The degree of resembleness between the marks, phonetically similar and hence similar in idea. (c) The nature of goods in respect of which they are used as trade marks. (d) The similarity in the nature, character and performance of the goods of the rival traders. (e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods. (f) The mode of purchasing the goods or placing orders for the goods. (g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks. 36. Weightage to be given to each of the aforesaid factors depending upon facts of each case and the same weightage cannot be given to each factor in every case.";