Simba v. Simmba
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Case: M/S Sona Beverages Pvt. Ltd.  Vs.  Rohit Shetty Picturez LLP

Decided: 19th December, 2018

Brief Facts

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M/s Sona Beverages Pvt. Ltd. (“Plaintiff”) a Chhattisgarh based company has instituted a trademark infringement suit in the Delhi High Court against Rohit Shetty Picturez LLP (“Defendant”) claiming infringement of its registered trademark ‘SIMBA’ by the Defendant’s film which is titled ‘SIMMBA’.

The Plaintiff claimed that its registered mark is used for a wide variety of products including beers, mineral and aerated waters, and other non-alcoholic drinks, fruit drinks and also in the business of manufacture, distribution and sale of merchandise including apparels, playing cards, glasses, note pads, various other forms of accessories. It further claims it is using its registered brand since 2015. It has been registered under Class 16 of Trade Mark Classes. The plaintiff pleaded that they did not want any monetary compensation they just want defendant’s movie title to be changed on valid grounds.

The plaintiff tried to settle the issue outside court but the defendant didn’t responded to its e-mail and letters, so to deliver justice to its IP protected brand which Plaintiff build up with significant investment of time and money.

On 2nd November Court stated that “It has also been impressed upon the counsel for the defendant (Rohit Shetty Picturez LLP) that the defendant ought to respond to the plaintiff’s (Sona Beverages) notice and also explore the possibility of an arrangement being entered into, failing which, on the next date, the matter will be heard.”

The two parties entered into a settlement and executed an Original Trademark License Agreement dated December 10, 2018. Subsequently, the parties agreed to the Consent terms dated December 19, 2018 and placed it on record.

Contentions:

  • Trademark is the exclusive right bestowed by law to the Trademark owner; it cannot be infringed by anyone.

Held:

The Delhi High Court has taken on record the Consent Terms executed between the owner of trademark “Simba”, Sona Beverages and Rohit Shetty Picturesz, with respect to the release of the latter’s movie titled “Simmba”.
The settlement was arrived at pursuant to a Trademark License Agreement between the two. As per the consent terms, a disclaimer in the film ‘Simmba’ would clarify that the ownership of trademark ‘Simba’ was with Sona Beverages, and that Rohit Shetty Picturesz was only a licensee of the said trademark.
A single Judge Bench of Justice Prathiba M Singh has directed the Authorities, including the Censor Board to ensure that the disclaimer is prominently added in the title slides as well as Credits of the feature film ‘Simmba’.

Outcome

In relation to the other classes relevant for the Plaintiff’s business such as class 303233, the Plaintiff’s mark ‘Simba’ has been refused registration/ is in an objection stage. Further, in class 9 and 41 which deal with films and entertainment services, the Plaintiff does not seem to have obtained any registration. The mark Simba also seems to be registered in name of several other entities in different classes. For instance, in class 32 which deals with non-alcoholic beverages, Simba is registered in the name of Coca Cola Company.Trademark law is the set of laws and legal regulations that are set up to protect trademarks. A trademark is a legal protection given to any word, name, symbol, or design that is used in commerce to identify the product of one manufacturer from another. Trademarks aren’t simply words and phrases anymore. The laws protecting trademarks or the trademark law has been extended to protect other parts of a company’s brand. Trademark law regulates the use and protection of trademarks, protecting those trademarks as well as consumers from product and trademark confusion. The standard used to decide trademark infringement cases if there is a “likelihood of confusion” for consumers. If you are selling a good that is marked with a trademark that you don’t own or a mark that is similar to a trademark that you don’t own, and buyers are likely to confuse your product with the product of the trademark owners, it likely constitutes trademark infringement.

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