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Court-Case Bulletins
December 9, 2020

Establishing Strong Case All-Important In Passing Off Actions Initiated At The 11th Hour

Author: Janaki Arun

In the matter of Plex, Inc. v. Zee Entertainment Enterprises Limited [Interim Application (L) No. 3737 of 2020 in Commercial IP Suit (L) No. 3736 of 2020], a Single Judge [G.S. Patel, J.] of the High Court of Bombay vide its order dated October 1, 2020 refused to grant an ad interim injunction in an action of passing off seeking to restrain the defendant from use of the word ‘PLEX’ in its online ‘cinema-to-home’ pay-per-view service to be launched a day after the hearing.

The plaintiff claimed it adopted the mark PLEX in 2008 in the US in relation to software that allows a user to share content over a media server, and that it had its first registered user from India in 2008. The plaintiff argued, inter alia, that the word PLEX is to be read in its ordinary and usual connotation as a physically constructed space comprised of many components such as a duplex, multiplex, etc., and the defendant can no more use PLEX than it could use Sony or Hotstar.

 The defendant, on the other hand, submitted apart from the services offered by it under the ZEEPLEX mark being completely different from the kind that is being offered by the plaintiff (viz. carrying one’s media wherever they go), the use of the word PLEX, is suggested by the name of its service itself. The defendant also raised the question of delay, stating that it cannot be ignored given that it had, on September 1, 2020 announced the launch of the service and the plaintiff had, nonetheless, waited till the 11th hour to move court.

The Court concurred that parties’ services appeared to be fundamentally different. The Court while refusing an ad interim injunction held that the plaintiff had failed to establish prima facie passing off, deception or anticipated injury. In this regard, the Court noted that the plaintiff’s user base and sales were not enough to show that the defendant was acting in deceit and trying to pass off its service as being associated with the plaintiff.

While the Court emphasized that it did not refuse the injunction on this basis, it observed that “…parties in IPR matters cannot expect Courts to push aside all other cases. This happens repeatedly…It is unfair to courts and it is unfair to other litigants…

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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