Manisha Singh Nair
Lex Orbis
manisha@lexorbis.com

The Delhi High Court, in a recent case, denied the Tata Sons plea for interim injunction against Greenpeace International, a non-profit organisation with a presence in 40 countries thereby upholding the Constitutional right of Freedom of Speech.

Tata Sons (the Plaintiff) is India’s oldest and largest private sector company consisting of over 100 major operating companies. It was contended that the Plaintiff was continuously and consistently using the trademark and trade name “TATA”, which is a rare and distinctive patronymic name possessing the distinctiveness of an invented word. In addition to the common law rights that have accrued to the Plaintiff by virtue of prior adoption, long, continuous and extensive use and advertising, it is also the registered proprietor of several TATA formative trademarks including the word mark “TATA” and “T within a circle” device mark in relation to various goods and services across various classes in India. The bone of contention in this case was that Dhamra Port Company Limited (DPCL), a 50-50 joint venture of Larsen and Toubro Limited and TATA Steel limited, was awarded a concession by the Government of Orissa to build and operate a port north of the mouth of the river Dhamra in the Bhadrak District for a total period of 34 years. It was stated by the Plaintiff that they had received all the permissions and clearances from appropriate government authorities to go ahead with construction of the port. The Plaintiff alleged that despite taking all regulatory clearances for constructing an eco-friendly port, the defendants have raised concerns about the alleged probable dangers to the nesting and breeding of Olive Ridley sea turtles by the proposed port at various quarters. It was submitted that the defendants have gone a step ahead and even made an online game by the title “Turtle vs. TATA”. The plaintiff stated that a mere look at the defendants game’s screenshot revealed how they used the plaintiffs trademark, “TATA” as well as the “T” within a circle device without the permission of the plaintiff thereby infringing its trademark rights. Among other things, the Plaintiff also contended that the online game was aimed to create a false impression with members of the general public about its activities and that, in this context, the right to free speech could not be construed as a licence to publish defamatory matters as it would tarnish and injure the fair name and reputation of another beyond repair. The Plaintiff further argued that the mode of publishing the defamation in this case was also objectionable as anything posted on the internet has propensity to cause greater and lasting damage.

The Defendant’s reply submitted that the message conveyed by the game was that the otherwise endangered Olive Ridley Turtles were in danger of losing its habitat because of the construction and setting up of the port. The online game had been created to raise awareness about the danger that the project would pose to local marine life in the region. The Defendant further stated that its use of the TATA trademark and “T” device did not amount to trademark infringement, as it was not for commercial usage. It was also explained that the usage of the word “DEMONS” in the game was only to emphasise and drive home the point that development through the project in question would threaten the existence and survival of the Olive Ridley turtles. It was used with the intention of making a strong impact without being read literally.

The Court observed that:

• the fact that environmental experts wrote about the potential environmental destruction of the Olive Ridley turtles’ habitat and nesting grounds made it clear that Greenpeace India was not alone in voicing its concerns about the DPCL. The beliefs that a project is potentially disastrous cannot be held to be mala fide, especially in a plural democracy such as in India, notwithstanding the clearances issued or granted by the statutory and government agencies.

• the game was an instance where the defendant creatively (or reprehensively, depending on one’s perspective) sought to highlight the plight of the Olive Ridley turtles. The use of the TATA mark and logo, as demonic, was, in that context, prima facie exaggerative or hyperbolic, in respect of matters of public concern.

• the mode and extent of publication is a particularly significant consideration in assessing damages in internet defamation cases.

• in the current case, the defendants use of the trademark was at a much lower degree of parody and ridicule, as the defendants were not involved in any kind of similar entrepreneurial or business venture as the Plaintiff. Therefore the Court should be aware of the fact that the general tolerance level of another body (defendants) using a registered trademark to put forward its cause is at a high threshold. The use of a trademark, as the object of a critical comment, or even attack, does not necessarily result in infringement. Sometimes the same mark may be used, as in Esso; sometimes it may be a parody. If the user’s intention is to focus on some activity of the trademark owners, and is “denominative”, drawing the attention of the reader or viewer to the activity, such use can prima facie constitute “due cause” under Section 29 (4), which would disentitle the Plaintiff to a temporary injunction, as in this case. The use of TATA, and the “T” device or logo, was clearly denominative. Similarly, describing the Tatas as having demonic attributes was hyperbolic and parodic.

In light of the aforementioned observations the Court held that, granting an injunction would freeze the entire public debate on the effect of the port project on the Olive Ridley turtles’ habitat. That plainly would not be in public interest; it would most certainly be contrary to established principles.