But the problem was that there where fraudulent dolls of Daler Mehndi being sold in the market, this proved to be a huge case in India and was an eye-opener for the importance of trademark for music artists and celebrities.
In this case, Defendants were engaged in selling miniature toys of Daler Mehndi which was causing heavy loss to the Plaintiffs. Therefore, the plaintiff company filed suit for permanent injunction for infringing artist rights of Publicity and false endorsement leading to Passing Off. The Plaintiff company had been assigned all the rights, titles, and interest in the personality of the artist along with the Trademark Name.
And it was contended by the Plaintiff’s company that Defendants were illegally using the unassigned and unlicensed product and sold it to the consumers which create confusion in the mind of consumers that the mark is somehow related to the Plaintiff and which commercially exploits the plaintiff’s economy and reputation. And hence, it was submitted that such use leads to Passing off. It was further submitted that such use was committed without permission from the Person or any other person authorized by him.
And it clearly shows the intention of the Defendant to commercially exploit the Plaintiff. Section 29 of the Trademarks Act, 1999 (hereinafter the Act) lays down the aspect of infringement of trademark names. It elucidates that when a person is using, in course of any Trademark, which was identical or deceptively similar to a registered mark which he is not entitled or licensed to use shall be deemed to infringe on the rights of a lawful person who has the lawful right over the mark.
The Act does not give a specific description of Passing off, as a result, it has been derived through Judicial precedents, common law. Passing off a plea could be taken when a mark is created which is deceptively similar mark and is created to create confusion in
the mind of the consumers that results in the loss damage or loss of the business for the person or company who/which is the lawful owner of the trademark. Merchandising with characters is an area of law that had been previously unexplored in India.
The first case that dealt with this was Star India Private Limited Vs. Leo Burnett India Pvt Ltd. the courts in India in these earlier cases had not dealt with publicity rights. I this Compensatory cost of rs.1 lakh was given to the plaintiff and in this the intent of the judiciary was clear.