Infringement of ‘HARRY POTTER’ – Delhi High Court rules in favor of Warner Bros Entertainment INC
– Rakshita Singh, student Army Law College, Pune
Who isn’t a fan of Harry Potter? At the least, it is a known name in every household. It is not surprising that one might even wish to profit from that name by associating it with their clothing, food, or even sports retail business. However, you should know that Warner Bros already has a trademark registration for the words ‘HARRY POTTER’ & ‘HOGWARTS’ since 2000 & 2002 in India, respectively.
Recently, the Hon’ble Delhi High Court, in 3 consecutive interlocutory applications filed by WARNER BROS ENTERTAINMENT INC against HOGWARTS KAFE & ORS, found the Defendant(s) to be prima facie in riding on the goodwill (or, should I say broomstick?) of the plaintiff.
In an application filed by the Plaintiff under Order XXXIX Rule 1 and 2 read with Section 151 of CPC seeking an ex parte ad interim injunction, the Court refrained Defendants from using the impugned mark, i.e., ‘THE HOGWARTS KAFE’ or ‘THE WIZARDING WORLD’ properties in the restaurant.
The plaintiff initiated this suit to seek injunction and damages for infringement of their registered trademark (as mentioned above), passing off unfair competition u/s 134(1) read with Section 27 & 29 of The Trade Marks Act, 1999.
The plaintiff contends to being a renowned and global leader in all forms of entertainment and related business across current and emerging media platforms. In addition, the plaintiff is well-recognized in the field of production, distribution, and licensing of television programming, feature film, television, and home entertainment production. They also hold a significant reputation and presence in the worldwide distribution of DVDs and Blue-rays, digital distribution, videos games, animation, product & brand licensing, and broadcasting.
The plaintiff contended to being the prior adopter, user and, registered proprietor of the well-known trademarks, ‘HOGWARTS’ and ‘HARRY POTTER,’ which have been associated with various goods and services since 1997.
In addition, the plaintiff is the proprietor of the ‘THE WIZARDING WORLD’ properties and has been using it since 2000. A key element is the well-known mark ‘HOGWARTS,’ which is being dishonestly adopted and used by the defendants, ‘THE HOGWARTS KAFE.’ The plaintiff also submitted photos showcasing the use of ‘THE WIZARDING WORLD’ properties in the restaurant, which rides off the ever-so-known goodwill of the plaintiff.
The Court sentenced in affirmative and directed the Defendants to remove their advertisements and listings from third-party websites, including but not limited to food delivery apps such as Zomato, Dineout and ‘apps’ such as http://lbb/in/, www.TripAdvisor.in, https://curlytales.com, online video streaming ‘app’, www.youtube.com, and even Facebook.
In this ‘Quidditch competition’ between the parties, the Court has initiated the proceedings in the right direction to protect the trademarks HARRY POTTER and HOGWARTS, which, due to their wide popularity, are prone to be misused by being applied to counterfeit goods. These inadequate services can be disastrous to Warner Bros. The Court has ordered to issue summons to the defendants and file the requisite documents for further proceedings.