In a not-so-puzzling case of an unauthorized use of a trade mark as a film title, Justice G. S. Patel of the Bombay High Court restrained film maker Mahesh V. Manjrekar and others from releasing/ continuing to work on their forthcoming Marathi film bearing the title ‘Rubik’s Cube’ set to release on April 14, 2017. A copy of the order can be accessed here.
The Plaintiffs, Rubik’s Brand Limited, and its sole Indian licensee, Funskool India Limited, were represented by Sujata Chaudhri IP Attorneys and SSP Legal, its local counsel in Mumbai.
Rubik’s Brand Limited derives the right to use the RUBIK’S/RUBIK’S CUBE mark from Professor Erno Rubik, a Hungarian professor who created/invented the well-known toy cube puzzle in Hungary in the year 1974. Rubik’s Brand Limited has a substantial business in licensing the RUBIK’S /RUBIK’S CUBE marks, and regularly grants licenses to use the marks RUBIK’S/RUBIK’S CUBE and/or a representation of the 3-D cube to companies around the world. Licensing is Rubik’s Brand Limited’s primary source of revenue. In fact, Rubik’s Brand Limited is no stranger to licensing of its toy puzzle cube in films and commercials. It boasts of licenses granted to well-known films and commercials such as the Play Station 3 Commercial (2006), the Google Play Commercial (2012), Danny MacAskill’s Imaginate (2013), De La Soul’s song “Get Away” (2013), and The Snowden Movie (2016).
Mr. Manjrekar, the defendant 1, is a well-known film maker. He has produced a Marathi film named RUBIK’S CUBE that was due for release on April 14, 2017. The plaintiffs learned of the film’s imminent release through a well-known Bollywood web site that featured an article about the film’s music release graced by well-known star, Salman Khan.
A promotional poster of the film (shown above) features the mark RUBIK’S CUBE written in four of the six colors of the plaintiffs’ toy puzzle, followed by the tagline “YOU RARELY GET THE COMBINATION RIGHT EVEN IN LOVE”.
On first learning about such illegit use, the plaintiffs’ lawyers wrote to the defendants offering them a license to use the mark RUBIK’S CUBE as the title of their film. When no response was forthcoming, the plaintiffs moved the Bombay High Court on, inter alia, the grounds of passing-off, dilution and unfair competition.
The Notice of Motion was listed in Justice Patel’s court on the morning of April 5th. While restraining the defendants from, inter alia, releasing the film under the title RUBIK’S CUBE, the learned judge termed the instant case as “one of those rare passing off actions that ought to be decreed the moment it is filed”. Going further the learned judge said that the RUBIK’S CUBE toy puzzle is “an extremely popular puzzle, one that has achieved almost legendary status in the public domain” and that Mr. Manjrekar “ought to be disabused” of the notion that the mark RUBIK’S CUBE can be freely adopted and used at will.
Acknowledging the plaintiffs’ exclusive rights in respect of the “well-known puzzle and toy”, Justice Patel has surely given the mark a broad scope of protection across classes. Even further, he conferred the highest degree of protection to the mark RUBIK’S CUBE by recognising it as an invented and coined word.
Justice Patel held that the plaintiffs had proved all three elements of passing-off. As regards reputation and goodwill, Justice Patel noted that “there is nothing that the Defendants can possibly say to assail the Plaintiffs’ claims to both”. As for misrepresentation, he noted that the defendants had used the exact mark RUBIK’S CUBE, and, consequently, anyone would be led to believe that the defendants’ film has something to do with “the Plaintiffs’ well-known mark as applied to an extremely popular and well-known puzzle or toy”. As regards the likelihood of damage, Justice Patel held, “there is already considerable damage caused to the Plaintiffs in terms of dilution of their brand and their mark”.
He went on to recognize the defendants’ knowledge of the plaintiffs’ RUBIK’S CUBE mark as being apparent from the use of the very mark in the defendants’ promotional poster written in four of the six colours of the puzzle. The tag line, he noted, is a direct reference to the toy itself.
The plaintiffs have not viewed Mr. Manjrekar’s film, and do not know whether the mark RUBIK’S CUBE or the three dimensional toy puzzle cube are featured in the film or whether the story line weaves in the cube or the mark RUBIK’S CUBE. Notwithstanding this, the plaintiffs’ position is that even if this were the case, the defendants had no grounds to raise a defense of nominative fair use or any other fair use defense.
Mr. Manjrekar surely needs to solve the puzzle he chose to play with, sooner than later. Will he seek a license from the plaintiffs to use the mark or will the movie see the light of the day with a changed name? Surely a twisted puzzle!