If you are a wrestling fan, you would have definitely heard of John Cena, Randy Orton, The Rock, Cm Punk, Undertaker, Shawn Michaels, The Great Khali, Rey Mysterio, HHH, Edge etc. As a fan of these mega stars, you would have purchased many merchandise to be more like them and also would have made sure that you bought the original ones and not the replicas. But are you certain that what you are buying is in fact the original piece? More often than not, retailers import few pieces of original goods and use those to manufacture fake ones which, for a layman, will look exactly like the original. This is what happened in a recent case between World Wrestling Entertainment and Savio Fernandes & Ors.

As we all are aware, World Wrestling Entertainment is an international integrated media and entertainment company principally engaged in the development, production and marketing of television programming, pay-per-view programming and live events, and the licensing and sale of branded consumer products featuring its highly successful WWE brand. WWE also offers a variety of consumer products and have more than 200 licensees distributing product in 86 countries, including India. Their trademarks WORLD WRESTLING ENTERTAINMENT and WWE Scratch Logo (i.e. the logo) is registered under various classes in over 80 countries including India. The sports events organised by them are broadcasted on television networks across the world.

WWE licenses in Indian market among other things, T- shirts, sweat shirts, caps, vests and other licensed products like CDs, VCDs and DVDs reproducing the trademarks WORLD WRESTLING ENTERTAINMENT and the WWE Scratch Logo, and the WWE characters on the said products.

The defendants were engaged in selling apparel and merchandise bearing the registered trademark WWE and other copyrightable content of the plaintiff. The Defendants also sell their products online through their website www.wrestlezoneindia.com and www.wrestlezone.co.in.

In November 2012, WWE came across the defendant’s website and found out that the defendants were calling themselves “The WWE Merchandising Store” and were claiming to be selling official WWE merchandise.

In December 2012, the defendants engaged a Private Investigator to investigate more into the defendant and their shop, “Wrestle Zone”. The PI visited the defendant’s shop and purchased few T-shirts which were later on sent to WWE’s team to inspect the authenticity of the products. Much to the dismay of the defendants, WWE found out that the products were replicas of the original ones and WWE thus filed this suit for permanent injunction on the grounds of it being an infringement.

WWE contented that the defendants had not only infringed their trademark rights but also the copyright that subsisted in the pictorial form of the characters made by WWE. They further went on to contend that use of such replicas will not only cause confusion in the minds of the public but will also mislead them to believe that the defendants are in fact authorised distributors of WWE products thereby resulting in unjust enrichment to the defendants from the benefits accruing to the defendants out of such unauthorized use.

The court, after reviewing the evidences submitted by WWE, came to a conclusion that WWE was entitled to obtaining a permanent injunction against the defendants. With respect to the damages, the plaintiff had prayed for Rs. 10 Lacs to be awarded to them as damages. To support this argument, they cited a few cases wherein the Court had awarded damages despite it being an exparte proceedings.

Justice Singh, after reviewing all the evidences and the plaint, came to the conclusion that a party who chooses to not participate in court proceedings and stay away must, thus, suffer the consequences of damages as stated and set out by the plaintiff. Based on this, the Court granted injunction against the defendants and directed them to pay a sum of Rs. 5 Lacs as damages to WWE apart from the costs of the suit which is Rs. 1 Lac.

So the best bet would be to obtain a license if you wish to use someone else’s Intellectual Property. All that you need to know about licensing of trademarks in India can be found here. I think the reason why people these days do not obtain licenses for using others Intellectual Property is that they think 1. Others are doing it, why can’t I? and 2. The original makers are never going to find out! But when they do, it will be yet another case of injunction and damages.

This article has been authored by Durga Bhatt, an IP Law practitioner.