In a competitive global market, businesses need to strive to get ahead of their competitors. One of the ways to do this is by creating unique brand identities which help make a strong impact on the minds of consumers. Trademarks are especially useful in this respect, as consumers can easily make connections with their favourite products and services with the businesses that provide them, which in turn can ensure consumer loyalty.

Sometimes, however, in the haste to succeed, businesses might affront Courts with ill-thought-out moves. The recent decision of the Bombay High Court in an application for an ad-interim injunction in Plex Inc. v. Zee Entertainment Enterprises Ltd. is an important example in this regard. The Court made it clear that it does not appreciate unfounded comparisons or inexcusable delays by parties to a case.


The Plaintiff in the instant case is an online platform which allows users to watch movies and TV shows. The platform also curates content for users and allows them to share it remotely with others. The Plaintiff adopted the mark ‘PLEX’ in the United States of America in 2008 and has since then obtained registrations for the mark in several countries across the globe. According to the Plaintiff, it had its first user in India in 2008 as well. The Plaintiff had applied for the registration of the mark in India under the category of ‘proposed to be used’.

The Defendant, Zee is a large multimedia conglomerate which has a number of multimedia channels and services including satellite, cable and internet services. On 1st September 2020, Zee announced its proposed launch of a ‘cinema-to-home’ pay-per-view service beginning October 2020. This channel was to be called ‘ZEEPLEX’.

Upon becoming aware of this launch, the Plaintiff amended its application from stating ‘proposed to be used’ to stating that the mark had been in use since 2008. The Plaintiff also brought a quia timet action for passing off against the Defendant. Further, when the Defendant announced that the channel ‘ZEEPLEX’ was to be released on 2nd October, it moved the Court for an ad-interim injunction only the day before its release.

Findings of the Court

Firstly, the Court examined whether the Plaintiff had been able to show a prima facie case of passing off for which the Plaintiff was required to show that it had brand recognition and awareness even among Zee’s consumers in India. The Court held that Plex Inc. had not sufficiently established the same as the Defendant unarguably had a pan-national presence and that it was not enough for the Plaintiff to establish its reputation in other countries.

Secondly, when the Plaintiff had also argued that Zee could no more use its name than that by Hotstar, Sony or Disney, the Court rejected the comparison. The Court was of the opinion that the Plaintiff did not have the same brand recognition as these other platforms and that merely pointing to other established and reputed players in the field would not be enough. The Court also stated the following in this regard:

“There is no one-size-fits-all approach in these matters. Every claimant in a passing-off action stands or falls on his own merits and case.”

Further, upon an examination of the nature of services provided by the Plaintiff and the Defendant, the Court held that there was no room for confusion in the minds of consumers as the services provided by them were distinct from each other.

“Where a plaintiff has had enough notice and yet chooses to move at the eleventh hour …the plaintiff must be prepared to face the consequences.”

The key takeaway from this decision, however, is the Court’s disapprobation over the tendency of parties in IPR matters to expect Courts to push aside all other cases. The Court firmly expressed that such practices were unfair to both Courts and other litigants. The Court did repeatedly issued strong words of warning to dissuade others who might try to emulate the actions of the Plaintiff.

The Court refused to grant an ad-interim injunction in favour of the Plaintiff as it found no merits in its case.

What Does the Decision Bring?

This decision of the Court, although only at the interim stage, is extremely important for IPR litigation. It makes clear that Courts are no longer inclined to rule in favour of international companies solely on the basis of their trans-border reputation with no concrete evidence. It also serves as an example to other businesses which wish to protect their intellectual property; to act as expeditiously as possible and not depend on the good graces of the Courts to excuse any undue delay on their part. As the Hon’ble Court expounded, “If something has happened in the last few days, then moving with pressing urgency is perfectly understandable; but not where a plaintiff indulges itself in taking time to bring suit and then seeks to impose on the Court’s time to the unaccounted and unaccountable cost of others.” The Court excused the actions of the Plaintiff in the instant case but perhaps the next one might not be dealt so kindly!