Plex knew about ZEEPLEX on 1 September. It moved for an injunction on 1 October, the day before launch. The Bombay High Court’s refusal covers both halves of why the application failed — the case was weak, and the urgency was self-created.
The parties
Plex Inc. operates an online platform for watching and curating movies and TV shows, and sharing content remotely. It adopted the mark PLEX in the United States in 2008, obtaining registrations in several countries since, and said it had its first user in India in 2008 as well. Its Indian application had been filed on a “proposed to be used” basis.
Zee Entertainment Enterprises is a large multimedia conglomerate with satellite, cable and internet services. On 1 September 2020 it announced a cinema-to-home pay-per-view service launching in October, to be called ZEEPLEX.
On learning of the launch, Plex amended its application from “proposed to be used” to claiming use since 2008, and brought a quia timet action for passing off. When Zee announced a 2 October release, Plex moved for an ad-interim injunction the day before.
The findings
On reputation. For a prima facie case of passing off, Plex had to show brand recognition and awareness among Zee’s consumers in India. It had not. Zee unarguably had a pan-national presence, and establishing reputation in other countries was not enough.
This sits squarely in the line running through Toyota v. Prius and the 7-Eleven “Big Bite” dispute: trans-border reputation requires proof of goodwill among Indian consumers, not global fame.
On the comparison. Plex argued Zee could no more use its name than it could use Hotstar’s, Sony’s or Disney’s. The court rejected the comparison — Plex did not have the same brand recognition as those platforms, and pointing to established players is not a substitute for proving your own reputation:
“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.”
On the services. Examining what each party actually offered, the court found no room for confusion, the services being distinct.
On delay. The most quoted part:
“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 court expressed clear disapproval of the tendency in IP matters to expect courts to push aside all other cases, calling the practice unfair to the court and to other litigants. As it put it: if something has happened in the last few days, moving with pressing urgency is perfectly understandable — but not where a plaintiff takes its time to bring suit and then imposes on the court’s time at the unaccounted cost of others.
The injunction was refused.
What it establishes
Two things, both useful.
Courts are no longer inclined to rule for international companies on trans-border reputation without concrete evidence. A registration portfolio across several countries and a claim of an Indian user since 2008 did not amount to proof of recognition among Indian consumers.
Delay has consequences. Businesses protecting IP should act as expeditiously as possible rather than relying on the court’s indulgence. The court excused the plaintiff’s conduct here, but signalled clearly that the next such applicant might not be treated as kindly.
There is a third point worth drawing out. The amendment of the application — from “proposed to be used” to claiming use since 2008, made only after learning of ZEEPLEX — is not a neutral act. A “proposed to be used” filing is a representation that the mark was not in use at filing, and amending it under litigation pressure invites exactly the scrutiny it received. Under Rule 25 of the 2017 Rules, a claimed use date must in any event be supported by an affidavit with evidence.
The takeaways
- Prove reputation among Indian consumers — foreign registrations are not enough.
- Comparisons to bigger platforms don’t help — each claimant stands on its own case.
- Self-created urgency is penalised — courts distinguish real urgency from delay.
- Amending a use claim mid-dispute invites scrutiny — and needs affidavit evidence.
Frequently asked questions
Is global reputation enough to succeed in passing off in India? No — a claimant must establish brand recognition and awareness among Indian consumers, not merely reputation in other countries.
Does delay affect an application for an injunction? Yes — courts distinguish genuine urgency from urgency the plaintiff created by delaying, and have refused relief on that basis.
Can I compare myself to established platforms to show reputation? No — the court held every claimant stands or falls on its own merits, and pointing to reputed players proves nothing about your own recognition.
What is a quia timet action? A suit brought to prevent an apprehended injury before it occurs — here, in anticipation of a service launch.
Useful official resources
- The Trade Marks Act, 1999
- Bombay High Court