Delhi High Court Refuses Doctors Without Borders' Plea to Restrain Use of Its Mark In Jigra Film

The Delhi High Court recently refused to grant Médecins Sans Frontières (MSF), the Nobel Peace Prize-winning humanitarian organisation also known as Doctors Without Borders, an interim injunction against Dharma Productions over the use of its trademark in the 2024 bollywood film Jigra.

The court held that while the use was without due cause, MSF failed to show any resulting unfair advantage.

Justice Tejas Karia held that the makers had used MSF's mark without justification. The court observed, “Consequently, the use of the Plaintiff's Mark in the Impugned Film was made without any due cause.”

The court also found that the use was deliberate and tied to the organisation's reputation. It noted, “it is evident that the Defendants deliberately employed the Plaintiff's Mark in the Impugned Scenes to benefit from the Plaintiff's reputation and the prestige associated with unrestricted International Border access.”

At the same time, the court clarified that this alone was not sufficient to grant relief under Section 29(4) of the Trade Marks Act. It said that the statutory conditions under Section 29(4) must be satisfied.

Explaining the threshold, the court held, “At this prima facie stage, it is incumbent upon the Plaintiff to demonstrate that the use of the Plaintiff's Mark in the Impugned Film would directly and negatively impact the Plaintiff to cause unfair advantage to the Defendants. The Impugned Scenes depict the Plaintiff's Mark being used by the protagonist to cross an International Border via sea. According to the Plaintiff, this portrayal by the Defendants has purportedly caused harm by diminishing the likelihood of donations to the Plaintiff.However, the same is not sufficient to determine the 'unfair advantage' to the Defendants"

It further observed, “Evidence of a change in the economic behavior of an average consumer is necessary to demonstrate 'undue advantage'.”

Finding no such material on record, the court noted, “the Plaintiff has not provided any evidence demonstrating any impact on the Plaintiff's activities.”

The court also rejected the defence that the use was merely incidental. It held, “this argument is insufficient, as it is evident that the Defendants deliberately employed the Plaintiff's Mark in the Impugned Scenes to benefit from the Plaintiff's reputation.”

The film, released on October 11, 2024, stars Alia Bhatt as Satya. She travels to the fictional island nation of Hanshi Dao to rescue her brother after he is sentenced to death in a drug case. As part of the plot, characters pose as representatives of Doctors Without Borders to cross international borders.

MSF told the court that it discovered the use of its mark in late October 2024. It issued a legal notice on October 29 seeking removal of the scenes. The request was rejected on November 19. The producers argued that the film was fictional, the use was incidental and covered by a disclaimer, and no exclusivity could be claimed over common words.

MSF then moved the court alleging infringement under Sections 29(4) and 29(9) of the Trade Marks Act.

Opposing the plea, the defendants argued that the reference to MSF appeared only briefly in a film running over two and a half hours. They said there was no evidence of any commercial gain linked to the use of the mark or any change in public perception.

Accepting this at the interim stage, the court held that MSF had failed to establish a prima facie case of unfair advantage. This is a requirement under Section 29(4), even though the use of the mark was without due cause.

The court therefore declined to grant an interim injunction.

While declining to grant an injunction, the court directed the makers of the film to display an acknowledgement at the commencement of the film, including on streaming platforms, stating that the use of MSF's mark is not intended to harm its distinctive character or reputation, and asked them to comply within four weeks.