Medecins Sans Frontieres International v. Dharma Productions Private Limited and Ors.

High Court of Delhi at New Delhi, Single Judge | Date of Decision: April 30, 2026 Case Number: CS(COMM) 1134/2024 Bench: Hon’ble Mr. Justice Tejas Karia

BACKGROUND

The Plaintiff, Médecins Sans Frontières International (“MSF”/”Doctors Without Borders”), is an international humanitarian medical aid organization operating under the mark ‘Médecins Sans Frontières’/’Doctors Without Borders’ (“Plaintiff’s Mark”) in more than 74 countries, providing medical assistance to persons affected by armed conflict, epidemics, natural disasters or exclusion from healthcare. Founded in 1971, the Plaintiff was awarded the Indira Gandhi Prize for Peace, Disarmament and Development in 1996, the Nansen Refugee Award in 1996, the Nobel Peace Prize in 1999 and the Tipperary International Peace Award in 2023. Under humanitarian laws including the Geneva Convention, 1949 and UN Resolutions, the Plaintiff’s medical personnel and relief supplies enjoy a special right of access and free passage to victims in disaster zones, conflict areas, prisons and detention centres. The Plaintiff has operated in India since October 1999, running a dedicated Indian website (www.msf.india.in) since 2006 alongside its parent websites and active social media presence and has received support from Indian and international celebrities including Defendant No. 3. The Plaintiff claims use of the Plaintiff’s Mark since 1971 and holds Indian trade mark registrations dating from 2009 (marks ‘MSF’ and ‘MEDECINS SANS FRONTIERES’, Registration Nos. 1794692 and 1794693) and 2020 (various marks including ‘DOCTORS WITHOUT BORDERS’ and ‘MSF’ across Classes 16, 36, 41, 44 and 45, Registration Nos. 4481760 to 4481765). By Notification dated 19.02.2024, the Plaintiff’s Mark was declared a well-known mark in India.

On 11.10.2024, the film “JIGRA” (“Impugned Film”) was released theatrically in Hindi (and dubbed in Telugu). Its plot involves the protagonist Satya (played by Defendant No. 3) travelling to a fictitious island country, “Hanshi Dao,” to rescue her brother Ankur, who has been sentenced to death there after being implicated for drug possession; Satya, with allies Bhatia and Muthu, executes a prison break and escape plan. In the “Impugned Scenes” (identified with specific timestamps and dialogue), the escaping characters discuss and then implement a plan to disguise themselves as representatives of “Doctors Without Borders” to cross the Hanshi Dao border into Malaysian waters, including a scene in which Satya makes a “Mayday” distress call identifying the group as “Doctors Without Borders… Medics Without Frontiers” and using the Chinese term ”   (translated in the judgment as corresponding to “Doctors Without Borders”). Upon a representative’s discovery of this use while viewing the film in a Delhi theatre in late October 2024, the Plaintiff sent a letter dated 29.10.2024 to Defendant Nos. 1 and 2 (the producer and its director/co-producer respectively) requesting removal of the Plaintiff’s Mark from the film; this request was rejected by reply dated 19.11.2024, on the grounds that the film is a fictional work carrying a disclaimer, that the use was coincidental and that the Plaintiff’s Mark consists of common words lacking exclusivity. The Plaintiff thereafter filed the present suit along with an application under Order XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908, seeking interim injunction restraining the Defendants from broadcasting the Impugned Scenes on grounds of trade mark infringement and disparagement.

ISSUES FOR DETERMINATION

1. Whether the Plaintiff’s Mark has a reputation in India, as required under Section 29(4)(c) of the Trade Marks Act, 1999.
2. Whether the Defendants’ use of the Plaintiff’s Mark in the Impugned Film constitutes use “in the course of trade” within the meaning of Section 29(4) of the Act.
3. Whether such use was “without due cause.”
4. Whether such use took “unfair advantage” of the Plaintiff’s Mark.
5. Whether such use was “detrimental to the distinctive character or repute” of the Plaintiff’s Mark.
6. Whether, on a cumulative assessment of the above (the conditions under Section 29(4)(c) being conjunctive), the Plaintiff was entitled to an interim injunction restraining the Defendants from broadcasting/exhibiting the Impugned Scenes, and, if not, what interim relief, if any, was appropriate to balance the equities pending trial.

KEY HOLDINGS OF THE COURT

1. On reputation in India, the Court held this condition satisfied, noting that the Plaintiff’s extensive humanitarian work in India since 1999, its trade mark registrations, its declared well-known mark status since 2024 and its international recognition (Indira Gandhi Prize, Nobel Peace Prize, etc.) were not disputed by the Defendants, who had in fact acknowledged and admitted the Plaintiff’s reputation in India.
2. On use “in the course of trade,” the Court held this condition satisfied, reasoning that while a cinematograph film does not strictly fall within the categories of “goods” or “services,” it is undeniably a commercial venture; since the Impugned Film was released theatrically and made available on OTT platforms, the use of the Plaintiff’s Mark within it was held to be “in the course of trade” as envisaged by Section 29(4).
3. On “without due cause,” the Court held this condition satisfied in the Plaintiff’s favour, finding that the Defendants had failed to demonstrate any valid justification for using the Plaintiff’s Mark beyond claiming incidental/coincidental use, which the Court found insufficient given that the Mark was deliberately employed in the Impugned Scenes specifically to benefit from the Plaintiff’s reputation and its perceived status of unrestricted international border access; the Court noted the inconsistency in the Defendants’ position of denying reputational harm while simultaneously relying on the Plaintiff’s significant standing and reputation to explain their choice of mark.
4. On “unfair advantage,” the Court held this condition was NOT established by the Plaintiff at the prima facie stage. Applying the tests from Comic Enterprises Ltd. v. Twentieth Century Fox Film Corporation and Bloomberg Finance LP v. Prafull Saklecha & Ors requiring evidence of a change (or likelihood of change) in the economic behaviour of the average consumer and a showing that the distinctive attraction of the well-known mark had diminished the Court found that the Plaintiff had not adduced any evidence of impact on its donor base or activities and that its claims of prospective harm to fundraising were speculative. The Court reasoned that inclusion of the Plaintiff’s Mark, while integral to the narrative (its absence could have impeded the story), did not diminish, alter or supplant public perception of the Plaintiff’s Mark with the Defendants’ services and that mere economic benefit to the Defendants, without more, does not constitute “unfair advantage.” The Court also noted the CBFC’s certification of the film for public exhibition as relevant context and found no indication that the Defendants intended to harm the Plaintiff or dilute its Mark’s distinctiveness.
5. On “detriment to distinctive character or repute,” the Court held this condition WAS established. The Court reasoned that although the Impugned Film does not overtly comment on the Plaintiff’s reputation or qualities, the Impugned Scenes depict the Plaintiff’s Mark being used specifically to facilitate illegal crossing of international borders a use that was neither incidental nor accidental and directly implicated the Plaintiff’s reputation, since the Defendants had specifically selected the Plaintiff’s Mark (rather than a fictitious name) precisely because of its established reputation and perceived unrestricted cross-border access, in order to lend credibility/realism to the escape plot. The Court held that this manner of use adversely affected the distinctive character and reputation of the Plaintiff’s Mark.
6. On the interim relief, having found the “unfair advantage” limb not made out but the “detriment to distinctive character or repute” limb made out and given that Section 29(4)(c)’s conditions are conjunctive (requiring, per the Plaintiff’s own rejoinder submissions, satisfaction of both due cause absence and either unfair advantage or detriment), the Court held that the Plaintiff had not established a complete prima facie case for a full injunction restraining exhibition of the Impugned Scenes. However, balancing the equities and considering the Plaintiff’s established reputation and the finding of detriment to distinctive character, the Court declined to grant the injunction restraining use of the Mark in the film, but directed the Defendants to display an “Acknowledgement” at the commencement of the Impugned Film, within four weeks, clarifying that the use of the Plaintiff’s Mark in the film is not intended to cause harm or detriment to its distinctive character and reputation.
7. Final operative order: The application for interim injunction was disposed of with the direction that the Defendants display the specified Acknowledgement at the start of the Impugned Film within four weeks from the date of the order; no injunction restraining exhibition/broadcast of the Impugned Scenes was granted.

STATUTORY PROVISIONS INVOLVED

Section 29(4) of the Trade Marks Act, 1999 and specifically clause (c) thereof, was the central provision governing the application. It provides that a registered trade mark is infringed by a person, not being a registered proprietor or permitted user, who uses in the course of trade a mark where the registered trade mark has a reputation in India and the use, without due cause, takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark. The Court applied this provision’s four cumulative requirements reputation in India, use in the course of trade, absence of due cause and either unfair advantage or detriment to distinctive character/repute sequentially, finding the first three satisfied and, of the fourth’s two alternative limbs, only the “detriment” limb (not “unfair advantage”) made out.

Section 29(2) and Section 29(9) of the Trade Marks Act, 1999, were pleaded by the Plaintiff as additional grounds of infringement (identity/similarity of marks and goods/services under Section 29(2) and infringement via spoken use under Section 29(9)), but the Court’s analysis and operative findings, as recorded, were confined to Section 29(4)(c); the judgment does not record separate findings on Sections 29(2) or 29(9).

Section 30 of the Trade Marks Act, 1999, providing limits on effect of a registered trade mark (including permitted/denominative use), was invoked by Defendant Nos. 1, 2 and 4 as a defence, contending that any use found to be dilutive or disparaging would nonetheless be saved as “denominative” use referring to the Plaintiff without appropriating the Mark; the judgment does not record an explicit separate finding on this defence, the Court’s ultimate disposition (Acknowledgement direction rather than injunction) reflecting a balancing approach rather than an outright rejection of infringement.

Sections 2(2)(b) and (c) of the Trade Marks Act, 1999, concerning the statutory definition/standard of “use of a trade mark,” were referenced by Defendant Nos. 1 and 2 in contending that mere spoken reference to the Plaintiff’s Mark did not meet the threshold for infringement under Section 29(9); no separate finding on this specific contention is recorded.

Article 19(1)(a) and Article 19(2) of the Constitution of India, 1950, concerning freedom of speech and expression and permissible restrictions thereon (including defamation), were invoked by Defendant No. 3 in framing the Impugned Film as a constitutionally protected creative/cinematographic work, with any restraint required to be narrowly tailored to an enumerated ground under Article 19(2); the judgment’s ultimate disposition (declining injunction, ordering an Acknowledgement) reflects an accommodation of this concern without a separate express constitutional ruling.

Section 5B(2) of the Cinematograph Act, 1952 and the guidelines issued thereunder governing CBFC certification (including guidelines on depiction of criminal modus operandi), were referenced by Defendant No. 3 in support of the submission that the CBFC’s certification of the film for public exhibition carries a presumption of compliance with applicable guidelines, which the Court noted as relevant context in its “unfair advantage” analysis.

REASONING OF THE COURT

The Court’s reasoning proceeded issue-by-issue through the four statutory conditions of Section 29(4)(c), treating reputation and course-of-trade as readily established on largely undisputed facts, before engaging in more extended analysis on due cause, unfair advantage and detriment. On due cause, the Court’s reasoning drew an inference from the surrounding circumstances and, notably, from admissions in the Defendants’ own Written Statement (as highlighted in the Plaintiff’s rejoinder) that the escape plan was implemented by posing as Plaintiff-organization members specifically because the Plaintiff’s reputation afforded “comparatively easier mobility over international borders” and that public authorities “might not be stopped” the protagonists if they posed as Plaintiff personnel the Court treated this as effectively conceding that the choice of mark was deliberate and reputation-driven rather than coincidental, undermining the Defendants’ due-cause defence.

On unfair advantage, the Court’s reasoning was more exacting and comparativist, drawing specifically on the English authorities relied upon by the Defendants (Comic Enterprises, Argos Ltd. v. Argos Systems Inc. and this Court’s own decision in Bloomberg Finance LP v. Prafull Saklecha) to hold that a finding of unfair advantage requires demonstrable (or at least likely) change in consumer/donor economic behaviour, not merely an assertion of reputational risk. The Court reasoned that the Plaintiff’s claims of impact on donor willingness were speculative and unsupported by evidence, that the CBFC’s certification lent some presumption of regularity and that a limited, narratively necessary reference (rather than promotional or endorsement-suggesting use) did not, without more, establish that the Defendants had impermissibly “ridden on the coat-tails” of the Plaintiff’s goodwill even though the Court acknowledged the reference was “essential to the narrative” and that the Defendants had derived some benefit from the realism it lent to the plot.

On detriment to distinctive character or repute, by contrast, the Court’s reasoning shifted register: rather than requiring proof of measurable economic or perceptual change, the Court reasoned more directly from the nature of the depicted use itself that the Plaintiff’s Mark was used, specifically and pointedly, in connection with facilitating illegal border crossing, a context directly engaging the very attribute (privileged, trusted cross-border access) that constitutes the core of the Plaintiff’s reputation as a neutral humanitarian actor. The Court treated the deliberate selection of the real mark (rather than a fictitious substitute) as itself evidence that the reputational association was being instrumentally exploited within the narrative and concluded this was sufficient, at the prima facie interim stage, to establish detriment even absent the same kind of consumer-behaviour evidence required for the separate unfair-advantage limb reflecting the Court’s implicit recognition that “detriment to repute” (tarnishment) and “unfair advantage” (free-riding) are analytically distinct enquiries under Section 29(4)(c), each with potentially different evidentiary thresholds.

Having reached a split finding no unfair advantage established, but detriment to distinctive character/repute established the Court’s reasoning in fashioning relief was explicitly one of balancing convenience: rather than either granting a full injunction (which the incomplete showing on the conjunctive statutory conditions did not, in the Court’s view, warrant) or denying all relief (which would leave the finding of reputational detriment unaddressed), the Court crafted a proportionate interim remedy a mandatory disclaimer/acknowledgement that would mitigate the finding of detriment without foreclosing continued exhibition of the film pending trial, reflecting a considered attempt to protect the Plaintiff’s proven interest (reputational detriment) while respecting the Defendants’ countervailing interests (commercial exploitation of an already-released film, creative expression concerns raised by Defendant No. 3) that had not been fully defeated by the Plaintiff’s showing.

DOCTRINAL SIGNIFICANCE

Within the bounds of what was actually decided, this is an interim (interlocutory) ruling on an application for injunction, not a final adjudication of the underlying suit and its findings are expressly prima facie in character, subject to revision at trial. Its principal significance lies in the Court’s granular, issue-by-issue application of the four conjunctive conditions under Section 29(4)(c) of the Trade Marks Act to the relatively novel context of a real, well-known trade mark referenced within the fictional dialogue and plot of a commercial film an area where Indian case law (as reflected in the parties’ reliance on Tata Sons Limited v. Greenpeace International, ITC Ltd. v. Philip Morris Products SA and Google LLC v. DRS Logistics) remains developing. The judgment is notable for treating “unfair advantage” and “detriment to distinctive character or repute” as analytically severable sub-inquiries within Section 29(4)(c), capable of yielding different outcomes on the same facts the Plaintiff failing on the former (for want of consumer-behaviour evidence) while succeeding on the latter (based on the nature and context of the use itself) and for fashioning a bespoke, proportionate interim remedy (a disclaimer/acknowledgement) rather than a binary grant-or-deny approach to interim injunctive relief, a middle-ground approach reflecting the Court’s effort to hold the balance between trade mark protection and continued commercial exhibition/creative expression pending final adjudication. The judgment does not resolve and expressly leaves open for trial, the ultimate merits of infringement, the Section 30 denominative-use defence or the disparagement claim as such (the detailed disparagement submissions of both sides are recorded but not the subject of an express, separate finding in the Court’s “Analysis and Findings” section, which is confined to the Section 29(4)(c) framework). Given its interlocutory character and its close dependence on the specific factual matrix (a 25-second/limited reference within a much longer commercial film and the specific reputational attribute cross-border access implicated by the plot), the decision’s precedential reach should be read narrowly, as an application of settled principles (particularly the English “coat-tails”/dilution jurisprudence already received into Indian law via Bloomberg and ITC) to a new factual setting, rather than as establishing any new general test for trade mark use in creative/cinematographic works.

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