Little did the international luxury goods brand Montblanc realize that its limited-edition pens featuring Mahatma Gandhi would be an invitation to a legal storm for it. Win your customer’s heart and he may reward you with opting to buy your product/service. While there is nothing wrong with it (after all, customer is the king!) getting a legal due diligence done serves as a safety net, thereby ensuring there is no legal setback. Quick flashback to 2009- Montblanc released limited edition pens (Mahatma Gandhi Limited Edition 241 and Mahatma Gandhi Limited Edition 3000) with 18 carat gold nibs featuring Mahatma Gandhi with his stick carved on the nib. Each pen was priced more than INR 10 lakh. Pretty fancy right? It may be an attempt by Montblanc to honor Mahatma, with the number ‘241’ signifying the miles walked by Mahatma in the 1930 Dandi March. However, in no time, Montblanc saw the pens capsize in the currents of the Emblems and Names (Prevention of Improper Use) Act 1950.
Soon after the launch of the pens, a public interest litigation was filed before the Kerala High Court – ‘Dijo Kappen vs Union of India’ . The public interest litigation was filed praying for a writ of mandamus (or an appropriate writ, order or direction as an alternate remedy) to prohibit the marketing and sale of the Mahatma Gandhi Limited Edition 241 and Mahatma Gandhi Limited Edition 3000.
Before the Kerala High Court, Montblanc and its distributor (being two of the respondents in the said public interest litigation) filed an undertaking that they shall not resort to the sale of the pens. Accordingly, the writ petition was closed.
End of the legal storm? Not really. A similar situation mushroomed for Montblanc before the Supreme Court shortly thereafter. A PIL was before the Apex Court by two Delhi based lawyers (namely Harsh Vardhan Surana and Sandeep Singh). It was submitted by them that the engraving of Mahatma Gandhi on the nib of the pens was nothing but commercial exploitation of the Mahatma’s greatness for promotion and sale of an ordinary product at an unbelievable price. In light of the same, an injunction was sought against the company on the grounds that the said practice was a violation of the Emblems and Names (Prevention of Improper Use) Act 1950. Consequentially, the bench comprising of the then Chief Justice K.G. Balakrishnan and Justices Deepak Verma and B.S. Chauhan issued notice to the Union of India (also being or of the respondents). In relation thereof, the Solicitor General placed before the Court that the Union Government had rejected Montblanc’s plea/application to use the image of Mahatma Gandhi on its high-end luxury pens. It was thus submitted that the word Mahatma Gandhi and his picture being a national emblem cannot be used for commercial purposes. It was also stated in furtherance to it that the company should make a commitment to refrain from selling the pens in question.
Following the same, the Supreme Court was assured by Montblanc, by way of an undertaking, that it shall stop manufacture and sale of the pens as the company’s plea to use Mahatma’s image on the pens was rejected by the Union Government previously. In light of the same, it was stressed upon by Montblanc that it had given a similar undertaking before the Kerala High Court previously the same year.
Now, let’s be clear- what does the Emblems and Names (Prevention of Improper Use) Act 1950 provide for which has crippled the luster of the Mahatma Gandhi Limited Edition 241 and the Limited Edition 3000 and taken away the spotlight from intricate engraving on pens. The Act 1950, under Section 3 states that no individual/entity shall use for any commercial purpose by way of a trade, business, calling, profession (or in the title of patent or on any trademark or design) any name or emblem as specified in the Schedule of the Act or its colorable imitation/pictorial representation without prior permission of the Central Government. Now specific to the present case of Montblanc, the Schedule has an explicit mention of the name ‘Mahatma Gandhi’ and ‘Gandhi’, and also includes his pictorial representation.
If you are a brand reading this and have scrolled till here, great! Because by now probably you may have realized great campaigns are an oomph factor, sure; but legal due diligence is the immunity pill for maintaining that oomph factor.
Does this case of Montblanc luxury pens provide anything for lawyers (especially IPR enthusiasts) to take note of? For sure it does. The next time when you are in a situation where any brand seeks advice on a similar situation or there is any slight chance of commercial use of any name/emblem mentioned in the Schedule of the Act 1950, you probably know your next move!
Authors: Malabika Boruah & Tushar Gerewal