Delhi High Court rules on Trademark Law on film titles

Delhi High Court rules on Trademark Law on film titles

The plaintiffs had complained against 'Sholay' being used as a domain name

The Delhi High Court has rejected a contention that titles of films cannot be registered under the Trademark Law. It held that the title of a film, for instance, 'Sholay', being an iconic film, cannot be a mark devoid of protection, as certain films crossed the boundaries of just being ordinary words.

Giving justification, Justice Pratibha M Singh said, "The titles and films are capable of being recognized under the Trademark Law and in India 'Sholay' is a classic example."

She added, "The film, its characters, dialogues, settings, box office collections are legendary. Undoubtedly, it is one of the biggest, record-breaking films that India has ever produced in the history of Indian cinema. The word 'Sholay' immediately creates a connection with the movie. Industry estimates claim that though the title may have a dictionary meaning in Hindi (burning coal), publicly, the word is associated only with the film."

Thus, as costs and damages, the court awarded Rs.25,00,000 to Sholay Media and Entertainment Private Limited and Sippy Films Private Limited which hold the film's rights.

The court ruled against the defendants, who had registered the domain name www.sholay.com and published a magazine using the mark 'Sholay.' Using the names of the characters from the film, the defendants had even put on sale various merchandise.

The court maintained that in the August 2015 judgment, the title rights had already been recognized by the courts in favor of the plaintiffs.

The plaintiffs had complained about the magazine released in 2000. The grievance was that the defendants had registered the domain name www.sholay.com and filed a trademark application in 1999 for the mark 'Sholay' in India as well as with the United States Patent and Trademark Office.

Constituting it as infringement, dilution and tarnishment of the well-known mark, the plaintiffs filed the suit seeking a permanent injunction and restraining the infringement of their registered trademark.

The court observed, "Sholay' has already been recognized as a well-known mark. Thus, the earlier trademark applications or use as part of a corporate name would not vest any prior rights in favor of the defendants."

Furthermore, it stated, "The contention that the Internet is only being used by educated persons is unacceptable. It would be easy for any person, not just educated individuals, to establish a connection between the plaintiffs' film and the defendants' website. The use of identical logos, marks and names originating from the movie 'Sholay' confound the issue. The chances of confusion narrated in the plaint leave no doubt in the mind of the court that there is every likelihood of confusion."

The court, thus, restricted the defendants from using the title in respect of any goods and services and also from using the domain name and making any reference to the movie 'Sholay'. It also restrained the defendant from using images or clippings from the movie and selling merchandise using the names.

On noting that the defendants had contested the matter for over two decades, the court ordered that the adoption of the title by the defendants was clearly mala fide and dishonest, owing to the use of the infringing logo, designs, selling of the DVD of the film on the website of the defendants.