Titles Of Films Are Capable Of Being Recognised Under Trademark Law: Delhi High Court

The Delhi High Court has recently rejected a contention that titles of films cannot be registered under Trademark Law and has held that the word 'SHOLAY' being the title of an iconic film cannot be held to be a mark devoid of protection.

Justice Pratibha M Singh added that certain films cross the boundaries of just being ordinary words and the title of the film 'SHOLAY' is one of them.

"Titles and films are capable of being recognised under trademark law and in India 'SHOLAY' would be a classic example of such a case," the Court said.

It added,

"If there is one film that transcends generations of Indians, it is 'SHOLAY'. The said film, its characters, dialogues, settings, box office collections are legendary. Undoubtedly, 'SHOLAY' is one of the biggest, record-breaking films that India has ever produced, in the history of Indian cinema...The mention of the word 'SHOLAY' immediately creates a connection with the movie 'SHOLAY'. There are industry estimates which claim that, although the words 'SHOLAY' may have a dictionary meaning in Hindi (specifically, 'burning coal'), upon the movie going public, the word 'SHOLAY' came to be associated only with the film."

Thus, it awarded Rs.25,00,000/- as costs and damages to Sholay Media and Entertainment Pvt Ltd. and Sippy Films Pvt. Ltd. which holds rights in the film.

The suit was decreed against Defendants, who had registered the domain name 'www.sholay.com', published a magazine using the mark or name Sholay and had put on sale various merchandise, using scenes and names from the movie 'SHOLAY'.

The Court noted that the rights in the word 'SHOLAY', which is also a registered trademark, had been recognised by Courts in favour of the Plaintiff. It said that in the judgment dated 24th August, 2015 titled Sholay Media and Entertainment Pvt. Ltd. and Anr. v. Parag Sanghavi and Ors., the Court had recognised the rights of the Plaintiffs in the mark 'SHOLAY'.

The grievance of the Plaintiffs was that upon coming across a magazine released in December, 2000 titled "IT-Information Technology", the Plaintiffs learnt that the Defendants had registered the domain name 'www.sholay.com'. The Plaintiff also learnt that the Defendants had filed a trademark application dated 11th February 1999 for the mark 'SHOLAY' with the United States Patent and Trademark Office as also in India.

According to the Plaintiffs, the use of the said mark by defendants constituted infringement, passing off, dilution and tarnishment of the well-known mark 'SHOLAY'. The Plaintiffs, thus, filed the suit seeking permanent injunction restraining the infringement of their registered trademark 'SHOLAY' by the Defendants, passing off, damages, rendition of accounts, delivery up, etc.

"The mark 'SHOLAY' has already been recognised as a well-known mark. Thus, the mere earlier trademark applications or use as part of a corporate name would not vest any prior rights in favour of the Defendants," the Court said.

Furthermore, it observed that internet is now being accessed by billions of users across the world who may range from very educated to even illiterate people and that in this day and age, the internet as a medium has become a platform for dissemination, communication and empowerment to the common man.

"Thus, in the opinion of this Court, 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' further confound the issue. Moreover, the chances of confusion which have been narrated in the Plaint and extracted hereinabove, leave no doubt in the mind of the Court that there is every likelihood of confusion," it added.

Thus, the Court restrained the Defendants from using the name 'SHOLAY' in respect of any goods and services and also from using the domain name 'Sholay.com' and making any reference to the movie 'SHOLAY' or using any images or clippings from the said movie, as also from selling merchandise using the name SHOLAY or any images from the said cinematographic film.

"The Defendants shall also stand restrained from using any variation of the mark/name 'SHOLAY' on the internet or otherwise including use as a metatag in the source code," the Court added.

Further noting that the Defendants had contested this matter for over 20 years, the Court was of the view that the adoption of the mark 'SHOLAY' 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 'SHOLAY' on the Defendants' website, etc.

"For the reasons contained above, this Court is convinced that this is a fit case for award of costs to the Plaintiffs. Accordingly, the present suit is decreed for a sum of Rs.25,00,000/- as costs and damages, in terms of the relief as sought in paragraph 60(ix) of the Plaint," the Court ordered.

Case Title: SHOLAY MEDIA ENTERTAINMENT AND ANR. v. YOGESH PATEL AND ORS.

Citation: 2022 LiveLaw (Del) 501

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