Trademark, Movie Titles and Protection under the Intellectual Property Law in India By Aarushi Jain (Partner) and Karan Jain (Intern)

The name or title of the movie is the most important part of determining the identity of the movie and making it distinct in the minds of the audience. It is interesting to note that movie titles cannot be protected under the Copyright law in India, hence we are analysing the protection available for movie titles under the Trademark law in the Intellectual Property regime in India. This aspect was upheld by the Supreme Court of India in Krishika Lulla and Ors. vs. Shyam Vithalrao Devkatta and Ors[1]

Under the Indian Trademark Act, 1999 (“Trademark Law”), the title of a film can be registered and protected under Class 41 of the Fourth Schedule of Trademark Rules, as amended from time to time (“Trademark Rules”). In India, major production houses apply for registration of movie titles and labels in Class 41 that embrace a number of services including “entertainment”. Additionally, these applications are also filed in Class 9 as movies can also be viewed on storage devices like DVDs that provides for, among other goods, “apparatus for recording, transmission or reproduction of sound or images…”.

Registration of a movie title under Trademark law in India: 

It is to be noted that the title of a cinematographic film is protected in Trademark Law under two conditions: –

  1. Series of Film Title – This series of film title can get easy trademark protection and registration when compared to a single film title. It is so because they enjoy a greater distinctiveness in the minds of consumers with respect to certain attributes like the cast, director or even the producer. For example, When we think about the movie Golmaal, Ajay devgan pops in our minds. Another example is the Dhoom series.
  1. Single Film Title –A single film title has to pass certain qualifications in order to acquire trademark protection and registration:-
  2. To acquire trademark protection for a single film title, a secondary meaning of the title must have been obtained. Secondary meaning means, “The association of the title of the film with certain source, production house etc. by the movie goer or audience”. Before a movie is released in theatres, it goes through the pre-release publicity and other promotional activities which is sufficient for trademark protection under the proviso clause stated under clause (1) of Section 9 of the Trademark Law which specifically gives Trademark registration to a well-known mark or a mark which has acquired a distinctive character as a result of the use made of it.
  3. The Court may consider certain other factors while deciding the secondary meaning of the title of the movie which are as follows: Continued Use and its Duration; Expenditure on advertisement & promotion; Number of viewers; Revenue collection of the movie; Plaintiff and Defendant’s closeness of the geographical and product markets.

         Likelihood of Confusion: the goal of Trademark Law is to prevent confusion, and not to confuse the consumer about the two same titles. For example, Bombay High Court stopped John Abraham’s production house from using the title “Humara Bajaj” based on an injunction filed by  Bajaj Auto where they claimed that this particular slogan was already being used by them for marketing their products and had gained               considerable acceptance in common parlance. 

Under the Trademarks Law, film titles qualify as ‘Service Marks’ instead of Trademarks. It is always advisable to register a movie title as a               service mark for acquiring exclusive rights and protection over the title. The registration of a trademark constitutes prima facie validity of the same in legal proceedings.

Registration of a movie title with various industry associations in India

 

Apart from applying for registration of a movie title under the Trademark Law, there are a number of industry associations to which the film makers look upto regarding the protection of their film titles. Indian Motion Picture Producers’ Association (IMPPA), Association of Motion Pictures and Television Program Producers (AMPTPP) and Film and Television Producers’ Guild of India, Film Writers’ Association and Western India Film Producers Association (WIFPA) are the associations that play a big role in protecting the commercial interest of movies. Producers and writers of movies can apply to be members of these associations which enable them to get their titles and scripts registered with these associations. To check whether the same or deceptively similar title has been registered with another association, the association usually verifies this with other ones before registering a title. 

However such registration with these associations shall not have any effect on any legal proceedings in the court. It can only help to prove whether one is a prior adopter of the title or not.

Relevant Judgements/Precedents to analyse registration of movie titles in India

  1. Bikramjeet Singh v. Anil Kapoor: Indian actor and producer, Anil Kapoor had registered the title “shortkut” for his movie with the IMPPA. Later, Bikramjeet Singh, another producer, complained about this with the IMPPA, stating that the particular title had already been registered by him with IMPPA much before Anil Kapoor. Eventually, Anil Kapoor had to finally withdraw the original title of his movie and amended it to “Shortkut- The Con Is On”.
  1. Thoda Magic v. Thoda Life: Yash Raj Films had got their film title “Thoda Pyaar, Thoda Magic” registered with IMPPA. Later on, Indian movie actor/producer Sahil Chadha opposed Yash Raj Films and alleged it to be confusingly similar to his movie “Thoda Magic v. Thoda Life”. “It is absolutely unethical on the part of guild that it should flout the industry’s established procedures of title registration in order to accommodate the whims of its resourceful members”, Sahil had remarked. Yash Raj Films asserted protection over the said title as it was already registered with the Film and Television Producers’ Guild of India. Sahil Chadha later lodged a complaint with IMPAA. Eventually, both the movies were released without any change in their title.
  1. Kanungo Media (P) Ltd. vs. RGV Film Factory and Ors.[1] (17.05.2017 – DELHC) :

The Kanungo Media Pvt. Ltd. had produced a Bengali movie named ‘Nishabd’. However, due to some financial crunch, the movie could not be released commercially. Later on, Ram Gopal Verma (RGV Film Factory) produced a Hindi movie with the same name ‘Nishabd’. Hence, an infringement action was brought against Ram Gopal Verma. The Delhi High Court held that the movie made by Kanungo Media Pvt. Ltd. was    not commercially released and hence was not that popular among the public. As per the Court, the word “Nishabd” could not achieve a secondary meaning.  The Court held in its judgement – ,”There is absolutely no evidence of the title ‘NISSHABD’ of the plaintiff having acquired any distinctiveness or of the viewership of the film of the plaintiff or of the collections from the commercial release claimed in the replication, of the film of the plaintiff.” Therefore, the Court held the case in favor of the RGV Film Factory. This case was instrumental in       establishing the position of film’s single title and protection under the Trademarks Act, 1999. The case laid down guidelines regarding the protection of film titles and the crucial fact that even though the film title may be registered, however, it cannot be guaranteed protection              unless the film title has acquired a secondary meaning.

 4. Sholay Media and Entertainment Pvt. Ltd. and Ors. vs. Parag Sanghavi and Ors. (24.08.2015 – DEL HC)[2]

        This particular case is an important decision in this regard. The Court granted trademark protection for the title of the famous 1975 movie ‘Sholay’ along with the names of character ‘Gabbar’ and ‘Gabbar Singh’. It was submitted that apart from the statutory rights, the trademarks ‘SHOLAY’, ‘GABBAR’ ‘GABBAR SINGH’, due to continuous and extensive use over a long period of time spanning a wide geographical area, coupled with vast promotion and publicity enjoy an unparalleled reputation and goodwill and have acquired the trappings of a well-known trademark. These trademark protections led to the change of title of ‘Ram Gopal Verma ki Sholay’ to ‘Ram Gopal Verma ki Aag’. The Court even granted punitive damages to the plaintiffs against the defendants mention in that “present case have intentionally and deliberately brought the movie in violation of plaintiffs’ exclusive moral rights of copyright and passing off.”

Conclusion:

Based on an analysis of various cases as dealt with by Court and associations in the country, it is pertinent to note that the Trademarks Law, clearly states that for every trademark to be protected, it must be of distinctive character. Generic terms and phrases cannot be protected as trademarks. Hence, movie names which have a distinctive character and do not contain generic terms can be protected and registered under the Indian Trademark Law. 

There are also other factors involved in getting some kind of protection from the courts including but not limited to the promotion of the movie, the expenditure made, revenue collected etc. Registration of titles with independent associations like Indian Motion Picture Producers’ Association (IMPPA), Association of Motion Pictures and Television Program Producers (AMPTPP) and others has proven that the industry has devised effective methods of self-regulation which helps in reducing litigation and the burden of already overburdened courts of law across the country. Such methods of selfregulation across different industries are welcomed. 

Furthermore, another issue which requires a fine eye is to see the commercial use of character or names proposed by the production houses. For instance, the movie merchandise launched by the Koi Mil Gaya or Krissh franchise bearing the movie title or other attributes.  Hence, when it comes to naming a movie, it’s important to understand the issues and seek proper legal advice on the name. This will not only assist the production houses in picking up innovative names but will also help in achieving optimum commercialization out of the name. Further, even independent filmmakers should ensure that the names aren’t similar to any existing movie name, to avoid any future conflict. Wherever possible the filmmakers should seek permission to use the names which may bear some similarity to other movie titles. 

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