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: –
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.
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.
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.
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.”
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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