Chambers of Jain and Kumar Advocates and Consultants

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
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.

2. Single Film Title –A single film title has to pass certain qualifications in order to
acquire trademark protection and registration:-

• 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.

• 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”.

2. 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.

3. Kanungo Media (P) Ltd. vs. RGV Film Factory and Ors.

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)3

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 mentioning

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 self-
regulation 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.

This article has been authored by Aarushi Jain (Partner) and Karan Jain (intern),  Chambers of Jain and Kumar

About the author:

Aarushi Jain, is a partner at Chambers of Jain and Kumar. The firm is a full service law firm located in the heart of Delhi with a network of lawyers across the country. 

Aarushi completed her Master of Laws (LL.M.) from University of California, Berkeley. She is enrolled as an Advocate with Bar Council of India and is based out of Delhi.  She is a qualified advocate and independently advises and handles diverse matters of civil, criminal and corporate nature before all courts and forums across India. 

Aarushi regularly writes and has

 works published on reputed legal portals. Aarushi and her team, value utmost the trust placed by their clients and work hard to provide solid and effective representation to meet their diverse legal needs. Aarushi  ensures effective and efficient redressal for all clients in the most prudent and cost-effective manner. Feel free to reach out for any queries. 

 

Please find below her:- 

Firm website:- www.jainkumar.com

LinkedIn:- https://www.linkedin.com/in/aarushi-jain-429b4a4a/

Firm LinkedIn:- https://www.linkedin.com/company/chambers-of-jain-and-kumar

Mobile -9560636357


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